Tuesday, October 21, 2014

Digital Course Packets At College Can be Infringing

The Eleventh Circuit spent over a hundred pages explaining why digital course packets, prepared by college professors for downloading by students, may infringe the copyright in the copied material. The opinion is here. Several academic publishers sued Georgia State for failing to obtain consent and pay license fees when professors copied portions of copyrighted material for downloading by students. These digital course packets supplanted traditional paper course packets, for which GSU did obtain consent and pay a license. The appellate court spent considerable effort setting out the law of fair use and the interplay of fair use principles. Indeed, the opinion can be used as a copyright fair use treatise.

The concurring opinion summed it up best, however, by explaining that in a fair use analysis, this "case reveals the critical need to see the 'big picture' when attempting to determine what constitutes fair use of copyright work. * * * analyzing fair use, and after applying traditional common law principles to the use at issue here, this is rather a simple case."

This case does not involve an isolated event of a professor copying a single copyrighted work, or a one-time use of copyrighted material. Rather, the case involves a university-wide practice of using digital course packs, for which the university refused to pay a license, as a substitute for paper course packs, for which the university did pay a license. "This was done for the vast majority of courses offered at GSU and, as will be seen, it was done primarily to save money."

The majority opinion, in excess of 100 pages, analyses the nuances of copyright fair use in considerable detail as applied to academic use of course packs containing copies of copyrighted material. But as pointed out by the concurring judge, stepping back to take in the big picture can produce a much simpler, more direct, and more accurate result.

Trademark Protection for Food? It Doesn't Pass The Smell Test!

The federal court in Houston ruled yesterday that the flavors of Italian cooking, and the arrangement of Italian food on a plate, cannot be protected under trademark law. The opinion is here. The plaintiff, New York Pizzeria, Inc., argued that the flavors created by its pasta and pizza are protectable trademarks. It also argued that the plating of its foods -- that is, the appearance of its baked ziti, eggplant parmesan and chicken parmesan -- are protectable trade dress, But the court determined that food flavor is a functional element of food and, therefore, unprotectable.

"But the other main attribute of food is its flavor, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs. The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product."

The court also determined that while it is theoretically possible for the arrangement of food on a plate to be protectable as trade dress, the plaintiff's burden is very high. Only if plating is inherently distinctive or has acquired secondary meaning -- when plating serves no functional purpose -- can there be a potential infringement claim, but only if there is a likelihood of consumer confusion. The court denoted this plating claim as representing a "very high standard."

Wednesday, June 13, 2012

2012 Millennium Technology Prize

Linus Torvalds
The Technology Academy of Finland has awarded its 2012 Millennium Technology Prize to co-laureates Linus Torvalds of Oregon and Shinya Yamanaka of Japan. Many consider the Millennium Technology Prize to be on a par with the Nobel prize, but focusing on the development of new technology. Torvalds won a share of this year's prize in recognition of his development of the Linux kernel, the core of the open source software movement. Dr. Yamanaka was awarded the prize for his discoveries in stem cell development.

Quoting from the Finish Academy's announcement regarding Torvald's accomplishment:
One of the most important elements of the system, which he still writes code for from his Oregon home, as far as its creator is concerned, is that it should be open source software, publicly licensed for anyone to use. “I think open source is so important, it is basically taking the scientific approach of building on top of the openly published work of others, and applying it to software. And software is too important in the modern world not to be developed that way.”
Congratulations to both!
Shinya Yamanaka

Tuesday, June 12, 2012

An Example Of Bad Patent Quality

The ability of an economy to grow is related to the restraints on development. Particularly important, restraints come each day from the Patent Office in the form of newly issued patents.In 2011, for example, the U.S. Patent Office issued 247,713 patents of all types, representing an average of 678 new patents issued each day, or 28 new patents each hour of every day.

So long as the new patents are consistent with the requirements of the Patent Act -- that is, so long as the patents are good patents -- then the economic restraint that comes from each new patent is hopefully offset with the societal value inherent in the patented invention.

But certainly not all patents are good patents. Some are bad, and the bad patents restrain the economy without benefiting the greater good in a manner consistent with the requirements of the Patent Act. Are there really bad patents? You bet. Consider this one:
The above Patent No. 6368227 (issued on April 9, 2002) grants a monopoly to a "Method of Swinging on a Swing." The inventor, Steven Olson of St. Paul, Minnesota, claims to have invented a "a new and improved method of swinging." Reading carefully the patent claims confirms to everyone but the most naive that this invention has been practiced by all of us years -- indeed, decades -- ago in our backyards. So why did the Patent Office issue this patent in the first place? No idea, but the good news is that it only took about a year for the Patent Office to reexamine the patent and cancel all claims (reexamination certificate dated July 1, 2003).

Or, consider this patent:
Pat. No. 5443036 was issued August 22, 1995 for a "Method of Exercising a Cat" by having the cat chase a beam of light. Many cat owners have used a light for this purpose, and many cats understand what it means to chase a light beam. Perhaps these cats know more than the examiner who approved this patent.

That these bad patents should never have been issued is certain to most of us. That the quality control of the Patent Office allowed these patents to issue should be shocking and upsetting to all of us. Not only does it cost the taxpayers money for the Patent Office to issue obviously bad patents, but the economy is not helped  when bad patents restrain economic growth. Bad economy, bad Patent Office.

Toward An Online Bill Of Rights

Sen. Wyden (D-Ore.) and Rep. Issa (R-Cal.) have been vocal advocates against last year's Congressional steamroller that attempted to enact the Stop Online Piracy Act (SOPA) and the Pro IP Act (PIPA). The proposed legislation sought to impose government supervision on the use and function of the Internet. Loud public criticism stopped the steamroller, but Wyden and Issa believe that it may only be a matter of time before renewed energy becomes focused on enhanced Internet regulation.

In order to help focus the contours of public discussion for a free Internet, Wyden and Issa propose the development of a Digital Citizen's Bill Of Rights. Their belief is that this statement will establish minimum doctrinal standards to prevent the regulation of the Internet to fall below a base set of rights. Here are their proposed basic rights for the Internet:
1. Freedom - digital citizens have a right to a free, uncensored internet
2. Openness - digital citizens have a right to an open, unobstructed internet
3. Equality - all digital citizens are created equal on the internet
4. Participation - digital citizens have a right to peaceably participate where and how they choose on the internet
5. Creativity - digital citizens have a right to create, grow and collaborate on the internet, and be held accountable for what they create
6. Sharing - digital citizens have a right to freely share their ideas, lawful discoveries and opinions on the internet
7. Accessibility - digital citizens have a right to access the internet equally, regardless of who they are or where they are
8. Association - digital citizens have a right to freely associate on the internet
9. Privacy - digital citizens have a right to privacy on the internet
10. Property - digital citizens have a right to benefit from what they create, and be secure in their intellectual property on the internet
In my view, while a free Internet is important, so to is the freedom from harmful and illegal conduct that occurs on the Internet. A parent whose child is abused by cyberbullies will feel the need to provide some level of protection for improper Internet use, particularly when the actor resides in a foreign state that provides little or difficult legal protections. The same holds true for Internet purveyors of counterfeit goods, and other similar wrongful conduct. The notion of a free Internet is appealing, but the practical problems associated with undeveloped or difficult legal jurisdictions around the world provide, it seems to me, a practical impediment to a completely free Internet. When a person in a foreign state that provides little legal support against wrongful Internet usage can create international harm with little practical recourse, then a completely free Internet will not work.

Tuesday, May 29, 2012

An Offensive Vodka Label


An Ogden, Utah distiller, Ogden's Own Distillery, is having a problem distributing its vodka in the state of Idaho. After obtaining approval from ATF (Bureau of Alcohol, Tobacco, Firearms & Explosives) for its label, and after obtaining federal trademark registration for its mark FIVE WIVES, the distiller has encountered the sensitivities of Idaho's liquor division.

Idaho will not permit the distribution of Five Wives vodka because the concept "is offensive to a prominent segment of our population." There is no explanation of what this means, how it was determined, or what specifically about the product is offensive to the prominent segment. The problem cannot lie with the vodka itself, since Idaho permits the sale of many other brands of vodka. The shape of the bottle cannot be the problem, one would think. So, the only remaining option centers on the label. But ATF has determined that the label is fine, and the PTO (which is prohibited from registering a mark that is immoral or scandalous) has registered FIVE WIVES as a federal trademark. So, what can it be that has the Idaho liquor division so intoxicated?

Sunday, May 27, 2012

A Memorial Day for Vietnam -- At 50 Years

The Wall

This Memorial Day 2012 marks the remembrance of the 50th anniversary of the U.S. involvement in the Vietnam War. President Obama will mark the beginning of a 13 year war remembrance on Monday, May 28th.
NOW, THEREFORE, I, BARACK OBAMA, President of the United States of America, by virtue of the authority vested in me by the Constitution and the laws of the United States, do hereby proclaim May 28, 2012, through November 11, 2025, as the Commemoration of the 50th Anniversary of the Vietnam War.
The U.S. was involved militarily in Vietnam one way or another since the mid-1940's, including assisting in what became a disastrous French defeat by the Viet Minh at Dien Bien Phu in 1954.

The first American soldier killed in Vietnam during the U.S. war? Air Force T-Sgt. Richard B. Fitzgibbon Jr. His is the first name on the extreme western panel of the Vietnam War Veteran's Memorial.

Sunday, May 20, 2012

Paul Horn's "Dream Machine" and Copyright Termination

Last week, a federal court judge in San Diego ruled that Victor Willis, the cop in the Village People music group, had the right to terminate his prior transfer of interest in certain musical compositions, including Village People hits.

I was not a big fan of the Village People, although it was difficult not to listen to their all-prevalent music in the 1970s. But I was, and continue to be, a fan of Paul Horn, the flutist. My favorite Paul Horn album is "Dream Machine" on Mushroom Records, that came out in 1978. Just what does the ruling favoring Victor Willis' copyright transfer termination have to do with Paul Horn and "Dream Machine" ?

The present Copyright Act permits the termination of prior copyright transfers in certain instances. The rules for termination differ for transfers occurring prior to January 1, 1978 and after that date (the present Copyright Act took effect on January 1, 1978). For post-1977 copyright transfers, the U.S. Copyright Act permits termination during a five year period only, commencing 35 years following the execution of the grant. To effect termination, a notice of termination must be provided to the grant recipient at least two years prior to the date of termination.

Because this coming January 2013 represents 35 years following the effective date of the present Copyright Act, the first wave of terminations is expected to begin this coming January for transfers occurring in 1978, so long as at least a two year advance notice of termination is given. Willis gave his notice of termination timely, with the intent to effect a termination of his post-1977 copyright grants in his musical compositions to Scorpio Music and Can't Stop Productions. Not being pleased to lose ownership of valuable music rights, Scorpio Music and Can't Stop Productions brought a declaratory judgment action, seeking a court determination that Willis did not have the right to terminate his prior transfer.

Willis won. The court ruled that the statute means what it says. If a person makes a transfer of copyright post-1977, then the transfer can be terminated during a five year window beginning 35 years following the date of the transfer, provided at least a two year advance notice of termination is given. Willis complied with the notice requirement, and come 2013 he will be permitted to recapture his copyright interest in previously transferred music compositions. And because the termination cuts off the rights of the grant recipients, Scorpio Music and Can't Stop Productions, Willis' recapture is not restricted by the royalty limitations included in the grant.

It may come as a bit of a shock to learn that an asset bought and paid for can be lost after 35 years with no reimbursement. Copyright transfer is a limited right. The court explains that one purpose of the copyright termination provision is to"safeguard authors against unremunerative transfers" and address "the unequal bargaining position of authors, resulting in part from the impossibility of determining a work's value until is has been exploited."

But there is another justification supporting copyright termination. This brings me to Paul Horn's "Dream Machine." This jazz-funk-fusion album came out in 1978, featuring Paul Horn, Joe Sample, Emil Richards, Dean Parks, Ernie Watts, Jim Keltner, and a host of other fine musicians. The album was composed, arranged and conducted by Lalo Schifrin (he composed the themes to Mission Impossible and The Man From UNCLE, music for Cool Hand Luke, Dirty Harry, and other well-known music). Dream Machine is magic. And it is out of print. There are a few albums available from resellers. But the label, Mushroom Records, is out of business and new vinyl, CDs, and electronic versions are not available. This is a great album, which new listeners will not be able to enjoy.

Perhaps Paul Horn and Lalo Schifrin have given their notices of termination to Mushroom Records, or to whoever now owns the rights to that label's assets. If so, perhaps they may be able to reclaim ownership and control of this great music. Of course, there is a question about ownership of the original recording tapes, but these tapes will not have much value without ownership of the underlying copyright. Perhaps one day, the termination right in the Copyright Act will permit the reintroduction of music that has been buried or out of print for too long. But, the period to deliver the notice of termination is short -- five years. Then the termination window slams shut, forever.

Monday, May 14, 2012

When Does The U.S. Government Not Own The Rights To A War Memorial?

The City of Washington perhaps has more memorials, including war memorials, than any other American city. But does the federal government really own the rights in these memorials? The ongoing litigation between sculptor Frank Gaylord and the United States reveals what happens when the U.S. fails to adequately secure the copyright, or at least a perpetual license, in its war memorials.

Frank Gaylord is a prominent sculptor of "The Column," a group of 19 sculptures depicting a platoon of U.S. foot soldiers in the Korean War. "The Column" is the centerpiece in the Korean War Veterans' Memorial on the west end of the National Mall in Washington, DC.

The Korean War was as brutal as World War II. Some sources peg the U.S. war dead in excess of 33,000, plus more than 8,000 MIAs. In honor of the sacrifice and service to the U.S. during the Korean conflict, Congress in 1986 passed legislation putting in process a mechanism to develop a Korean War memorial. The Army Corps of Engineers was responsible for selecting the memorial's design team, Cooper-Lecky Architects of Washington, DC. Frank Gaylord, a well-regarded sculptor, was selected to craft the sculptural works. He began working on this project in 1990. His sculpted soldiers were assembled into the memorial, and depicted on a sunny day as follows:


The memorial was dedicated in July 1995 and has become a favorite venue on the National Mall. In 2002, the U.S. Postal Service elected to issue a stamp to acknowledge the 50th anniversary of the Korean War armistice. The stamp, depicted below, --


-- was financially successful. By 2005, the Postal Service sold nearly 48 million stamps, earning over $17 million. The Postal Service also sold retail goods, including commemorative panels and framed art, bearing the stamp's image.

Frank Gaylord sued the United States in 2006 for copyright infringement. Following trial in the Court of Claims, the Federal Circuit in February 2010 determined that Gaylord was the copyright author of The Column and that the U.S. government was liable for infringement. The case was remanded to establish damages. The first Federal Circuit opinion is located here.

During the damages case, Gaylord sought a 10% royalty on approximately $30.2 million in total revenue earned by the Postal Service in using The Column image. The Postal Service countered that Gaylord should receive at most a nominal amount since the Postal Service would never have entered into a 10% royalty arrangement. The Postal Service further argued that it never agreed previously to license an existing image for more than $5,000. The Court of Claims awarded Gaylord $5,000 for copyright infringement damages.

On appeal for the second time, the Federal Circuit reversed the nominal monetary award. A copy of the second appellate opinion is here. The Federal Circuit criticized the Court of Claims for limiting its analysis of the damage award solely to the Postal Service's position that it would never pay a 10% royalty. On the contrary, the Federal Circuit explained that, in establishing a copyright damages award against the federal government, "the court should not arbitrarily cap this award at $5,000 simply because the Postal Service claims it has never paid more to license a copyright for use on a stamp."
"Defendants cannot insulate themselves from paying for the damages they caused by resting on their past agreements and by creating internal 'policies' that shield them from paying fair market value for what they took."
The Federal Circuit observed that the test for copyright damages is not based on what the infringer would prefer to pay. Indeed, the amount of damages for this present claim of infringement may be unrelated to prior royalty agreements of either of the parties.
"The court should keep in mind that Mr. Gaylord's recovery is not limited to the Postal Service's actual profits. * * * Indeed, the court may find that a hypothetical negotiation between the parties would result in a higher ongoing royalty that the rate earned by Mr. Gaylord or the Postal Service under past agreements."
The Federal Circuit further determined that an award of prejudgment interest on the damages sum was appropriate. "Mr. Gaylord is entitled to prejudgment interest because it is necessary to make his compensation complete." The Federal Circuit vacated the trial court's decision and remanded for a new damages determination.

While it will be interesting to learn how the trial court resets the sum that the Postal Service will be required to pay Gaylord for nonpermitted use of The Column images, a much more fundamental question presents itself. Why must the government ever be required to pay for use of the image of a beloved memorial, particularly when the memorial was undertaken pursuant to federal legislation, involving federal money, located on federal ground, and depicting federal military personnel in U.S. sponsored military action? There is no question that Frank Gaylord's creativity and artistic talents resulted in a magnificent war memorial honoring brave wounded, dead and missing military personnel. But why did the government lawyers and procurement staff not include a perpetual copyright license or, better yet, a copyright release to the federal government for use of The Column?