Less Hope For Shepard Fairey in Obama Hope Poster Case?

By Dave Rein

If the street artist, Shepard Fairey, initially thought the copyright litigation over the Obama Hope poster would be a good-natured pillow fight with the Associated Press, he probably knew that it was going to get ugly once it came to light that he was less than truthful to the court in representing which photograph he used to create the Hope poster.

Mr. Fairey sued the AP last year asking the court to declare that the Hope poster does not infringe any of the AP's rights.  The AP countersued for copyright infringement and others have joined or been brought in as well.  It is now getting uglier for Mr. Fairey.  An earlier post describes Mr. Fairey's confession, but the saga continues. The court has shown that it is receptive to allowing discovery not just on which photograph Mr. Fairey actually used, but also on making him name names.

Specifically, Judge Alvin Hellerstein ruled on April 5, 2010 that Mr. Fairey must disclose who was involved in destroying documents in an effort to hide how the Hope poster was actually created:  "Plaintiffs shall disclose the identities of those who did the deletion and destruction and of those who knew about such deletion and destruction."  Mr. Fairey will have to disclose who performed the destruction, who supervised it and who knew about the destruction.   

The court's April 5th order itself may not elicit much excitement, but it raises several questions:  why did the court agree to allow discovery on the destruction of documents?  Although documents bearing on the creation of the Hope poster would be relevant, Mr. Fairey has already admitted that he used the photograph that the AP believed he used.  Does the discovery go to potential sanctions against Mr. Fairey and others who assisted in the destruction of documents?  If so, does the court intend to impose sanctions on top of the related criminal investigation?  Is such discovery relevant to undercut Mr. Fairey's fair use defense?  Neither the court's order nor the joint letter that the parties submitted to the court address the relevancy of the discovery.  

Regardless, the potential that others may have helped destroy documents on Mr. Fairey's behalf means that we may have more twists and turns to come in this case.

Federal Circuit Says Korean War Memorial Stamp Violated Sculptor's Copyright

By Dave Rein

Sometimes a 37¢ stamp does buy quite a bit.  One lucky sculptor, Frank Gaylord, may find that such a stamp could give him some extra spending money in the neighborhood of six or seven figures.

The Court of Appeals for the Federal Circuit recently reversed the lower court and ruled that the U.S. Postal Service violated Mr. Gaylord's copyright when it issued a stamp based upon a photograph of a sculpture called "The Column".  The Column is composed of 19 statutes representing a platoon of soldiers such as the one on the left and is part of the Korean War  Memorial.  

Years after the memorial was opened, the Postal Service decided to use a photograph of the Column that John Alli shot early in the morning after a snowstorm.  It paid Mr. Alli $1,500 to use the photograph.  

To show how difficult it can sometimes be to determine who owns a copyright, Mr. Alli believed he had authority to commercially exploit his photograph because he entered into a license agreement with an entity that said that it held the copyright in The Column.  Only later did Mr. Alli learn that Mr. Gaylord actually held the copyright.

While it may have been difficult for Mr. Alli to determine who owned the copyright in The Column, the government was certainly aware of Mr. Gaylord as it worked with him on certain aspects of The Column (the degree of which was disputed).  Surprisingly, it never required Mr. Gaylord to either share his copyrights or provide it with a license to use The Column. 

Mr. Gaylord sued the Postal Service claiming that he was owed a 10% royalty on the sales of $17 million worth of postage stamps plus other merchandise that featured images of the stamp.  

The parties agreed that Mr. Alli was entitled to his own copyright protection in his photograph as a derivative work. Although the parties stipulated that the photograph was a derivative work, as I noted elsewhere, this is still an open question.

There were multiple issues before the Federal Circuit, but the main one was whether or not the  stamp's depiction of The Column was fair use under 17 U.S.C. § 107.  It was not only the crux of the parties' argument, but also one of the first times that the Federal Circuit weighed in on fair use.

Typically, fair use is "for purposes such as criticism, comment, news reporting, teaching . . . scholarship, or research", but it also applies more generally to uses that fall within the four statutory factors.  The Federal Circuit agreed that the stamp did not effect the potential market or value of The Column, but it found that the other three factors weighed against the government.

The parties' argument about the first factor, i.e. the purpose and character of the infringing use, centered on whether or not the stamp was "transformative" of the original sculpture.  Mr. Gaylord argued that the stamp could not be transformative because the stamp and The Column both have the same purpose of honoring the veterans of the Korean War.  The court agreed and rejected the government's argument that the addition of snow and muted colors enhanced the sculpture's surreal character because they do not change the  "character, meaning or message" expressed in the sculpture.   As the court said:  "Nature's decision to snow cannot deprive Mr. Gaylord of an otherwise valid right to exclude."  

The Court of Appeals also seemed troubled that the stamp did not comment upon the original work nor was it part of a biography.   It will be interesting to see whether this case will be interpreted as narrowing the test for what constitutes a transformative use. 

Because the stamp was not a transformative use and was for a commercial purpose, the court held the first factor weighed against fair use. The second (the nature of the copyrighted work) and third (the amount and substantiality of the portion used) factors also weighed against fair use according to the Federal Circuit.  At least one commentator believes that the Federal Circuit's decision was right.  

Regardless of whether it is right or not, this case illustrates the importance of licensing.  The government decided it did not need a formal agreement that allowed it to use the sculpture.  I applaud public entities for making sure that they treat artists fairly, but they also need to make sure that they think through the repercussions of not obtaining some protection in the form of joint ownership in the copyrights or a perpetual license to use the copyrighted works upon terms that are fair for everyone.  

You Choose: Four Years of Litigation or Taking Care of the Copyright Portfolio

By Dave Rein

As one of my daughters has discovered Calvin & Hobbes cartoons, I wonder whether she'll be inspired to try some of Calvin's outlandish ideas such as barreling down a steep hillside and over the abyss in a red wagon or if she'll make the proverbial "note to self" not to follow Calvin when the last frame shows the resulting crash.

I get it.  There are metaphors and life lessons and the yearning for a more exciting life.  But, I'm not sure that casting away the "dull and boring" best practices is a good way to protect one's intellectual property.  The Seventh Circuit in Schrock v. Learning Curve Int'l, Inc. helped clarify some lingering questions about derivatives in the copyright world -- at least in that circuit.  As I mentioned in an earlier post, to do so, the parties spent four years just to get to an oral argument before the Court of Appeals.

In reading the opinion, two things struck me that might have avoided the litigation or at least kept it from being so prolonged.  First, it could have registered its copyrights in the toys.  Some of the toy maker's registrations only applied to literary works related to the toys, but not the toys themselves.  Whether the toy maker was the owner of the copyrights and whether they were properly registered (and therefore entitled to all presumptions that follow) was a matter the judges expressed considerable interest in at oral argument.  

Second, the licensing agreement between the toy maker and the photographer consisted of the terms stated in the photographer's invoices.  Leaving the determination of who owns a copyright and its licensing terms to the battle of the forms should make the true copyright owner nervous.  In Schrock, the toy maker realized what happened years after it started doing business with the photographer and asked him to sign a "work for hire contract".   He refused, but even if the photographer had signed the contract years after he first provided photographs, that may not have solved the problem.  Some jurisdictions require that the contract be signed before the work is created or at least require that it memorialize an oral agreement made before the work's creation. That may have been too high a hurdle in this case although it likely would have been effective if entered at the onset of the work.

Regardless of whether a work-for-hire contract would have been effective, the court noted that the parties could have contractually agreed that the photographer would not register his copyrights in the photographs.  Actually, it did more than note that issue.  It remanded the case back to the district court to determine if the parties agreed to such a limitation.   

Certainly keeping up with copyright registrations and thousands of contracts is a constant struggle for companies or individuals that continuously create new content.  In these times when general counsels are under increasing pressure to reduce their departments' budgets, it is even harder to do so.  The challenge then is how can they convince upper management of the wisdom to spend money now to avoid paying even more later.

The parties' ordeal in Schrock may be useful to show that even companies with good copyright practices might benefit if more resources are devoted to auditing the company's contracts and copyrights and maintaining them. Litigation is not always avoidable, but anyone who owns copyrights and enters into contracts involving copyrights might be able to avoid prolonging the litigation and save money in the long run. At least it is better than throwing your copyrights on a red wagon with Calvin and hoping that they fly safely across the abyss.

Debate Continues Whether A Photograph Is A Derivative Work But 7th Circuit Issues Broad Ruling

By Dave Rein

Derivative.  Is there a less appealing or scarier word in which to start a horror novel or blog post? The very word conjures up everything complex in the financial world and is synonymous with our current economic disaster. Woe be to the one who missteps in the financial derivative world for he or she will quickly be escorted by a torch-lit mob to the nearest Congressional inquiry!

So it is in the wide world of copyrights.  The simple mention of the phrase "derivative work" is likely to spur many a copyright lawyer to dust off the copyright statutes and brandish them in one hand while holding a Tiki torch in the other.

When one makes a movie which is substantially based upon a novel, he or she is making a derivative work.  A derivative work is one "based upon one or more preexisting works such as a . . . musical arrangement, dramatization . . . or any other form in which a work may be recast, transformed, or adopted. 17 U.S.C. § 101.   As the owner of the underlying work has the exclusive right to make derivative works, whether a work is or is not a derivative work matters. 

Is a photograph of a sculpture or a toy a derivative work?  Professor Patry  has firmly stated more than once that a photograph of another copyrighted work is not a derivative work, but the extensive comments to his blog posts demonstrate that others are not persuaded.  Likewise, the courts have yet to find their footing on this issue as well. 

And so I've been curious to watch the reaction to the 7th Circuit's decision in Schrock v. Learning Curve.  Short of a few comments including one from Michael Kahn, the reaction has been muted.  No torches, no dramatic readings from 17 U.S.C. § 101 . . . nothing.  Admittedly, the Seventh Circuit two-stepped around the question that we were waiting for it to answer: "Is a photograph a derivative work?"  It did so by assuming -- without deciding -- that the photographs were derivative works.  But, the case is still worth a read whether or not you have any interest in photographs because it did address two broader questions about derivative works: 

(1) Should the new derivative work be subject to a higher standard of originality before it receives its own copyright?

(2) Does the creator of the derivative work need the original creator's permission to register the copyright of the derivative work?

The 7th Circuit said "No" to both questions and changed its prior rulings or at least its dicta that was followed by the lower courts.  The case involved the maker of Thomas & Friends toy trains, Madeline and other toys along with Daniel Schrock who was hired to photograph the company's toys for marketing.  Just like in all good litigation, the relationship soured.  When the toy maker allegedly breached the terms under which the photographs were licensed, Schrock sued for copyright infringement. 

Surprisingly, the toy maker spent considerable time in oral argument pressing that the photographs themselves were not sufficiently original to to be copyrightable.  The 7th Circuit stood fast that the test for whether a photograph is entitled to a copyright is not a high hurdle to overcome and found, like most every court, that originality can be found in the staging of the scene, the choice of perspective, focus, lens and lighting.  As the court said, the toy maker's alternative argument, i.e. that a heightened standard of originality should apply to determine if a derivative work is copyrightable was a more interesting argument -- even if it was equally unsuccessful: 

If the photographer's rendition of a copyrighted work varies enough from the underlying work to enable the photograph to be distinguished from the underlying work . . . then the photograph contains sufficient incremental originality to qualify for copyright.  Schrock's photos of the 'Thomas & Friends' toys are highly accurate product photos but contain minimally sufficient variation in angle, perspective, lighting, and dimension to be distinguishable from the underlying works; they are not 'slavish copies.'

The 7th Circuit also changed course on one other question about derivative works.  The toy maker argued that:  (a)  even though the photographer had permission to take the pictures (it hired him to do so), it never gave him permission to register the copyrights and (b) without registration, the photographer could not sue for copyright infringement.  This had seemed to be the rule of law in the 7th Circuit.  Therefore, any creator of a derivative work would not only have to have permission to create the work, but also the underlying copyright owner's permission to register the copyright in the derivative work.  After Schrock (at least in the 7th Circuit), one who creates a derivative work no longer has to get permission from the owner of the underlying copyright to register the new copyright.  

Could the parties have avoided four years of litigation and lawyers with Tiki torches?  Absolutely!  How they could have done so is the subject of my next post. 

Now For Something Completely Different: Mattel Licenses "Barbie Girl" From Aqua

By Dave Rein

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.

A Stunning Confession Potentially Destroys Fairey's Fair Use Defense

By Dave Rein

Source of Poster:  Stephen Fairey; Source of Photograph:  Mannie GarciaDespite 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 GralishPhoto 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.

Fraud On The Patent And Trademark Office Isn't What It Used To Be: In re Bose Corp.

By Dave Rein

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?

Michael Jackson: The Music And Copyright Infringement Lawsuit Continues

By Dave Rein

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 . . . "
 

A $1.92 Million Win For The Music Industry. Now What?

By Dave Rein

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.

The Music Industry Will Need To Win More Than Just The Legal Arguments In Capital v. Thomas

By Dave Rein

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?"

 

The Supreme Court May Decide Whether Registration Is Required To File A Copyright Lawsuit

By Dave Rein

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! 

More Chaos On Whether Registration Is Required To File A Copyright Infringement Case

By Dave Rein

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?

Can Google Sell Trademarks As Keywords To Trigger Advertising?

By Dave Rein

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?

How Far Do You Go To Enforce Your Trademarks?

By Dave Rein

George Carlin's list of words you could not say on television is among the classics.  Although the list has evolved over time, the NCAA has another list of words that is vying for attention when you talk about men's college basketball. This list applies, not just on television, but everywhere.  

The Kansas City Star, in covering the two rounds of games held here in Kansas City, noted the great lengths that the NCAA goes to in protecting its trademarks --  from the NCAA bringing in its own basketball court (stripped of any logos other than its own), to warning area businesses not to use any of the 67 trademarks it has registered, to hiring scouts to spot potential infringers, and to keeping cups out of the Sprint Center other than those emblazoned with the official beverage sponsor's logo.

The cup sensitivity is apparently not a new thing as it even had someone replace basketball coach Roy William's cup during a press conference after his team advanced in the tournament several years ago. Apparently, his cup did not have the proper logos on it.

I don't have a problem with the NCAA enforcing its trademarks or limiting the exposure of marks of other companies who are not paying for the right to show their marks during the tournament.  

If CBS paid you $6 Billion over eleven years, you would protect your tournament as well.  And one of the best ways of protecting it is to brand the heck out of it.  For those of you who saw Eddie Murphy in the movie, "Coming to America", don't think that McDonald's won't clobber you on the head with a team of litigators if you opened up your own real-life version of McDowell's fast-food burger joint.  I would even help.

I was, however, interested in some of the trademarks on the list sent to area businesses.  Nobody should be surprised that "March Madness" is on the list.  Actually, you may want to read the Miller Small Business IP blog on who actually owns the mark and the interesting history of the "March Madness" mark.  Also not surprisingly, you cannot lure customers into your restaurant, hotel or shop using these trademarks:

  • NCAA;
  • Sweet 16;
  • Elite 8;
  • Final Four;
  • The Big Dance; or
  • The Road to the Final Four

But, there were other marks such as the "YES" mark that were not immediately obvious that a business should steer away from using.  You do hear commentators say "Yes!" through the course of a game when a player makes an incredible move that usually ends in a monster dunk.  But, "Yes" in that context doesn't strike me as a source indicator.  Nor am I aware that the YES mark was emphasized in advertising or said anymore often than in the broadcast of other sports events.

The YES trademark registration with the U.S. Patent and Trademark Office is limited to goods or services involving "organizing and conducting sports clinics for students, grades 6-12."  So can a restaurant hang a banner that simply says:  "YES!"? I doubt that anyone is claiming that the YES mark is famous so the normal trademark analysis would likely apply.  Will restaurant goers seeing the banner believe that the restaurant is somehow affiliated with a sports clinic put on by the NCAA?  

There may be some great arguments for why YES is on the list that restaurants and hotels need to avoid, but it got me thinking:  "What if there is no plausible argument of confusion?"  Would the NCAA have gone too far if it sent warning letters to businesses in host cities not to use marks that really don't apply?  What do you think?

 

Christie's Dilemma: Sue When Buyer Refuses To Pay?

By Dave Rein

If you are an average Joe the plumber who happens to have an extra $40 million laying around to bid on an item or two at an auction and you don't pay, the auction company will sue you and will likely win.  The terms at most auction houses are such that it will probably win attorney fees as well.  But, things get a bit more complicated when the refusal to pay is done at the instigation of or has the support of the Chinese government.

I wrote about the recent legal circus surrounding two Chinese bronzes sold as part of the Yves Saint Laurent art collection that the auction house, Christie's held last week.  The latest twist is either a brilliant bit of patriotism or unvarnished commercial sabotage -- depending upon your perspective.

The winning bidder for the bronzes, Cai Mingchao, announced on Monday that it was his patriotic duty to scuttle the auction of the items and that he could not and would not pay for the bronzes.  A video clip of his announcement is found here.   As a prominent bidder of Chinese art, he was allowed to register the day of the auction.  Closer scrutiny would have shown that he was an adviser to the National Treasures Fund which is a group backed by the Chinese government to recover Chinese art.

The contract terms are clear that Christie's could bring an action to enforce the sale, it could sell to the next highest bidder and seek the difference from Mr. Mingchao, or return the bronzes to the seller and sue to recover the expected commission.  Or it could walk away.

But, if Christie's walks away, does it open itself and other auction houses to future games whenever someone decides an item should be returned even if there is no legal basis for requiring the item's return?

Jackie Chan, I get it.  You are upset that items were looted from China and there is no legal recourse.  I'm not weighing in on the moral rights China may or may not have to demand the bronzes' return.  Make your movie about a quest for stolen Chinese relics.  I, for one, will likely go and see it.

I am, however, weighing in on the legal questions.  Unless a reader can point me to some fact that I am missing, Christie's has strong legal arguments to pursue Mr. Mingchao although business concerns may weigh more heavily than the legal ones.  Will pursuing Mr. Mingchao cause Christie's a greater financial loss

Given that Christie's wants to maintain a strong presence in China and has a publicity mess on its hands, it may decide not to antagonize the Chinese government by pursuing damages against Mr. Mingchao.  China has already stated that the sale is going to have "serious affects on Christie's development in China."  Christie's does not have many other alternatives.  It could prohibit Mr. Mingchao or his own auction house from bidding in future auctions, but he could simply use an agent or a shell company to do his bidding.

One potential way that this may hurt the legal efforts to reclaim looted Chinese art is that an attorney representing an auction house or seller can cite this incident to argue that the National Treasures Fund, the Association for the Protection of Chinese Art in Europe or the Chinese government itself are simply trying to scare potential buyers and is again engaging in frivolous litigation.  The tactics that these organizations engaged in this time may encourage a future court to impose the strongest penalty available to discourage others from using the courts for what amounts to a publicity stunt.

What would you do now if you were Christie's?  Would you pursue Mr. Mingchao?  Do you think the recent events will help or hurt China's efforts to reclaim looted art?

No Legal Basis For The Return of Looted Bronzes

By Dave Rein

Not Your Ordinary Garden SculpturesIt is not surprising to find drugs and fashion in bed together and last week was no different.  Opium, a rat, a rabbit, and a  fashion house took center stage at the "Sale of the Century".  Even those whose art budget leans towards items painted on velvet may have heard about the sale of what has been called one of the most important art collections in private hands.  Items owned by the late fashion designer Yves Saint Laurent and his partner, Pierre Berge, received enormous attention even before they hit the auction block in Paris.

Among the items that received unusual attention were two bronze sculptures carved by a Jesuit priest that had been a part of a water-clock at a Chinese summer palace.  China formally protested the sculptures' sale and APCA (the Association for the Protection of Chinese Art in Europe) asked a Paris court to block the sale.  The court ruled that APCA did not have standing and ordered it to pay $1,274 US to both Mr. Berge and the auction house, Christie's.

The decision seems to have sparked strong emotion from the Chinese because the two statutes were looted by the British and French from the the Emperor's Summer Palace during the Second Opium War in 1860.  Putting aside the moral debate however, what struck me was the insistence that the Chinese government has strong legal claims to the bronzes.

Even if the Chinese government instead of APCA had filed the lawsuit, it is difficult to see how the case was anything more than an attempt to garner public attention.  The Shanghai Daily mentions that the UNESCO Convention on Stolen and Illegally Exported Cultural Objects would not apply a statute of limitations in this case -- suggesting that other provisions would obligate the bronzes' return to China.  If that is the argument, then it is a silly one.  The UNESCO Convention does not apply at all as it  would only apply to objects taken or exported after the convention became effective for the respective parties.  I think it is safe to say that nobody needs to run to the appendix of the the convention to see if China and France signed the UNESCO Convention (or any other convention) during the Qing Dynasty.  The first countries to sign the UNESCO Convention signed it in 1970 and everyone agrees that the bronzes were taken in 1860 -- long before there was any notion of a convention.  The same is true for those who point to the Uniroit Convention on Stolen or Illegally Exported Cultural Objects which was signed in 1995.

I know enough that I would be lost if opposing counsel started talking about the Napoleonic Code, but courts in most states in the U.S. would probably throw the case out too.  The sculptures were not exactly hidden away in the attic of a recluse.  Rather, it was well known that Laurent  and Berge owned the sculptures and only when the bronzes came up for auction was any effort made to demand their return.  Suffice to say, that most courts would likely hold that the statute of limitations would have run under state law in that if the Chinese government had exercised due diligence in searching for the sculptures, it would have had no trouble learning of their whereabouts.

It appeared that the bidders were not concerned about the legal ramifications as the sculptures sold for about $40 million US -- multiples of the initial estimates, but we learned on Monday that  the winning bidder had no intentions of paying.  His actions are discussed in a separate blog posting.  Is the combination of a lawsuit and fake bidding an effort to scare real bidders?

Perhaps the weak legal arguments or simple taunting prompted Mr. Berge to offer to return the sculptures if China "only" agreed to abide by human rights and allow the Dali Lama to return to Tibet. 

What do you think?  Did China have stronger legal arguments or was it resigned to making a moral appeal that at the end of the day, the items were admittedly looted? 

Fair Use or Copyright Infringement? Iconic Obama Poster Sparks Debate

By Pete Salsich III

Whether you view it as an iconic image for a hopeful progressive nation or nothing more than a thinly-veiled attempt at Soviet-style propaganda, you've almost certainly seen one of the now-famous Obama posters created by artist Shephard Fairey.  (above right)

Two weeks ago, the Associated Press accused Fairey of copyright infringement because the poster was based on a photograph taken in April 2006 by Mannie Garcia while on assignment for AP.  (above left)

Last week, Fairey countered by filing a declaratory judgment action in the Southern District of New York, claiming that his use of the original photograph is protected by the Fair Use Doctrine.  According to his Complaint (.PDF here), "Fairey used the Garcia Photograph as a visual reference for a highly transformative purpose; Fairey altered the original with new meaning, new expression, and new messages; and Fairey did not create any of the Obama Works for the sake of commercial gain."   

I think he's right.  Fair Use can be a notoriously slippery concept to apply, but in this case I think the transformative nature of Fairey's posters tips the case in his favor.  Moreover, he used only a portion of the original photograph--only as much as necessary to achieve his expressive purpose--and I think it unlikely that the AP could prove Fairey's posters have had a negative impact on the commercial market for the photograph.

In an added wrinkle, apparently the AP's claims of copyright ownership in the photograph are being questioned by Garcia himself.  This looks more like a PR blunder for the AP than anything else, but at least Garcia's work as a photographer is getting noticed along with Fairey's ubiquitous poster.

Owners, Borrowers & Thieves 2.0

By Pete Salsich III

Coming soon to a blogoshpere near you . . .

As regular readers of this blog know, we have often used this space as a means to follow and comment on the continuing tension that results from trying to fit new technologies, new types of content and new content delivery systems into old paradigms of intellectual property law.  Sometimes it's copyright -- for example, YouTube's assault on (or defense behind) the DMCA;  sometimes its trademark -- for example, whether Google Keyword ads constitute trademark use for purposes of an infringement claim; sometimes it's even Comics!

Recently we've realized that our mutual interest in emerging technologies and how the law practice can adapt to a changing IP environment has been prompting us to adapt our blogging to fit our own new paradigm.  We're very excited about some changes that will be coming shortly, including adding a fresh new voice or two.

We hope we've been "fairly useful" (to borrow Professor Sag's great blog title) so far, and hope you'll check in regularly as we go forward.

Stay tuned . . .  

Fantasy Baseball 2, Real Baseball Zero

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The Eighth Circuit handed down its much awaited fantasy baseball decision in CBC Distribution & Marketing, Inc. v. Major League Baseball Advanced Media, L.P., the appeal of the district court's summary judgment in favor of CBC.  CBC had brought a declaratory judgment case in St. Louis to establish its right to use -- without license or compensation -- the names and statistical information of real major league baseball players in its fantasy baseball products.  The players had counterclaimed, maintaining that CBC's fantasy baseball products violated their rights of publicity.

Although the Eighth Circuit concluded that use by CBC of the names and statistics of the players in its commercial fantasy baseball operations satisfied all three elements of the Missouri tort -- namely, (1) use of the player's name as a symbol of his identify, (2) without his consent, and (3) with the intent to obtain a commercial advantage -- it held that this use was nevertheless a "fair use" under the First Amendment.

But of more interest to me -- and to those concerned that right-of-publicity has become the tort of choice for celebrities seeking to avoid the First Amendment barriers to libel and privacy claims -- is the Eighth Circuit's treatment of the controversial  First Amendment test created by the Missouri Supreme Court in the Tony Twist case, which is also the same case that articulated the three elements of the tort claim set forth in the preceding paragraph.

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James Brown "Live": Papa's Got a Brand New Claim

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While death has ended James Brown's reign as Hardest Working Man in Show Business, his post-mortem litigation may yet snatch from Elvis the title Hardest Work Corpse in Lawsuits.  His latest appearance was in the Illinois Appellate Court, where he was the headliner in the appeal of a right-of-publicity claim against a company that licenses copyrights for stock photographs.  The case presents an intriguing and somewhat confusing fair-use struggle along the border between right of publicity and copyright law.

The basic facts are straightforward: The main defendant, Corbis Corp., licenses the use of stock photographs and images. Its customers range from newspapers and magazines to advertising agencies.  It had, for example, given Rolling Stone Magazine a license to use certain photographs of James Brown in a profile the magazine published under the title Being James Brown.

So far, so good.  Entirely proper, no cause of action.

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Trademark Trial & Appeal Board Says Internet Is Here To Stay

By Pete Salsich III

No, that's not a headline from The Onion.

In a recent precedential opinion, the TTAB held that evidence from the immensely popular online encyclopedia Wikipedia can be admitted even though -- by its very nature -- such evidence may be unreliable.  See In re IP Carrier Consulting Group, TTAB, Serial No. 78542726 (June 18, 2007).   At issue were applications to register two trademarks: "ipPICS" for online image services and "ipPIPE" for communications services.  The PTO rejected both applications on the grounds that they were merely descriptive of the services provided.  In doing so, it relied in part on numerous online and print sources showing that the abbreviation "ip" was commonly used to refer to "Internet Providers" such as the applicant.  On appeal to the Board, the applicant cited Wikipedia's entry on "Internet Service Provider" to show that the most common abbreviation for Internet Provider was "ISP", not "IP."  The Board accepted and considered the Wikipedia evidence, but still affirmed the examiner's descriptiveness finding and refused the applications.

In the process, the Board spent some time discussing the relative merits of evidence from Wikipedia and other user-edited online sources and concluded that the fact that such sources may sometimes be unreliable does not make them automatically inadmissible, provided the non-moving party has an opportunity to introduce rebuttal evidence.

Does this make sense?  John Welch at the TTABlog doesn't think so.

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Settling The IP Litigation Case: A Great New Blog Resource

By Pete Salsich III

As should be pretty obvious from most of the posts on this blog, we like to focus on new cases, new industry developments and new technology and how all those new things fit in with old (or at least older) legal constructs.   Today I want to draw your attention to a new resource that focuses on the old practice of settling cases.

I recently discovered The IP ADR Blog, a new blog hosted by Victoria Pynchon, Michael Young, Les Weinstein and Eric Van Ginkel, a group of well-respected alternative dispute resolution specialists in Los Angeles.  The blog focuses exclusively on IP litigation/ADR-related issues such as licensing structures, negotiation and IP asset valuation, all with an eye on getting litigating parties out of the courtroom and back to business.  Often one of the biggest challenges we face when advising clients involved in IP disputes is not letting the legal issues get in the way of seeing the business realities.  From what I've seen so far, The IP ADR Blog looks like it's going to be a great resource in meeting this challenge.

As Victoria Pynchon says in one of the first posts on the blog:

"Collaboration and reciprocity are the by-words of the blogosphere and the key to the settlement -- or the effective management -- of complex IP litigation."

I agree -- and in that spirit, I look forward to joining the dialogue and learning from these authors.

"Hey! (hey!) You! (you!), I wanna be your lawyer!"

By Pete Salsich III

That might be an increasingly popular refrain heard by Canadian pop star Avril Lavigne, who is getting a lot of attention right now for her songwriting practices.  Last week, Lavigne was hit with a copyright infringement lawsuit over her song "Girlfriend."  The plaintiffs are the founder and former road manager of the '70's pop band the Rubinoos.  They claim that Lavigne's hit infringes their 1978 release "I Wanna Be Your Boyfriend."  As you would expect, you can already find many comparisons on YouTube and elsewhere, including the Rubinoos own website.  (Of course, all those who posted snippets of both Lavigne's and the Rubinoos' copyrighted music on YouTube and elsewhere should have a fair use right to do so, as long as they only used as much of the songs as was necessary to facilitate their commentary.)  Eminent copyright scholars like William Patry and almost everyone else seems to have weighed in on whether the suit has merit. 

Lavigne publicly responded this week by essentially asserting a "no access" defense -- that is, she claims she never heard the Rubinoos' song, so couldn't possibly have copied it.  Curiously, Lavigne does not say whether her co-writer, producer/remixer Dr. Luke, ever heard the song.

The "never heard it" defense won't help Miss Lavigne out of her most recent copying flap, however.  In the last two days, similar copying claims have surfaced regarding another of her songs, "I Don't Have To Try."  This time Lavigne allegedly copied the song "I'm The Kinda" by Peaches, an artist (and song) that Lavigne recently publicly stated was one of her biggest influences. 

I'm no musicologist, but at first blush both claims appear to have some merit, and they can't be good for the young pop star's reputation.  It may be great to be in Rolling Stone and on Perez Hilton, but there are better ways to be noticed.

Copyright Infringement, Digital Devices and Electronic Discovery: Courts Have Random Access Memory Lapses

By Pete Salsich III

Beware the RAM . . .

From Gary's iPhone to my TiVo to your computer, we've begun to take the existence and use of digital devices almost completely for granted.  Most of us never think about the vast amounts of digital data that are being processed through our devices' random access memory (RAM).  On the most basic (non-technical) level, all digital devices create and very briefly store--often for only fractions of seconds--transient data "buffer" copies of digital information in order to ultimately display and/or process that information for the end user. 

Cool, but so what, right?

 

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Carol Burnett and Fox TV: Who's Fair and Balanced Now?

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The rulings contained within District Judge Dean Pregerson's opinion dismissing Carol Burnett's lawsuit against Twentieth Century Fox could have been predicted the moment we heard about the case. If ever there were a textbook example of the "fair use" doctrine in copyright law and the "parody" exception in trademark and dilution law, this was it.

Burnett had sued over a short clip from Fox's animated television show, Family Guy. In the scene, Griffin family patriarch Peter Griffin and his pals visit a porn shop. Upon entering the store, Peter remarks that it is cleaner than he expected. One of his friends explains that "Carol Burnett works part time as a janitor."  The scene shifts to an animated figure resembling the Charwoman character from the Carol Burnett Show mopping the floor next to bin of life-size blow-up dolls and  a rack of XXX movies.  Judge Pregerson explains:

"As the 'Charwoman' mops, a slightly altered version of Carol's Theme from The Carol Burnett Show is playing.  The scene switches back to Peter and his friends.  One of the friends remarks, 'You know, when she tugged her ear at the end of that show, she was really saying goodnight to her mom.'  Another friend responds, 'I wonder what she tugged to say goodnight to her dad,' finishing with a comic's explanation, 'Oh!'"

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Son of Tasini -- or Desperately Seeking Analogies

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Books published before tape recorders were invented are now on CD, movies made before television was invented are now on DVD, and newspapers--that most venerable of media formats--are now online.  Each new technology creates the same old headache for the courts, especially in copyright infringement cases: the need to find the appropriate analogy. We've seen it before as courts try to determine whether the contractual right to publish a book also includes the right to publish an ebook or, as in last month's ruling, whether the 1939 grant of "motion picture and television rights" to the distributor of Citizen Kane includes the right to make and distribute the movie in home video form.

And now the latest round in freelance photographer Jerry Greenburg's copyright battle with the National Geographic Society, which has taken an ominous turn for him in this, its tenth year in the federal courts.  His lawsuit is the latest skirmish along the borders of  Section 201(c) of the Copyright Act, which governs the allocation of copyrights in "collective works" such as magazines, anthologies and encyclopedias. His lawsuit--and especially this week's decision by the 11th Circuit in Greenburg v. National Geographic Society vacating his $400,000 judgment--is an excellent example of the judiciary's ongoing struggle to apply to new technology the legal principles that were forged on old technology.

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Patent Law's Fair Use Defense

By Geoffrey Gerber

The First Amendment does not explicitly say that it applies to thoughts and ideas. I wonder if patent law would be different if it did.

Several years back, we got my youngest a LeapPad® that he liked to read in the car. If you haven’t seen or used one, they are pretty cool. It is a hinged plastic case (kind-of a cross between a binder and a clam-shell) into which you can insert certain books and their related memory cartridges.

According to LeapFrog®, you ”Put a book on the LeapPad player and pop in the cartridge. Stories suddenly come to life with the light tap of the Magic Pen. Touch a word and sound out each letter. Then spell it and define it. Silly songs serenade. Characters charm everyone with their hilarious sense of humor.”

When we first got this slick, new, electronic toy, I thought it was very clever. It won awards. My nieces and nephews each got them. It is made by LeapFrog®, which had rights in U.S Patent No. 5,813,861 (“the ‘861 Patent”) related to the technology used in this toy.

When my youngest broke his LeapPad®, we wanted to get him something else to use on those long trips to the family in Michigan or on the East Coast.

Along came Fisher-Price® with its PowerTouch™. What a great idea! Wait, there is something familiar about this. It is a hinged plastic case (kind-of a cross between a binder and a clam-shell) into which you can insert certain books and their related memory cartridges.

Apparently LeapFrog® took issue with appropriation of this great idea by Fisher-Price® and sued for patent infringement.

What does that have to do with fair use?

Yesterday, the Federal Circuit, for the first time since the U.S. Supreme Court decided KSR International Co. v. Teleflex Inc., affirmed a district court invalidity decision based upon obviousness. It was the LeapFrog case. This decision cites the Supreme Court twice. KSR will clearly have a significant impact on this area of the law and a single decision will not sort all of this out. If you’d like to jump straight to the two citations and find a collection of discussions about the impact of KSR, check out today’s post (KSR Teleflex Obviousness Standard Applied by the Federal Circuit in Leapfrog v. Fisher-Price & Mattel) by Andy Kaulins at Law Pundit.

The LeapFrog case does not provide significant new insight into KSR, but for those of us with little kids who play with these things, it suggests something very basic about obviousness. It is the patent-law version of fair use. Fundamentally, in every IP lawsuit, there is an assessment of what is fair. Patent cases are no different. The standards for this fairness assessment are the legal guidelines for liability and the defenses. In litigation (more in motion practice rather than trial), and particularly on appeal we tend to focus on one narrow issue at a time. Copyright law makes fairness a single legal issue. In patent law it is not.

As a result, the legal standards in patent law develop without a firm grounding in what is fair. Not to be too philosophical about it, patent law is the most “positive law” discipline of the various IP disciplines. Consequently, from time to time, the standards get misaligned from the fairness assessment that is at the heart of these disputes. Then either Congress or the Supreme Court must step in and realign the standards.

Perhaps KSR will be one of those instances. This post on fedcirc.us analyzing KSR certainly suggests that the Court was pulling things back and directing the lower courts to look at obviousness with a flexibl ecommon sense approach. If a patented invention was “obvious,” it should be freely available to the public. Perhaps the Supreme Court — and now the Federal Circuit — are merely saying that patent law has made it too easy to prevent the public from using unearned ideas. I don’t know.

I do know, obvious or not, getting my kid to read is a great idea.