Owners, Borrowers & Thieves 2.0 : Owners, Borrowers & Thieves 2.0 : Husch Blackwell Sanders LLP : First Amendment, Commercial Speech

A commercial that played this Halloween promoting a new line of Barbie Fashionista dolls reminded me of an earlier blog post in which I wrote about some of the legal lessons learned from Barbie.  One of those lessons involved the parody of Barbie in the song "Barbie Girl" by the group Aqua to which Mattel did not take kindly and sued.  In 2002, the Ninth Circuit ruled against Mattel in an opinion written by Judge Kozinski and in the process, helped shape the contours of the First Amendment and the trademark fair use defense.

The commercial shows that it took seven years, but the parties have apparently heeded Judge Kozinski's admonition that the:  "parties are advised to chill."  In a "Now For Something Completely Different" moment, Mattel and Aqua have joined forces in a series of commercials to promote the Barbie line of dolls and Barbie's first music video by using a reworked version of the "Barbie Girl" song:

I am not privy to the licensing deal, but in answer to a number of commentators and bloggers, Mattel is not using the song for free.  Aqua and MCA Records were successful in their fair use defense because the song is a parody of Barbie.  The reworked song is not.  Nor could Mattel say that it was making fun of itself or of the song.  Instead, Mattel acknowledges that is is using the song because the song has become the "epitome of Barbie" and is now "iconic."

There may be those like Charlie Brown's sister, Sally, who decry that Aqua has "sold out" (7:25 into the video clip) to Mattel, but even Sally can agree that Aqua is getting its "restitution" through this licensing deal even if she lost out on trick-or-treating this Halloween.

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Despite depictions in TV shows and the movies, most court cases do not involve dramatic confessions, cover ups and Presidential politics.  Of course, most court cases don't involve Stephen Fairey.  From pasting the Obey Giant (now his Twitter name) and other "Obey" posters on public property (much to the ire of city officials around the country) to talking smack with the Associated Press over the Presidential candidate Obama Hope poster, he seems to seek and thrive on controversey.

But the controversey with the AP over the Obama Hope poster may have seriously backfired on Fairey.  On February 9, 2009, Fairey filed a Complaint in the Southern District of New York saying that his use of a photograph claimed by the AP fell within the fair use defense and therefore, he owed the AP nothing for using the photograph to create the Obama poster.  One former blogger on this site thought that if Fairey's inspiration for the poster did come from the picture of Obama and George Clooney at a press conference as Fairey claimed, then Fairey might succeed.  It is unlikely that we will find out if he was right. 

On October 16, 2009, Fairey confessed that he used a different picture from the same press conference, one that more closely resembles the Obama poster.  A number of bloggers including Tom Gralish, Photo District News and others had suspected as much, but Fairey had denied their claims until now.

An AP article appearing in the New York Times could barely conceal its delight of the confession and the news that Fairey's legal defense team from the Stanford Fair Use Project intend to withdrawal their representation because Fairey lied to them and tried to cover it all up. 

Fairey can likely afford to hire other legal counsel, but the legal arguments for his new defense team just got a lot more difficult.  One of the four fair use factors analyzes the amount of copyrighted work taken.  When the Obama Hope poster is compared to the picture that Fairey now confesses to using, this prong may now weigh against him where it may have helped in in the other picture.  

But beyond the simple analysis of the factors, it should be remembered that the fair use defense is an equitable rule.  Fairey's confessed dishonesty undercuts his ability to ask for equity, i.e. fairness.  In other cases, the courts have not looked kindly on those accursed of infringing a work who denied that he or she used the accuser's work and then later tried to invoke the fair use defense.  Further, should this case go to trial, the AP will likely be able to tell the jury that Fairey initially lied about the picture and that he lied because he thought that he would lose if the actual photograph was known.  Much of the jury sympathy that Fairey might have had has likely been lost.

While Fairey's case against the AP still raises interesting questions such as whether the AP or Mannie Garcia, the photographer, own the copyright to the photograph, it now looks like a much anticipated case analyzing the fair use defense will disappoint many.

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With the stroke of a quill pen pulled from their cap or with the tap of a keyboard, the Federal Circuit may have relegated an intensely litigated and debated line of fraud cases to the ancient history books.  Likewise, it may yet send the stock price of Novartis, makers of Maalox, downward.  More on stock prices and Maalox later . . . .

Starting with the seminal case, Medinol Ltd. v. Neuro Vasx, the Trademark Trial and Appeal Board has held that the trademark applicant or registrant commits fraud by claiming the use of a mark in connection with identified products or services when it actually did not use the mark on all of the claimed products or services.  The standard that the Board applied was whether the applicant or registrant made a material representation of fact that it knew or should have known to be false.  The penalty for such fraud was typically death to the trademark registration or at least to the registration of the offending class of products or services.  From 2003 until as late as June of this year with the Esprit IP Limited v. Mellbeck Ltd decision (visit Christina Frangiosa's Privacy and IP Law Blog for more on the case), this had been the state of the law with a few tweaks here and there as the Board soften the impact of the Medinol cases. 

This line of cases kept many a trademark attorney up at night wondering what would happen to their clients' valuable portfolios of trademarks registrations if subjected to a Medinol challenge.  Trademark attorneys and their clients implemented a number of creative strategies, but the concern that the registrations might be canceled must have caused many to gulp down untold amounts of Maalox that surely sent the stock price soaring.

Perhaps it was this health concern that caused the Federal Circuit in In re Bose to strongly state that the Board was applying the wrong standard to establish fraud and effectively applying a negligence standard.    The Federal Circuit was perhaps a bit harsh in its criticism given that the Board had lifted the "knew or should have known" standard from a prior Federal Circuit decision, but it is true that the standard that the Board applied was different than anyone else's standard for fraud.

Some have argued that after In re Bose, the only penalty for getting caught listing goods or services that are never used with the mark is to correct the registration because: 1) it is difficult to prove fraud and 2) it will be difficult to justify the cost of pursuing fraud claims given the limited relief that  the Board can award.  If the only realistic penalty is to correct the registration, the argument goes, then it will be much more difficult to keep applicants honest.

Even the "reckless disregard" standard that may have been left open is still a high standard to meet in a Board proceeding and although the PTO's rules prohibit an applicant from making a false statement, until the Board loosens its interpretation of this rule, it provides little comfort to those who are concerned that applicants may cheat if not checked.

John Welch of the TTABlog suggests that one way "to focus an applicant's or a registrant's attention on the issue of use would be to . . . require a specimen of use of every item listed in the application or registration."  He suggests that submitting a catalog or pages printed from the Internet could be deemed sufficient.  I am not sure of the extent legal costs might increase if registration required a specimen showing use of each product or service, but the suggestion is worthy of further discussion.

First, having to submit something -- even if the bar of what the PTO will accept is low -- will ensure that the applicant does some investigation before claiming use on a multitude of goods and services.  Second, the "I didn't know" defense to fraud becomes more suspect if the applicant submits a specimen showing use of the mark on a product when the applicant never sold such products or never used the mark on such products.  

For now, however, given that attorneys and their clients have less fear of their trademark registrations being canceled, fewer will be gulping down bottles of Maalox.  Perhaps Novartis should offer to fund an appeal of the Federal Circuit's decision?

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While on a vacation in Northern Michigan recently, Michael Jackson's "Thriller" started playing in a local tavern.  The song seemed out of place in the northern woods, but as I looked around, I could sense that the conversation at a number of tables had changed once the song began playing.  It has been almost two months since Jackson's untimely death and yet, people across the country are still moved by his death.  It seems appropriate then to write a short piece before Jackson's burial sometime around September 3rd.

As a pop star, Jackson was no stranger to copyright infringement lawsuits.  But, even with his death, Jackson will play a role in shaping copyright law.  The battle for his stake in the Sony-ATV Music Publishing catalog (which includes the Beatles, Elvis and contemporary artists) along with the catalog to his own songs has been discussed extensively and will likely be a topic worth following for sometime to come.

There is also the little issue of an ongoing copyright lawsuit.  The lawsuit by Cameroon sax man, Manu Dibango, against Michael Jackson and Rihanna received a flurry of attention when it was filed in February, yet except for a wonderful article in the New Yorker, it has received almost no attention since then. 

Dibango struck gold with his 1972 song, "Soul Makossa", that some credit as an early disco staple.  He reaped an additional pot of gold ten years later with his lawsuit against Jackson who admitted that he borrowed the phrase:  "ma ma se, ma ma sa, ma ma coo sa" in his song,"Wanna Be Startin' Something" on the Thriller album from Soul Makossa.  After reaching a settlement, Jackson and Dibango moved on happily ever after.

Actually, not happily ever after.  Fast forward to 2007 and things get interesting again.  Pop star Rihanna received Jackson's permission to use the "Ma ma se, ma ma sa, ma ma coo sa" phrase in what became one of her many hit songs:  "Don't Stop the Music".  But, she did not receive permission from Dibango and it it does not appear that she asked him for permission.   Dibango is suing for about $650,000 -- those who follow the exchange rate between the CFA (Communauté Financière Africaine) and the U.S. dollar can give us daily updates.

Absent Jackson's death, this battle of superstars with their millions of dollars would likely have been resolved quietly and quickly.  But because it is unclear who will control and ultimately act on behalf of Jackson's estate, a quiet and quick resolution does not seem to be possible.  For those of us curious about intellectual property issues, keeping the case moving towards trial will be enlightening.  Some unanswered questions:

• Why were Rhianna's lawyers savvy enough to track down Jackson to get his permission, but not Dibango's?
• What rights in the "ma ma se . . . " phrase did Jackson get in his settlement with Dibango?
• If Jackson didn't acquire any rights from Dibango to the phrase other than a license to use it in the "Wanna Be Startin' Something" song, what rights did Jackson's lawyers represent he had in the "ma ma se" phrase to even give Rihanna?

We may never find out the answers to these questions if the case does not go to trial.  Perhaps the bigger shame would be that we would never see Jackson jumping out of his casket and moonwalk to the witness stand one last time to the beat of Thriller:

"That this is thriller, thriller night
'Cause I can thrill you more than any ghost would ever dare try
Thriller, thriller night . . . "
 

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"Winner, winner, chicken dinner!"  I'm told that the phrase first started in Las Vegas casinos where you would hear gamblers and dealers yell it out  as winners would earn enough from their bets to buy the three-piece chicken special at the casinos.  Whatever its origins, the phrase makes me smile after hearing it.  

Thoughts of winning one of the countless photography contests also brings a smile to many as well -- amateurs and professionals alike.  Who wouldn't like to win a Canon 5D Mark II or maybe that lens you've been eying?  Before sending the kids out to lure the buffalo herd a little closer to get that winning shot, you might want to do some reading.

Reading, as in reading those pesky rules or what is usually called "terms and conditions."  The terms vary from a photographer giving the promoter a non-exclusive right to use the photograph for a limited purpose and limited period of time to granting the promoter all the rights in your photograph.  Of course, if you care to give the promoter all of the rights to your photograph, you might consider taking it off of your website and stop selling those signed prints because you might get sued!

Far fetched?  Gary Crabee wrote in his Enlightened Images photoblog about Costco's photo contest in which, by entering the contest, the contestants assign the copyright to any image to Costco.  Costco is not alone.  There may be questions of the enforceability of the clause, but Gary is right that Costco and others with these terms arguably can sue any contestant who continues to reproduce or distribute what used to be the contestant's own photograph!  I like to think that Costco would not enforce the full-extent of the assignment, but do you gamble on that by entering one of your bread-and-butter photographs in the contest?  By assigning all your rights, stock agencies like Getty Images are also not likely to accept your photograph.  Presto!  You've just deprived you of another source of income.

Most contests don't require the photographer to assign all of his or her rights, yet the terms and conditions can still be fairly broad.  In Walt Disney's Messy Baby Contest, you grant Disney the right to use your photograph throughout the "universe" in "perpetuity" although you have the right to use the photography as well.  I'm at a bit of a loss in calculating the going rate for using an Ansel Adams photograph on Saturn or elsewhere in the universe.  But if you have a gem on your hands, do you think you can compete with Disney's marketing muscle here on Earth?  Sorry, but my money is on Disney. 

So what can you do to protect yourself before entering a contest?  Here are a few suggestions:

1. Read --the terms and conditions of the contest;
2. Examine -- by following any links on the terms and conditions to see if there are any buried terms.
3. Think -- before entering a contest where you assign "all the intellectual property rights",  grant "exclusive rights" or "perpetual rights";
4. Consider recommendations -- by Pro-Imaging and others who monitor these contests.  Pro-Imaging, for example, uses its photographer's Bill of Rights to develop a list of "bad" contests and list of "good" contests. 

Armed with a little information, you can avoid the "sucker's bet" and call out with the rest of the contestants:  "Winner, winner, chicken dinner!"

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I still turn to newspapers, whether on paper or on the Internet for my primary source of news, but it is no secret that newspapers are fighting for their lives -- not unlike Bruce Willis in pretty much any Die Hard movie.  Newspapers, rallying around AP, blame Google for their troubles.  Mike Masnick of techdirt, points to the staggering amounts of debt that the newspapers took on and there are probably a dozen other ailments giving newspapers the blues.

Many have suggested cures for the newspapers' ailments, including, as R. David Donoghue of the Chicago IP Law blog points out, the esteemed Judge Posner who hails from the Seventh Circuit in Chicago.  Judge Posner wrote in the Becker-Posner blog that we should ban online access to articles and bar anyone from paraphrasing or linking to a newspaper article without the newspaper's consent.  Otherwise, Judge Posner argues, free-loaders will run newspapers out of business. 

The commentary in response to Judge Posner's proposal focuses on skepticism that the proposal is workable, that he has become too sentimental for printed newspapers and that he is out of touch with social media.  But, what troubles me about the proposal is it appears to  venture awfully close to allowing newspapers to copyright facts.

The proposal to bar online access to copyrighted material without the copyright holder's consent is something the WSJ and a few other newspapers do already.  For example, to get full access to the WSJ's article about the AP creating an association to license and monitor who is republishing newspaper articles, you would need to subscribe to the WSJ.

Judge Posner's second suggestion, i.e. bar linking to or paraphrasing news articles, potentially could have greater implications.  Currently, copyright allows all of us to repeat facts found in books, newspapers and on the Internet if we do not copy the way those facts were repeated.  Copyright will protect how historical facts are expressed and not the facts themselves. 

To be fair, Judge Posner proposes a ban on paraphrasing newspaper articles or linking to the article.  He doesn't propose that newspapers should be able to copyright facts, but if nobody can paraphrase the article or link to it, does it effectively do the same thing?  Is there an argument that repeating a key fact or facts in an article is paraphrasing the article?  It strikes me that from a copyright perspective, Judge Posner's proposal has even wider implications than just for newspapers.

With that said, count me among the people who still subscribe to a printed newspaper and wouldn't mind having it stick around for a little longer.  If only the newspapers could create a real-life Early Edition where the hero received the Chicago Sun-Times the day before the news actually occurred:

[Discussing the mysterious newspaper]
Gary Hobson: Where is it coming from?
Marissa Clark: The hallway.
Gary Hobson: That's not what I meant.
Marissa Clark: Maybe it comes from God.
Gary Hobson: Yeah, God's a cosmic paperboy. 
 

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Co-author:  Branden Gregory (more on him later)

We admit that we love trademarks enough that we can pass time away with our feet propped up while running random searches on the USPTO's database of trademark applications.  Sure this time might be better spent working off a few more stubborn winter pounds, but that might have meant missing a few gems. 

During Barack Obama's campaign for President, there were a few applications to register various OBAMA related trademarks which were presumably filed by his supporters and his opponents.  Later, more commercial-oriented applications appeared:  OBAMA bottled water, cigars and other products that we're sure we can't live without.  The applications just keep coming.  And not just here in the U.S.  The IPKAT reported that trademark applications in Europe to register OBAMA marks have appeared in several European countries.

But, did any of these applicants really think the USPTO would register these marks? The USPTO is not going to allow registration of President Obama's name without the President's consent.  Not only will the President politely decline to consent to Obama soft drinks, but we are also willing to bet it will be nearly impossible to get past Obama's personal secretary, Katie Johnson.  As for these marks, in the words of Heid Klum, the host of Project Runway, "You are out!"

As for those marks which "merely" propose using "OBAMA" as a term of the mark, they are not likely to get much further as the USPTO will probably construe the marks as consisting primarily of a surname.  In the eyes of the USPTO, this is a "no no."  We were surprised to learn that the Obama name is relatively unusual in the U.S., but it won't be perceived as unusual any longer.  We can't come up with another meaning for "OBAMA" other than as a surname:  it does not signify a geographical area, have a secondary meaning or translate from Swahili into something other than the President's surname (we'll admit to being a bit rusty on our Swahili).

So why did attorneys agree to file these applications?  It strikes one of us as fairly straight forward that the USPTO won't register the marks, but were we missing something?  Brief interlude . . . one of the best things about summer is that one of us gets to hang around some fantastic summer associates including Branden Gregory who graciously agreed to hit the books and find a way to convince the USPTO to register these marks.   Although fully inspired with the "Yes We Can" slogan, his conclusion was that we are not going to be seeing Obama energy drinks anytime soon. 

Then what was the good-faith basis for filing the applications to register Obama marks?  Did the attorneys tell their clients that perhaps they might get lucky and catch one of the trademark attorneys in a mischievous mood?  That wouldn't be kosher so that can't be it.  Anyone have any thoughts?  Anyone?  Bueller?  . . . Bueller?

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For those of you who read the last post closely, yes it is true.  Owners, Borrowers & Thieves 2.0 has jumped into Twitter and you can now access the posts through Twitter by following me @daverein. 

Because these are uncharted waters for me, I am hoping that the Twitter veterans among you will lend a guiding hand until the Twitter for Dummies book is released next month!  

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As I read Ben Sheffner's tweets about the Capital v. Thomas case with interest, I was struck by how quickly the jury issued its decision to award the record companies $1.92 million -- about $1.7 million more than the original jury awarded.  I instantly thought of this picture as I think both Ms. Thomas and her attorney are going to need plenty of this and some lucky lottery tickets.  

From the music industry's perspective, this was an important win.  The stunning size of the verdict and the swiftness with which the jury came back with the award should please those who were tasked with the aggressive campaign against copyright infringement.  

I agree with Sheffner that the judge will likely slash the jury's award, but it shouldn't come to that.  As I mentioned in a previous post, winning the case is only the first step for the music industry.  It has won the case and now it needs to win the public relations battle by not overreaching.  

The music industry has every incentive to keep the decision from spinning into a public relations circus like what happened in the Pirate Bay case.  It appears that Thomas and her attorney want to quietly put an end to this case so the record companies now have the opportunity to win the public relations battle.  They can do so by not insisting on a settlement that results in financial ruin for Thomas, but instead reaches a confidential settlement that Thomas can live with.

Settlement will not undermine its message that although the Pirates of the Caribbean would have considered the copyright code to be more like  "guidelines" than actual rules, the music industry politely and firmly begs to differ.  "Welcome aboard the Black Pearl", Ms. Thomas.

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They do things differently in Sweden.  If there was an RSS feed for all the political news happening in Sweden, I think I would subscribe.  I remember in college hearing that Donald Duck beat out several political parties in the Swedish elections.  You know it is time to give it up and run for the dog catcher position when you lose to Donald Duck.  

The independent streak seems to continue today.  For most of us, the only way last week's European Union parliamentary elections were going to catch our attention was if another Donald Duck episode occurred.  Sure enough, the voters in Sweden obliged. 

In a reaction to the landmark file-sharing case (i.e. sharing of music, movies and books) popularly known by the file-sharing site's name, the Pirate Bay, the voters elected a member of Sweden's Pirate Party to the European Parliament. For those who are not up to speed with the Pirate Bay case, take a look at the the Wall Street Journal post for background or just know that Sweden's tolerant view on copyright infringement changed when a court announced that the Pirate Bay defendants were liable to the record companies to the tune of $3.6 million.  Apparently, the Swedish voters were not pleased with the court's decision and voted in protest for the Pirate Party.

But, don't just file this under:  "Funny Things That Happen In Sweden."  Of the thousands of copyright litigation cases that the music industry filed here in the U.S., only one ever made it to trial.  And that case returned to the courtroom this week.  

The case is Capital v. Thomas and involves six record companies suing Jammie Thomas for allegedly using a peer-to-peer network to share and download music.  To learn the details of the case, I recommend reading Ben Sheffner's posts.  He has been blogging extensively about the case and is covering each blow-by-blow during the trial. 

I don't predict that the outcome of the trial will launch new political parties in the U.S. who send representatives to Washington D.C. under a pirate flag.  But, managing the public's perception of the case will be important.  The voters who sent the Pirate Party to Parliament were largely 18-24 year olds -- an important demographic for the music industry and a group that will soon move on to positions where they will make policy decisions on copyright issues for years to come. 

Right or wrong, the music industry needs to not only win the Thomas case, but also the public relations battle as well.  If it does, the music industry will be able to quote one of our favorite pirates, Captain Jack Sparrow, who said:  "I think we’ve all arrived at a very special place. Spiritually, ecumenically, grammatically."  "Savvy?"

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