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

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 . . .  

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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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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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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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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.

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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.

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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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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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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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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.

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