Thursday, July 28, 2011

The Federal Court Show: Take This Court Opinion -- Please

Who needs David Letterman, Jay Leno, Jon Stewart, Stephen Colbert or SNL, when we have the Seventh Circuit Court of Appeals? For good times and good humor, nothing beats the Seventh. I’m not certain if the Seventh’s high rise building in downtown Chicago allows the car fumes to wisp upwards or if it is just too dog gone hot in Chicago during this time of year, but the Seventh Circuit cuts some funny opinions.

Why, take today’s opinion – please. The case of Georgia-Pacific v. Kimberly-Clark is chuckles-filled. As Judge Evans points out, time and time and time again, this case deals with toilet paper. And to underscore the focal (oops, I almost wrote fecal) point of the case, the court observes “Are there many other things most people use every day but think very little about? We doubt it.” As funny as this is (repeat: toilet paper, toilet paper, one more time, toilet paper), there’s more. The opinion next targets “top-rate intellectual property lawyers” who breathe the “rarified air” of unfair competition and trademark infringement under the Lanham Act. Now that’s funny. Judge, you had me with toilet paper!

But wait, there’s more. Judge Evans soon lapses into song, “‘I wish I was in the land of cotton, old times there are not forgotten.’” And quickly, lest we forget, the opinion reminds us “But again, this case is about toilet paper, and who really pays attention to the design on a roll of toilet paper?” Apparently, the paper companies.

Indeed, the case is not about toilet paper but about trademark infringement relating to the lattice designs embedded into the sanitary product and its packaging. Toilet paper and its packaging happen to be the medium on which the trademarks appear.

After several pages of chuckles, the opinion settles down a bit and begins an analysis of common trademark concepts of incontestability, trademark functionality, a Supreme Court case, and trade dress. But, candidly, by the time the opinion talks about law, I lost interest. I want to hear more of toilet paper and Dixie! In fact, the legal portion of the opinion relates to the lighthearted quips in the same way that Stiller & Meara related to the audience during The Beetles first appearance on The Ed Sullivan Show – not well. The only thing the opinion does not do is to criticize the hyphen used by each party in their corporate names. Perhaps the court was holding back?

Two days ago, the Seventh gave us another slammer: White Pearl Inversiones S.A. v. Cemusa. Judge Easterbrook did not provide in White Pearl the same level of comic flair as Judge Evans – perhaps this is why he is the chief judge – but the White Pearl opinion possesses sufficient in-your-face sarcasm to rank up with the best of them. In the midst of important analysis concerning jurisdiction and choice of law relating to a contract dispute between foreign entities, the opinion attacks the lawyers. Judge Easterbrook makes certain that we understand that “White Pearl’s lawyers have scoured the legal phrase-book.” He tells us that “White Pearl is represented by the Chicago office of Wilson, Elser, Moskowitz, Edelman & Dicker; Cemus is represented by the Miami office of Hunton & Williams plus the Chicago office of K & L Gates.” Then to underscore the significance, he explains that “All three are substantial law firms with expertise in business law and international trade – as one would expect when a Uruguayan firm based in Rio de Janeiro sues the U.S. component of a multinational enterprise based in Madrid.” Now we know. Of course, none of this has anything to do with the merits, but who cares? It’s fun to attack lawyers and it’s fun to read about an attack on lawyers.

These opinions are not the first time that the Seventh has reached down to vaudeville. But there’s no point dragging up old cases, and old jokes. You get the idea. Courts that treat litigation, litigants and their counsel lightheartedly should not expect too much respect in return. Is this too harsh to state? No one views David Letterman as anything other than a jester. He may be a brilliant man. He may be extremely learned in many subjects. But who cares. He’s F U N N Y. Is this how the Seventh wants to be viewed; irreverent, frivolous, sarcastic, impudent, belligerent? I’m running out of adjectives, someone help me – please.

I wish I was in the land of cotton …

Friday, July 22, 2011

What is Intellectual Property?

I read an excellent article today that speaks to the practical meaning of Intellectual Property. The article, written by attorney Michael Mann, is located here. Mann explains that he used to refer to himself as a practitioner of patent, trademark, copyright and trade secret law. But he aptly points out that these words do not define IP, but refer instead to areas of law that are applied to IP. He explains that IP, in fact, is something else: it is know-how, message, innovation and reputation. Mann's thoughts provide an intriguing way of thinking about what IP lawyers really do. Importantly, his thoughts provide an excellent way of explaining this to clients.

Monday, July 18, 2011

Foreign Authors: Beware of U.S. Copyright Registration Obligations

The Internet’s ability to distribute content, including new print, music and film/video works, to every corner of the world is amazing. But the universal reach of the Internet suggests caution when print, music and film/video creators seek to expand distribution of their content through the inexpensive and universal distribution tool of the Internet.

Prior to the Internet, a book publisher could publish and distribute a title in a designated geographic area where copyright protection was secured. If a print book was published in the United States only, the publisher could apply for copyright registration in the U.S. and not worry about copyright registration in other countries.

The advent of Internet distribution compels publishers and rights owners to consider copyright protection throughout the reaches of the Internet. Since the posting on line of a new work allows downloading throughout the world, the publisher and rights owner of a posted work are faced with a burdensome rights protection problem.

A recent federal district court case highlights the copyright problem regarding a new work published directly to the Internet. The case of Kernal Records Oy v. Mosley (2011 WL 2223422, S.D. Fla., June 7, 2011), deals with the registration requirement of the U.S. Copyright Law for works created outside of the U.S. but first published on the Internet. In the Mosley case, a sound recording was created in Australia and first published by posting on the Internet for downloading. The rights owner did not register the copyright in the U.S. Ordinarily, this would not be a problem for enforcement in the U.S. since Section 411 of the Copyright Act requires registration of a “United States work” in order to bring an infringement claim. The copyright in a work that is not a United States work need not register in the U.S., ordinarily, in order to commence litigation in the U.S. for infringement.

But the definition of a United States work is broad enough to encompass a work created outside of the U.S. by authors who do not reside in the U.S. The Copyright Act defines a United States work as a work first published:

             (A) in the United States;

             (B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States;

             (C) simultaneously in the United States and a foreign nation that is not a treaty party; or

             (D) in a foreign nation that is not a treaty party, and all of the authors of the work are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual work legal entities with headquarters in, the United States

The Mosley court held that the first publication on the Internet of the Australian sound recording constituted a simultaneous first publication in Australia and the U.S. and, as such, caused the sound recording to be deemed a United States work for purposes of the registration requirement of Section 411. The Florida federal court dismissed the infringement claim brought by the plaintiff rights owner because of failure to obtain registration prior to commencement of the litigation.

The publication on the Internet constitutes a simultaneous global publication leading to the prospect of global infringement. Accordingly, publishers who seek to benefit from the low cost and ease of world-wide distribution afforded by the Internet must not lose sight of the enhanced protection burdens that result. To be sure, the Mosley decision represents the first trial court decision in the U.S. on the need to obtain U.S. registration of a foreign created work first published on the Internet. Mosley places foreign authors and publishers on notice and represents a sobering application of U.S. copyright law to foreign authors of work created outside of the U.S.

The Georgia Peach

Last week, we witnessed the great shortstop for the New York Yankees, Derek Jeter, obtain his 3000th big league hit. Jeter became the first Yankee to reach this milestone, and he did so in grand style with a home run. Jeter has been the Yankee shortstop since 1996, and it took him 15 years to reach 3000 hits.

 By contrast, today marks the anniversary of Ty Cobb’s 4000th hit in 1927. When he retired in 1928, after 23 years in the big league, Cobb held the Major League record of 4191 hits, a mark that lasted until surpassed by Pete Rose in 1985.