Tuesday, December 27, 2011

2011: An Intellectual Property Year In Partial Review

The year 2011 produced many significant IP cases, some of which were discussed in previous posts in this blog. Here are some highlights:

Georgia State University: College Course Electronic Packets ~

Cambridge University Press v. Board of Regents of University System of Georgia (08-cv-1425, N.D. Georgia). This case remains pending before Judge Orinda D. Evans in the federal court in Georgia. The plaintiffs, Cambridge University Press, Oxford University Press, Inc. and Sage Publications, Inc., seek to prevent the Georgia State University campus library from providing to university students electronic course packets of some or all of the plaintiffs’ copyrighted publications. I originally blogged about this case in my post of June 24, 2011. While Georgia State pays publishers’ royalties for print versions of course packets containing copyrighted publications, it does not obtain permission and pay royalties for electronic course packets. GSU generally argues that providing a few pages or chapters from copyrighted material in electronic form as part of a course packet is fair use in an educational context. Judge Evans conducted a bench trial this past June 2011. The parties are presently engaged in post-trial briefing and the court has not yet made a decision on the copyright merits. It will be interested to learn the court’s infringement and fair use views of copying and electronic distribution of copyrighted material for educational purposes.

Appropriation Art on Appeal: Cariou v. Prince ~

Patrick Cariou v. Richard Prince and Gagosian Gallery, Inc. (08-cv-11327, S.D.N.Y.; 11-1197, 2d Cir.) In my post of March 27, 2011 I wrote about the copyright infringement claim brought by photographic artist Patrick Cariou against well-known appropriation artist Richard Prince. Cariou sued Prince and Gagosian Gallery for infringement of his photos. According to the N.Y. trial court, some 35 photos taken by Cariou of Jamaican Rastafarians were copied and displayed, wholly or partially, by Prince, with some of the Cariou photos having been modified or painted over. Prince argued that his treatment of the Cariou photos amounted to fair use.The trial court held that Prince’s conduct was copyright infringement and that Prince’s use of the Cariou photos did not constitute fair use. The defendants appealed to the Second Circuit Court of Appeals.

To date, amicus briefs have been filed by Google, Art Museums and Association of Art Museum Directors, and The Andy Warhol Foundation for the Visual Arts, Inc. Google’s brief addresses in part the type of transformation that may be required in order to find the existence of fair use, and observes that large scale digitalization by a search engine may amount to sufficient transformation so as to constitute fair use.

The amicus brief of the art museums observes that appropriation art – the use of pre-existing work of another in the creation of new art – has enjoyed a long and admired history, including examples by Picasso, Duchamp (Mona Lisa with a mustache) and Warhol, and evolving through Dadaism and contemporary pop art. The museum amici criticize as flawed the infringement and fair use analysis of the trial court, criticize the direct and vicarious liability imposed on an art museum by the claimed infringing conduct of an artist, and criticize the trial court’s order of impoundment and destruction of Prince’s works. The museum amici argue that the trial court’s decision “could punish cultural institutions and censure educational activities that pose no threat to the original copyright holder, and it could harm the public by limiting access to significant creative works.”

The Andy Warhol amicus brief observes that it is common for artists to appropriate preexisting imagery and that the trial court employed a too narrow view of transformative conduct in finding the lack of fair use. The brief argues that “Cariou’s objective was ‘classical … portraiture.’ * * * His photographs of Rastafarians appear to celebrate the Rastafarians by depicting them respectfully in their actual environment * * *.” The brief suggests that Prince employed Cariou’s original photos for another purpose in creating Prince’s new work. “Whatever Prince’s purpose was, it was not that. Prince uses elements of Cariou’s utopian images to depict a post-apocalyptic world that exists only in Prince’s imagination.” The Warhol brief argues in part that there can be “a wide array of transformative meaning” applied to the use of existing images in creating new art with new expression. The Warhol brief criticizes the trial court’s fair use and injunction analysis.

Cariou’s opening brief will likely be filed in late January 2012 and the briefs of the defendants are not expected to be filed until next March. Oral argument has not been scheduled but may occur prior to the end of 2012. A final decision from the Second Circuit may not come down until sometime in 2013.

Betty Boop: Lost in the Public Domain ~

Fleischer Studios, Inc. v. A.V.E.L.A dba Art & Vintage Entertainment Licensing Agency. This past February 23, 2011, a three-judge panel of the Ninth Circuit issued a bejeepers, good-golly opinion holding that Fleischer Studios lost its trademark and copyright interests in the Betty Boop cartoon character. The court held that the lovable waif was ownerless with no basis for protection from defendants who, without permission, copied the cartoon image onto consumer goods. The court determined that Fleischer failed to establish the chain of title for the copyright and trademark rights. The court further held that the employment of the image of Betty Boop in consumer goods was not an impermissible trademark use, because the image was not being used as a trademark but as a functional product. Of the three judges on the panel, only Judge Susan Graber filed a dissent strongly questioning the basis for the majority decision.

But then on August 19, 2011 the Ninth Circuit panel withdrew its February opinion and issued a revised opinion. The revision did not change the decision but it did revise the trademark analysis. Rather than base the trademark holding on the concept of no trademark use due to aesthetic functionality, the opinion determined that the Betty Boop image was not inherently distinctive and that there was no proof of secondary meaning (even though Fleischer argued that the image had been used on merchandise since 1972). Judge Graber continued to strongly dissent. The Ninth Circuit refused to consider this case en banc.

So, at present the law of merchandise trademark infringement is a bit muddled in the Ninth Circuit. Boop boop be doop. Perhaps the Supreme Court will allow Fleischer’s anticipated petition for writ of certiorari.

Criminalizing an Employee's Computer Use ~

USA v. Nosal. My blog post of May 2, 2011 discussed the Ninth Circuit’s opinion that criminalizes, under the Computer Fraud and Abuse Act, what might otherwise be viewed as innocent computer usage by a company’s employees. In October, the Ninth Circuit agreed to hear en banc the extent to which an employee’s use of a work computer can constitute criminal conduct. Oral argument was held en banc on December 15, 2011. A decision is expected this coming spring. The full en banc oral argument can be watched and heard at this link.

Don't Remove That Credit! ~

Murphy v. Millennium Radio Group. The Third Circuit held that the removal of a credit from a copyrighted work may violate the Digital Millennium Copyright Act

Foreign Internet Posting Triggers U.S. Copyright Law ~

In my July 18, 2011 blog post, I discuss the Florida district court’s holding in Kernal Records Oy v. Mosley that the first publication of an Australian work on the Internet constitutes first publication in the U.S. Publishing by first posting directly to the Internet causes the U.S. Copyright Act to apply to the foreign work for purposes of determining enforceability of the foreign work in the United States.

A New York State of Mind ~

In Penguin Group (USA) Inc. v. American Buddha, an Oregon company that uploaded copyrighted images onto the Internet in Oregon was sued in New York by a New York resident - copyright owner. The New York state appellate court held that a New York copyright plaintiff alleges an injury in New York state for jurisdiction purposes when its copyrighted work is uploaded without permission onto the Internet outside of New York. Bottom line, wherever you are, you may be sued in a New York court if you upload copyright content belonging to a New York resident onto the Internet.

Hot News is now Cold ~

My post of June 20, 2011 discussed the holding in Barclays Capital Inc. v. Theflyonthewall.com, Inc. This case denied the existence of the so-called “hot news” claim, holding that there is no such thing under copyright law since copyright law cannot protect factual data, including hot, new data. In the Barclays case, a news aggregator was permitted to copy fresh news reports developed by Barclays, thereby using Barclays' own research in direct competition.

More Odds and Ends ~

There are several pending IP cases that may be resolved in 2012. One such case, presently before the Supreme Court, Golan v. Holder, will determine whether copyrights to foreign works lost in the U.S. due to failure to observe U.S. copyright technicalities (e.g., lack of renewal filings, failure to provide copyright notice, etc.) were properly restored in 1994 by the Uruguay Round Agreements Act. Oral argument occurred on October 5, 2011, and a decision is expected this coming spring. Listen to the oral arguments at this link. And, the Supreme Court will likely decide this spring the Mayo Clinic v. Prometheus patent case that posits whether the Prometheus patents underlying a blood test are protectable by patent law, thereby inhibiting a physician’s ability to treat patients. Read the oral argument transcript here

And let us not forget the Google book copying infringement case. Its settlement agreement was rejected by the New York trial court and its status remains unresolved.

Happy New Year, everyone.

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