Thursday, March 31, 2011

Play Ball

The Tidal Basin is afresh with white cherry blossoms
and visitors from Vermont by the score.
Daffodils are pushing through the vestiges of snow
while the tulips are but slowing catching up.
Grass is growing, fertilizer is flying, law mowers are being primed for action.
It's spring.
Oh, the glory of a fresh start, a new beginning,
a season where everyone poses from the common starting line.
No one has yet lost, and everything is to be gained.
Look ahead, not behind.
It's spring. What to do? Where to begin?
Jackie Robinson would know. Play ball.
It's spring.
The opening game of the 2011 Major League season begins today in the Nation's Capitol with the Nationals hosting the Braves.

Wednesday, March 30, 2011

How Long Does A Copyright Last?

I am periodically asked about the term of copyright. Such an apparently simple question comes with a complex answer. There is, indeed, no one copyright term. The answer depends on when the work was created or published. Below is a wonderful chart prepared by Lolly Gasaway of the University of North Carolina that attempts to explain it all:

Work created 1-1-78 or after:
Term commences when a work is fixed in tangible medium of expression, the term is Life plus 70 years (or if work of corporate authorship, the shorter of 95 years from publication, or 120 years from creation).

Work published before 1923:
Work in public domain.

Work published between 1923 - 63:
Term commences when a work is published with notice, with a term of 28 years for first term and can be renewed for 47 additional years, now extended by 20 years for a total renewal of 67 years. If not so renewed, now in public domain.

Work published from 1964 - 77:
Term commences when a work is published with notice, with a term of 28 years for first term, now automatic extension of 67 years for second term.

Work created before 1-1-78 but not published:
Term commences 1-1-78 (the effective date of the 1976 Act which eliminated common law copyright), with a term of Life plus 70 years, or to 12-31-2002, whichever is greater.

Work created before 1-1-78 but published between then and 12-31-2002:
Term commences 1-1-78 (the effective date of the 1976 Act which eliminated common law copyright), with a term of Life plus 70 years, or 12-31-2047, whichever is greater.

Monday, March 28, 2011

Here's To You, Auggie Busch

August Anheuser Busch, Jr. was born on this date in 1899 in St. Louis. During his tenure as chairman from 1946-1975 of the Anheuser-Busch Cos., the great brewery founded by his father Adolphus Busch and Eberhard Anheuser became the largest brewery in the world. In 1953, Busch convinced the brewery board to acquire the St. Louis Cardinals baseball club, thereby forever establishing the connection between Budweiser and baseball.

Sunday, March 27, 2011

Cariou v. Prince: Infringement by Appropriation Art

Photos were taken. Photos were appropriated into new art forms. Copyright infringement claims resulted.

Patrick Cariou's photographs of Jamaican Rastafarians were published by PowerHouse Press in 2000. The book contains photographic portraits of Rastafarian individuals plus images of Jamaican landscape. Following publication, the well-known “appropriation artist” Richard Prince commenced appropriating many of these photographs for inclusion in his new work. Between December 2007 and February 2008, Prince displayed at a hotel in St. Barts some 35 of the Cariou photographs that were torn out of the Cariou book and attached to a wooden backer board. Of these 35 photos, some were only partially displayed, some were fully displayed, and Prince painted over some. Prince titled this work "Canal Zone."

Spurred by further inspiration, Prince painted 28 paintings of images taken from the Cariou book. The photos contained in the paintings had been cropped, tinted, reshaped or painted over. Prince admitted using all or a portion of 41 Cariou photos in his paintings.

The Gagosian Gallery showed the Canal Zone and the paintings at its venue in Manhattan, and published a catalogue of many of the paintings, including images of Cariou's photographs displayed in Prince's studio.

Cariou sued Prince and Gagosian for copyright infringement in New York federal court (the case number is 08-cv-11327 and access to filings in this case is available through PACER). In a well-reasoned opinion (March 18, 2011) by Judge Deborah Batts, Prince and Gagosian were found to have infringed the Cariou photos.

A. Photos are Copyrightable.

Surprisingly, Prince argued that the Cariou photographs are not entitled to copyright protection because they lack creativity. He argued that the photos represent factual images of people and landscapes and, as such, cannot be considered creative. But Judge Batts aptly explained that photographs, even of real people and landscapes, are protectable under copyright. This has been the law since the Supreme Court case of Burrow-Giles v. Sarony in 1884.

B. Fair Use.

Prince further defended by arguing that Canal Zone and his paintings represent a fair use of the Cariou photographs. But Judge Batts found no fair use. Indeed, Judge Batts' opinion stands are a detailed primer of fair use analysis under copyright law. The court considered the statutory fair use factors, as described below.

1. Purpose and Character of Prince's Use of the Cariou Photographs: Transformation, Commerciality, and Bad Faith.

Judge Batts determined that the ripping of the photos from the book, and the painting of the photos, did not transform Canal Zone and the paintings into protectable creative work. Prince’s use of Cariou’s photos did not comment on, criticize or otherwise alter the expression or meaning of the photos. In essence, the court determined that what Prince was merely attempting to accomplish was to make, from his perspective, a better or higher artistic use of the photos. To accept this usage as fair use would eliminate any practical boundary to the fair use defense and would find that appropriation art is per se lawful. Judge Batts specifically refused to hold that appropriation art is per se fair use.

To underscore the lack of transformative intent, Prince testified that he did not have any interest in Cariou's original meaning in the photos, and did not have a message he intended to communicate with his art. Prince did not intend to comment on any aspect of the photos, but sought merely to pay homage to other greater painters (including Picasso, Cezanne and Warhol) and create his own beautiful artwork.

Prince explained that he used Cariou’s photos because they represent truth. He employed the Cariou photos in order to arrive at the core truth of the Rastafarians; to communicate core truths of these people and their culture – the very purpose that Cariou had in taking the photos in the first instance. From this admitted lack of transformative motive, the court found that Prince did not intend to comment on the Cariou photos or to transform the meaning or message of these photos. The court determined that any transformation that appears throughout Prince’s paintings is inconsistent and minimal at best.

While not transformative, Prince’s motive was certainly commercial. The court found that Prince's use of the Cariou photos created significant commercial value for Prince. Transactions involving Prince's work were valued in the millions.

Also of importance, the court determined that Prince acted in bad faith. Prince testified that it was not important whether he appropriated from a well-known artist or from the public domain. His staff contacted the publisher of the Cariou book but never inquired about obtaining a license to use the images. The court also determined that the Gagosian Gallery acted in bad faith in that Prince has a reputation as an “habitual user” of other people's copyrighted works, and Gagosian never inquired whether Prince obtained consent to use the Cariou photos.

2. Nature of the Work Copied.

Judge Batts found that the Cariou photographs were highly creative and the very type of work that the copyright law was designed to protect.

3. The Amount and Substantiality of the Portion Copied.

Judge Batts found that in many of his paintings, Prince copied most of the Cariou photos and, in a majority of his paintings, Prince copied the central portrait of the Cariou photos. The court determined that the amount of the Cariou work appropriated by Prince exceeded the amount needed for any slight transformative value.

4. The Effect of the Use on the Market for the Copyrighted Work.

Prince criticized Cariou for not fully exploiting his photos, and argued that Cariou should have been more aggressive in marketing his photographs. But the court observed that fair use looks at the potential for market harm both for the original work and its potential derivatives, regardless of how little the copyrighted work is presently being exploited. The court determined that it was clear that the market for both Cariou's original work and for any derivative work was being usurped by Prince.

C. Gagosian’s Direct and Secondary Liability.

The court next examined the role of the Gagosian Gallery. It determined that Gagosian was liable for direct infringement for copying, selling and displaying infringements of Cariou's work. Gagosian was also secondarily liable for vicarious and contributory infringement. The court noted that Gagosian handled all aspects of the marketing of Prince’s works and had the right and ability to ensure that Prince obtained a license for the Cariou photos. The financial benefit to Gagosian is self evident.

Judge Batts further determined that Gagosian was well-aware of Prince's reputation as an appropriation artist who rejects copyright law, but failed to inquire whether a license was obtained. The court states that Gagosian knew, or should have known, of the existence of the infringement.

D. No Right to Civil Conspiracy Under Copyright Law.

On one portion of Cariou's claim, however, the court found in favor of Prince and Gagosian. Cariou brought a claim against the defendants for conspiracy to violate Cariou's rights under copyright. But the court determined that a civil conspiracy claim is not available under copyright law. Since the copyright law already recognizes vicarious and contributory infringement, the added presence of civil conspiracy does not add anything substantive to copyright protection. The conspiracy claim was dismissed.

E. Remedies: Injunction, Destruction of Prince’s Work, Notice to Owners and Damages.

The court entered a permanent injunction against Prince and Gagosian, ordered that they deliver up for destruction all copies of Prince’s infringing works, and further notify all buyers that the Prince work is infringing and cannot lawfully be displayed. The court also set a date to consider the issue of damages, attorneys' fees and court costs.

In summary, if you operate a gallery, be cautious in dealing with an appropriation artist. And if you are an appropriation artist, strongly consider obtaining a license and do not assume that your work will be treated as fair use.

Friday, March 25, 2011

Is the PTO Too Sensitive Regarding Scandalous Trademarks?

The Lanham Act prohibits registration of scandalous marks. 15 USC §1052(a). But I'm wondering whether the PTO is a bit too touchy and sensitive. Take The Slants, for example. This is an Asian-band based in Portland, Oregon seeking to register its trademark with the PTO. But, to date, it has received two office actions rejecting the application on the grounds the mark is scandalous and disparaging to Asians. See the article in The Oregonian here. For the PTO's take on the matter, search under Ser. No. 77952263 on the PTO's website. The PTO maintains that The Slants disparages the facial features of Asians. The band argues that the mark celebrates the heritage of Asians. The trademark examiner cites to a dictionary definition of slant, plus some public complaints. The Slants counter with positive statements from Asian community members.

The TMEP explains that Congressional legislative history does not define what is "scandalous." Rather, the TMEP provides that a scandalous mark is determined by public standards.
The determination of whether a mark is scandalous must be made in the context of the relevant marketplace for the goods or services identified in the application, and must be ascertained from the standpoint of not necessarily a majority, but a “substantial composite of the general public.” TMEP 203.01.
The trademark examiner may not be on strong ground relying on a dictionary definition of slant, since a dictionary merely provides a word definition and not evidence of general public standards or mores. Similarly, the PTO's reliance on some negative comments is not dispositive and may not carry the PTO's burden of proof.

At the same time, positive statements from some community members may not carry the applicant's burden of proof, either. It appears that a community survey may be needed.

What do others think about this? Is The Slants a scandalous mark? Is it so socially objectionable to the general public to qualify as scandalous? Or, is the mark merely edgy, or boorish, or not offensive at all? Let me hear your comments.

Thursday, March 24, 2011

Confidential Shipping Data May Not Be Treated Confidentially At U.S. Ports of Entry

Information that your business believes is confidential, including foreign product sources and distribution, is not necessarily treated confidentially at U.S. ports of entry.

If your business imports or exports products into or out of the United States, then you may be aware of the role that the U.S. Bureau of Customs and Border Protection (CBP) plays in tracking information about foreign shipments. Among its various tasks, CBP is charged with collecting information about shipments passing through U.S. ports of entry. Data viewed by many businesses as confidential, including identification of the shipper, the consignee, the type of shipped goods, the amount of goods in a shipment, plus trademarks and product numbers associated with goods, among other information, is contained on the vessel manifests that accompany each shipment into and out of the U.S.

Many businesses that rely on foreign shipping either to distribute their products overseas or to obtain foreign generated raw materials or finished goods might be surprised to learn how easy it is to obtain foreign shipping information from the CBP. While a business may take significant steps to protect its product sourcing and distribution information from disclosure, including to competitors, the CBP conveniently provides this sensitive shipping information to the media. It is surprising how easy this critical information, perhaps erroneously believed to be confidential, can be obtained by a direct competitor.

The Code of Federal Regulations (at 19 CFR 103.31) explains that the CBP permits accredited representatives of the press to inspect and copy shipping vessel manifests. Information concerning the name and address of the shipper, character of the cargo, number of packages and gross weight of the shipment, the name and address of the consignee, and trademarks and part numbers of the cargo is available for inspection. All of this information is potentially available for copying on inbound manifests. On outbound manifests, the CFR prohibits copying of the consignee’s name, cargo marks and numbers, although examination of this information is permitted.

Shipping information may be obtained from the CBP either from individual vessel manifests or on magnetic tape through CBP’s Automated Manifest System, containing compiled information from all U.S. ports. The tapes provide updated data within twenty four hours and are available from the CBP for a particular date or by ongoing subscription.

One common media acquirer – and publisher – of foreign shipping data is the PIERS unit of The Journal of Commerce ( PIERS claims to collect more than 15 million bill of lading records annually. PIERS explains that it obtains import waterborne data from the CBP, outbound waterborne data from its reporters located at all 88 U.S. ports of entry, and additional shipping data from customs services of certain foreign countries.

There are other publishers of foreign shipping data, including Zepol Corporation ( and Panjiva, Inc. ( While PIERS, Zepol and Panjiva are fee-based subscription services, they each provide tantalizing information about shipments free of charge. In preparing this article, I used the Panjiva service to look up a certain well-known commercial aircraft manufacturer and obtained a list of its overseas component parts suppliers. I searched under the name of a famous cola and obtained a list of overseas suppliers and distributors. I also conducted a search under my law firm’s name and learned of a recent shipment of European wooden furniture to my firm’s San Francisco office.

For shippers who cower at the prospect of sensitive shipping data published to their competitors, all hope is not lost. The CBP permits shippers to petition the CBP for confidential treatment of certain shipping information. An importer or consignee may request confidential treatment on inward manifests of its name, address, identifying marks and numbers, together with the name and address of its shipper. On outward manifests, confidential treatment can be requested of a shipper’s name and address (note that the consignee’s name, and product marks and numbers, cannot be copied off outbound manifests, but they can be examined by reporters). A request for confidential treatment can cover information contained in both the vessel manifests and the CBP’s magnetic tapes.

The particular form of the request for confidential treatment is not difficult to prepare and submit to the CBP. Specific information to be included in the request, and the procedure for submitting the request, are available in 19 CFR 103.31(d). While a request for confidential treatment, once granted, will not prevent the inspection of vessel manifests by reporters, the approved request will prevent the publication by the press of the confidential information for two years. The request may be renewed for additional two-year intervals.

Resolve now to confirm the foreign sourcing and foreign distribution of your business’ goods. If this information should be treated confidentially, then consider requesting confidential treatment of this information by the CBP.