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

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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We at the Owners, Borrowers & Thieves 2.0 are big enough to admit to our mistakes when, after an exhaustive search, we can't find anyone else to blame.  Not finding anyone to blame other than the sheer height of the stack labeled:  "Interesting Things I May Never Have Time To Read", I'll have to confess that if you were interested in the post about the Dr. Jekyll and Mr. Hyde approach that the courts have taken on the issue of copyright registration, there is even more to the story. 

The issue of whether you need to register your copyright before filing a lawsuit may very well have floated up to the Supreme Court after all.  In March, the Supreme Court accepted certiorari in Reed Elsevier v. Muchnick which might resolve the copyright registration issue.  Then again, it might not.

Shourin Sen., who writes the Exclusive Rights blog, has an great post walking through the case.  For those who think these issues sound like a good substitute for a sleep aide, another commentator says oh contraire -- these issues are "sexy"!

I'm not ready to say that the issue is "sexy".  At the same time, while none of the briefs filed in the case will find their way into your local bookstore, they do make for an interesting read.  I was especially absorbed in the United States' brief filed three days ago which takes a nuanced approach to the issue.

For those who don't care to immerse themselves in reading the briefs, the take away is that even though the Petition for Certiorari focused on a couple of narrow issues, the Court ultimately asked the parties to brief a broader issue:  "Does 17 U.S.C. § 411(a) restrict the subject matter jurisdiction of the federal courts over copyright infringement actions?" 

So, although the Court could still avoid ruling on the issue directly, it is looking more and more hopeful that we will get that long-awaited guidance from the Supreme Court after all! 

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Forum shopping in not just for patent and securities attorneys although their shopping habits have a greater tendency to get picked up by the Wall Street Journal law bloggers.  Even in the copyright world, crossing state lines to a different circuit or district court can mean the difference between winning and losing.

The Copyright Act requires authors to register their works with the Copyright office before filing a lawsuit.  Does this requirement mean that the copyright owner has to wait until the Copyright Office actually issues a registration or is it enough that the owner applied for the copyright registration?  Even though the language of 17 U.S.C. § 411(a) uses the same words in New York as it does in Texas, the courts are horribly split on this issue.  It is not getting any better.

The recent district court decision in Minnesota, Tri-Marketing, Inc. v. Mainstream Marketing Services, Inc., highlights that the split is not just among the circuit courts.  With the new decision, the Eighth Circuit now has:

1. two Minnesota district courts reaching opposite conclusions;
2. dicta from an Eighth Circuit court decision suggesting one conclusion; and
3. a district court in Nebraska saying that suggestion is a bunch of baloney. 

Don't blame this mess on the drinking water in the Eighth Circuit.  The D.C. courts have reached opposite conclusions as have district courts in New York and elsewhere. It appears that the district courts are running in random directions in those circuits which have not weighed in yet. The recent decision from Minnesota just reminded me how much we need the circuit courts to take these cases.  It may take the Supreme Court to straighten this out, but it will take more circuit courts accusing the others of an inability to read English to get the Supreme Court's attention.

Is this stuff that only a law professor could love?  Hardly.  Consider the example of an architect who learns that plans which show promise of launching his career suddenly appeared on the Internet or a photographer who discovers her images will be used in a political campaign without her permission and against her own wishes.  The common thread in both is that each will want an immediate injunction to shut down the infringer.  

In a circuit or district court that requires registration first, the court won't issue an injunction based on copyright infringement -- at least not until you file for an expedited registration to try and jump in front of the incredible backlog at the Copyright Office.   Yet, cross a state line and the outcome may be entirely different.  The court may or may not grant the injunction, but at least the court will listen to you.  All this leads to forum shopping and races to the courthouse -- which just increases the cost of litigation that is already too expensive for many.

The American Bar Association has been studying the issue and may try to get Congress to clarify the law rather than waiting for the process to slowly play its way through the courts.  Then again, it may not.  What do you think?  Is this a "who cares" issue?  If it is worth our attention, what is the solution?

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We previously wrote that the Second Circuit handed Google a defeat in its efforts to sell trademarks of competitors for its lucrative keyword advertising scheme.  Apparently undeterred by that setback or ongoing action with Louis Vuitton which is now in the European Court of Justice, we learn from our favorite blog on all things IP in the European world, IPKat, that Google announced that it will expand sales of keyword advertising (including the sale of a competitor's trademarks) to 194 more countries.

The Internet World Club reports that the move to expand keyword advertising globally is not going to make Google many friends among the companies with stables of thoroughbred trademarks and will add new fuel to the Louis Vuitton case.  The Vegas betting line is that Google will lose the action before the European Court of Justice which, according to IPKat, is expected to announce its decision on the same day that Google is expanding its keyword advertising scheme.

While I do not profess to hold a crystal ball of any renown, I can already envision IP lawyers from around the globe rejoicing and powering up their computers to prepare lawsuits against Google.  Likewise, I suspect Google has received one or two phones calls and e-mails from IP defense counsel offering their services.  Meanwhile, I suspect that Microsoft is enjoying a brief moment of respite from being the center of controversy. For the rest of us, we can watch what is sure to be some exciting clashes over the issue of keyword advertising.

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Either this week or next, Facebook will make it official that it will follow its new terms of use -- the legal stuff buried in a link at the bottom of the homepage entitled "Terms".  Who cares?

If you are a writer, photographer, musician or other creative type, you are likely to have a Facebook page and you definitely should care.

But, you don't need to be a writer or other artist to care.  What you post today may be worth something tomorrow -- whether by design or dumb luck.  If you are reading this blog and are under the age of 106, you are likely to be on Facebook or some other social networking site.  Facebook alone claims to have 200 million users and there seem to be enough social networking sites to fill a Costco-sized grocery cart.

Still, many creative people are using the enormous popularity of social networking sites to tap an international audience in hopes of creating a buzz that will promote his or her creations.  It is not uncommon for photographers, for example, to post pictures such as this one -- albeit much cooler -- on their page to generate interest.  Of course, this is not unique to photographers.  Writers, musicians and others who develop creative material regularly post their creations on social networking sites.  

Perhaps because there are so many people who have posted their creative works on Facebook, a mini-revolt took place when Facebook announced that it was changing the terms of use.  As the Consumerist reported, bloggers discovered that Facebook had changed its terms to arguably grant itself significant new rights to the creative works that users posted.  The change led several artists such as photographer, Jim Goldstein of San Francisco, to announce that they were removing their work from Facebook.

Facebook did back off of its broad terms and agreed to allow the Facebook community to chose whether to adopt the old set of terms or a revised set of terms.  Last Friday, Facebook announced that the tenative results (presumably subject to an inspection for hanging chads) showed that its users voted to approve the revised set of terms that are somewhat less broad that the ones that set off the mini-revolt.  I expect that we will hear an official confirmation of the vote soon.

So is it now safe to post your creative work on social networks?  I count myself as one who takes Facebook CEO Mark Zuckerberg at his word when he says that there was no intent to make a mass grab at the intellectual property rights stemming from user generated content.  But, you still need to get the terms of use right else a court may listen sympathetically and then rule:  "So sorry, too bad."

I am still puzzled by the expansive language that has been adopted.  One who posts anything on Facebook still gives Facebook a license to use the work for almost any purpose.  This is in stark contrast to terms on MySpace, Xanga and Bebo for example that more narrowly restrict the purpose for which the social network receives a license to use posted content.  Even better, Twitter expressly states that it does not claim any intellectual property rights over the material provided to Twitter.

For now, I think that someone who posts work that he or she created on Facebook should be cautious.  I don't think that there is anything sinister going on at Facebook, but the legal language still does not match its public statements.  The terms are better at several other social networking sites, but they are still fairly broad so read the terms of any social networking site before posting your work and check periodically to see that the terms have not changed.  Take these precautions before you post and avoid hearing the judge rule:  "So sorry, too bad!"

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If I search for "Delta Airlines" on Google so I can book my flight to Washington D.C. to see the cherry blossoms, can Google sell American Airlines the "Delta" trademark as a keyword to ensure that American's advertisement appears with my search results?  It does not appear that American Airlines does this, but other companies do and litigation ensues.

The Second Circuit waited until the American Bar Association's Intellectual Property conference and the bloom of the cherry trees to release its long-awaited decision in Rescuecom Corp. v. Google Inc.  -- the first circuit court to directly address the issue of keyword advertising. 

For the uninitiated, Google sells keywords to advertisers -- including the trademarks of an advertiser's competitors -- which it calls contextual advertising so that when a user types a keyword into a Google search, the advertiser's link will appear in an area above or to the right of the natural search results labeled "Sponsored Links."  So a business could "buy" its competitor's trademark as a keyword to trigger its own advertising in the Sponsor Links section.  

One of Rescuecom's competitors paid Google the right to use the RESCUECOM trademark as a keyword to trigger its advertising. Rescuecom sued Google for trademark infringement, dilution and other claims.  The district court ruled in Google's favor as had every other district court in the Second Circuit.  The court held that there is no cause of action because, in part,  the user never sees the RESCUECOM trademark -- the Google results do not show the trademark in the Sponsored Links section.  But, decisions outside of the Second Circuit held that selling a trademark as a keyword to trigger advertising does state a cause of action for trademark infringement.  For those of you who are a glutton for punishment, you can find the main briefs filed with the circuit court at Professor Eric Goldman's blog, Technology & Marketing Law Blog.

Apparently, the Second Circuit put a lot of thought in its decision as it took exactly one year to the day from the time it was argued for the court to release its decision.  The decision reversed the district court and held that Rescuecom did state a cause of action and could proceed with proving the rest of the requirements to establish trademark infringement.  Professor Goldman provides one early analysis of the decision.  As the Wall Street Journal noted, however, the Second Circuit decision only allows the case to go forward. 

Rescuecom still has to prove the rest of its case before it can declare victory which the Progress & Freedom Foundation (which Google appears to be a member of), does not believe is likely.  Regardless, the decision is noteworthy as the first circuit court to weigh in on whether selling a competitor's keyword to trigger advertising can be the basis for a trademark infringement lawsuit.  I suspect it will also initiate a new round of litigation against Google in an effort to claim some of the advertising revenue Google receives under this program.

One curious part of the thirty-four page decision is that on page fifteen, the Second Circuit concludes its analysis.   To what do we owe these extra nineteen pages?  An Appendix.  Usually, an appendix is the place to dump graphs, pictures and incomprehensible data.  But in this case, the court examines the real nut of the advertising keyword debate. After an exhaustive examination of the statute and legislative history, the court concludes that it can't reach a conclusion because the statute, the Lanham Act, and its history are just too ambiguous to reach a conclusion! 

The court, in the Appendix, then calls on Congress to fix the problem.  Given that Congress is preoccupied with the economic crisis, two wars and a handful of other social issues, I wouldn't hold my breath while waiting for that to happen.  Perhaps someone at the court decided that the research that they did on the issue should not be buried somewhere never to be seen again, but the Appendix still strikes me as odd.

While we wait for Congress, I suspect that someone in Las Vegas would be willing to take a bet as to which circuit court will be the next one to weigh in on this issue.  My money is on the Ninth Circuit.  What's your bet?

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