Tuesday, December 30, 2014

The Creation of the Nike Swoosh Logo

For all of you startups out there, and for those of you who do not have time to take an MBA class in creating a fantastic business brand or corporate logo, here is an excellent article that describes the creation of the Nike Swoosh.

Thursday, December 25, 2014

Joyeux Noel

Merry Christmas from Portland.
Joyeux Noël de Portland.
Feliz Navidad de Portland.
Frohe Weihnachten von Portland.
Feliz Natal de Portland.
Nollaig Shona ó Portland.
Sretan Božić od Portlanda.
Buon Natale da Portland.
С Рождеством Христовым от Портленда.
God jul från Portland.
Vrolijke Kerstmis van Portland.

Wednesday, December 24, 2014

Christmas Truce of 1914

One hundred years ago today, the British and German soldiers along the Western Front in France put down their guns and sang Christmas carols to one another. Pope Benedict XV in early December 1914 suggested to the nations fighting the Great War that a truce should exist over Christmas. The warring countries refused, but their soldiers didn't.

The scene along the Western Front is described in History.com:
At the first light of dawn on Christmas Day, some German soldiers emerged from their trenches and approached the Allied lines across no-man’s-land, calling out “Merry Christmas” in their enemies’ native tongues. At first, the Allied soldiers feared it was a trick, but seeing the Germans unarmed they climbed out of their trenches and shook hands with the enemy soldiers. The men exchanged presents of cigarettes and plum puddings and sang carols and songs. There was even a documented case of soldiers from opposing sides playing a good-natured game of soccer.
Merry Christmas from Portland.

Tuesday, December 23, 2014

Public Domain Christmas Carols

Ah, Christmas carols, wafting through the shopping mall.

Most people do not consider the copyright implications of Christmas carols.They are concerned more with last minute gifts.

But many popular Christmas carols are covered by copyright protection. Singing these songs at home in front of a small gathering does not violate the public performance right in copyright. But for those of us who are more adventuresome and desire to stretch our tonsils in public, there is a list of well-known public domain Christmas carols published at the Public Domain Information Project.

And here is a list of other well known Christmas songs still under copyright protection.

We wish you a Merry Christmas ...

Monday, December 22, 2014

Merry Christmas Johnny Marks

Christmas music has been dominating local radio play since Thanksgiving. For five weeks every year, many old – and some newer – seasonal standards are played over, and over, and over on local radio stations, cable and Internet music services and at local music shops. And we have Johnny Marks to thank for much of this.

Johnny Marks may be Mr. Santa Claus to the recording industry. He is responsible for composing some of the most well-known and beloved holiday music, including: Rudolph, the Red-Nosed Reindeer; Run, Rudolph Run; Rockin’Around the Christmas Tree; A Holly Jolly Christmas; Silver and Gold; Happy New Year Darling, and many, many more. Marks is a member of the Songwriters Hall of Fame, and a complete listing of his song catalog appears on the SHF website.

Marks passed away in 1985, but his estate continues to profit from the five week bonanza of air play for his songs. And by far, his single most famous and most profitable song is Rudolph the Red-Nosed Reindeer. Numerous singers have recorded versions of Rudolph, including Gene Autry, Bing Crosby, Dean Martin, Ray Conniff, Alvin and the Chipmunks, Paul Anka, Burl Ives, The Temptations, The Jackson Five, Ray Charles, Dolly Parton, Ringo Starr, Lynyrd Skynyrd, Destiny's Child, Barry Manilow, DMX and more. A1980 article in People Magazine states that Marks earned over $800,000 in annual music royalties at that time, with 75% attributed to Rudolph.

Merry Christmas, Mr. Santa to the record business -- Johnny Marks.

Thursday, December 18, 2014

Lies, Damn Lies and Trademark Lies

Some people lie. Shocking.

Some trademark applicants lie on their official government forms. Doubly shocking.

Trademark owners are required to establish use of their trademark on the goods or services indicated in their trademark filings. Proof of use of the trademark requires both a declaration confirming use in commerce plus an appropriate specimen for at least one of the designated goods or services in each class. These filings are signed pursuant to an official declaration or oath.

But during a two year period, from July 2012 to mid-October 2014, the federal trademark office conducted a pilot study to determine compliance with the use requirement. What the PTO learned is not pretty -- in about one-half of the registrations the trademark owners were not able to verify claimed use.

The PTO selected 500 registrations for this study. In about 16% of the selected registrations, the trademark owner failed to prove use of the mark on the indicated goods or services. The PTO cancelled these registrations. And in about 35% of the selected registrations, the trademark owner was not able to prove use on at least some of the listed goods or services, causing the PTO to delete the unsupported goods or services from the registrations.

The PTO reached this sorry conclusion: "of the 500 registrations selected for the pilot, to date a total of 253 registrations, or 51%, were unable to verify the previously claimed use in their Section 8 or 71 Declarations." The statistics for the falsely claimed trademark use are provided by the PTO:
Deletions/Cancellations/Acceptances to Date by Basis for Registration

Basis for Registration
Percentage of Registrations Selected for the Pilot Deleting Goods/Services Queried Under the Pilot
Percentage of Registrations Selected for the Pilot Receiving Notices of Cancellation
Percentage of Registrations Selected for the Pilot Receiving Notices of Acceptance (Including for a Narrowed Scope of Goods/Services)
Section 1(a)
Section 44(e)
Section 66(a)
Combined Section
1(a) and 44(e)

The concern here goes beyond the false statements contained in government filings. That is, of course, bad in and of itself for both legal and moral reasons. But the concern here, too, relates to the misuse of government filings to obtain a trademark monopoly grant, thereby depriving a genuine user of the right to register the same or similar trademark on similar goods or services.

We may all be aware of genuine trademark users who were unable to register their marks because someone obtained an active registration when, in fact, the registrant was NOT using the mark on its indicated goods or services.

The federal trademark office has established an e-mail address for public comments and suggestions for potential solutions to this problem: TMPolicy@uspto.gov. 

Trademark Office Reduces Filing Fees

If you can wait three weeks to file that new trademark application, you can save some money. Effective Saturday, January 17, 2015, the U.S. trademark office is reducing some of its fees.

The fee for a new electronic trademark application filed on and after January 17, 2015 is reduced $50, provided that the applicant agrees to e-mail communication and agrees to file documents electronically during the prosecution period.

So, a TEAS fee will reduce from $325 to $275 per class, and a TEAS Plus fee will reduce from $275 to $225 per class. There is no reduction in the fee for a new paper application. This remains at $375 per class.

The registration renewal fee will also reduce by $100 for electronic renewals through TEAS, from $400 per class to $300 per class.

More information about the reduced fees is available in the Federal Register notice.

Monday, December 1, 2014

The Copyright Act's Limit on Post-Mortem Author Rights

A window or widower of a copyright author has certain rights available under the Copyright Act, but these rights may be cutoff depending on which State the copyright author was domiciled in at the time of death. The present Copyright Act, in Section 101, defines an author's widow or widower as the "surviving spouse under the law of the author's domicile at the time of his or her death."

One problem here relates to same-sex married couples. An author's widow or widower does not include a same-sex married spouse if the State in which the author is domiciled at death fails to recognize same-sex marriage.

Of import, the Copyright Act, in Sections 203 and 304, grants the author's widow or widower the termination interest of a deceased author. Since the Copyright Act preempts conflicting common law and State law, Section 301(a), this restricted definition of widow or widower is a big deal.

Legislation was recently introduced in Congress to resolve this issue. Pending bills in the House and Senate would include same-sex spouses in the definition of widow and widower. The pending revision to the Copyright Act would provide that:
An individual is the widow or widower of an author if the courts of the State in which the individual and the author were married (or, if the individual and the author were not married in any State but were validly married in another jurisdiction, the courts of any State) would find that the individual and the author were validly married at the time of the author’s death, whether or not the spouse has later remarried.
It does not appear likely that the pending bills will become enacted in the current lame duck Congress, and it is presently unclear how the makeup of the new Congress in January will impact this issue.

Wednesday, November 26, 2014

Filing of a Copyright Case Requires Registration and Not a Mere Application

Following the passage of the country's first copyright statute in 1790, and continuing with numerous revisions to the present day, one would assume that the precondition for filing a copyright infringement lawsuit would be settled. It is not. Whether or not a lawsuit can be filed if the copyright Register has not first granted or refused registration remains in considerable dispute.

Last week, a federal court in Michigan (E.D. Mich., Case No. 14cv12933) determined that a plaintiff that had not yet obtained registration, but was awaiting a registration decision from the Register, was not able to bring a copyright infringement claim because there was not yet a registration. In determining that it is not enough to merely apply for a copyright registration, the Michigan court joins the Tenth and Eleventh Circuit in holding that "registration" means registration and not mere application. By contrast, the Fifth, Seventh and Ninth Circuits have determined that mere application, without any final decision on registration by the Register, is adequate to permit the filing of an infringement lawsuit.

As mentioned, one would think that this very basic precondition to filing a lawsuit would have become settled by now. Indeed, the 1909 Copyright act, in Sec. 12, required registration as a precondition to filing a lawsuit (" No action or proceeding shall be maintained for infringement of copyright in any work until the provisions of this Act with respect to the deposit of copies and registration of such work shall have been complied with."). And the 1909 Act, in Sec. 6 added in 1939, provided that the Register "is charged with the registration of claims." In other words, the Register had to do something in order to effect registration under the 1909 law. It was not enough that an application was filed in order to complete an act of registration. The Register was charged with registration, not the applicant.

In its 2010 decision in Reed Elsevier v. Muchnick, the Supreme Court confirmed that standard practice under the 1909 copyright law required the Register to grant registration as a precondition to filing an infringement lawsuit. And if the Register refused, then the applicant would need to seek mandamus. Indeed, the Reed Elsevier court cited with approval the 1958 decision of Learned Hand in Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., emphasizing that "we can think of no other added condition for 'registration' but acceptance by the Register."

Section 411 of the present 1976 Copyright Act is the focus of the discord between the "application means registration" courts and the "registration means registration" courts. This section emphasizes that the Register must do something in order to effect registration. Section 411(a) requires as a precondition for filing a lawsuit that "preregistration or registration of the copyright claim has been made." Only if registration has been refused by the Register can the applicant file a lawsuit.
* * * no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. 
17 U.S.C. Sec. 411(a).

Section 410(a) allows the Register to refuse registration if the applicant's deposit material does not constitute copyrightable subject matter or the copyright claim is otherwise determined by the Register to be invalid. As such, mere delivery of the application to the Register does not constitute registration. The Register must affirmatively allow registration. 

While the "registration means registration" approach may be inefficient, particularly when one considers that the denied applicant can sue anyway following rejection of registration, the obligation of a court to apply the statute as written remains important. Indeed, a court's adherence to the restrictions contained in Congressional enactments respects the role of Congress in ascribing the benefit and the burden imposed by statutes. 

As observed by the Michigan court last week, the language of the statute should be the starting point in determining its meaning, and should also be the ending point when the meaning is clear. It is tragic that after 224 years into this country's copyright regimen there exists a core dispute as to what condition must exist permitting the filing of a copyright lawsuit.

Monday, November 10, 2014

The Patenting of a Design Trademark

It appears that the U.S. Patent Office used to issue design patents for graphical trademarks. Portland patent attorney James Walters reports his astonishing find of a U.S. design patent, D3444, issued in 1869 for this trademark:

 The "inventor" set out the following "claim":
What I claim as my invention, and design to secure by Letters Patent, is--
The design for a trade-mark, herein set forth and shown.
Exactly how the Patent Office came to issue Letters Patent in a trademark is more than interesting. The Patent Act of 1836 was designed to improve patent quality by removing the then-authority for the issuance of patents from the U.S. Secretary of State to a new official, a Commissioner of Patents. The 1836 Act established a formal criteria for issuing patents, allowing a patent to an inventor who "discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale ..."

It is unclear why the Patent Office viewed the design of a trademark as a new or useful discovery, invention or improvement of useful art, machine, manufacture or composition of matter. A trademark is a source identifier, not an invention, and is not authorized under the patent clause of the U.S. Constitution, Art I, Section 8, cl.8. In any event, since the 1836 Act limited a patent's term to 14 years, this "inventor" may have outwitted himself by obtaining limited patent protection when a trademark, in theory, can last as long as it is used to perform its source identifier function -- perhaps forever.

It would be interesting to learn whether the Patent Office's issuance of Letters Patent was a common practice for design marks at any point in time, or whether this one presently known example is an aberration. If any reader has additional examples, kindly share.

Thursday, November 6, 2014

Negotiation in the U.S. for the Sale of a Patent-Infringing Product Is Not Necessarily Infringement Under U.S. Law

Section 271(a) of the U.S. patent law permits an infringement claim against anyone who "without authority makes, uses, offers to sell, or sells any patented invention, within the United States..." A question exists as to whether a U.S. company is subject to a patent infringement claim when it negotiates in the U.S. for the sale of a patent infringing product, including the setting of price and sales terms. That is, is mere negotiation sufficient to constitute a "sale" or an "offer to sell"?

The Federal Circuit answered this question in the negative in the last week's Halo Electronics case. The mere negotiation in the U.S. by a U.S. seller for the sale of a product that infringes a U.S. patent, including negotiation in the U.S. over price and projected demand, is insufficient to constitute a sale or offer to sell in the U.S. This was so when the actual sales transaction, including the final formation of the contract, as well as all delivery and performance under the contract, occurred outside of the U.S.

The Federal Court noted that the final formation of the contract occurred outside of the U.S., and the performance under the contract including final product delivery occurred outside of the U.S. The Court determined that there is a strong presumption "against extraterritorial application of United States laws." As such, the Court ruled that "pricing and contracting negotiations alone are insufficient to constitute a 'sale' within the United States."

The Court further ruled that there is no "offer to sell" in the U.S. if the actual sale transaction occurs outside of the U.S. "In order for a offer to sell to constitute infringement, the offer must be to sell a patented invention within the United States."

 So, the negotiation within the U.S. for the sale of a patent-infringing product is neither a sale nor an offer to sell when the final contract formation, as well as performance and delivery, occur outside of the United States.

As the Federal Circuit noted, "if one desires to prevent the selling of its patented invention in foreign countries, its proper remedy lies in obtaining and enforcing foreign patents." In other words, a U.S. patent is not necessarily worth the paper its printed on outside of the U.S.

Wednesday, November 5, 2014

Lawyer Receives Accolades From Judge -- And Is Then Sanctioned

Stop me if you've heard this one.

A lawyer presented oral argument to a panel of the Federal Circuit concerning a patent issue. Apparently, the lawyer did very well. A judge on the Federal Circuit, who was not on the panel and who is presently retired from the court, happened to attend a judges-only luncheon held following oral argument. At the luncheon, the panel judges informed the now-retired judge that the lawyer performed exceptionally well. The retired judge was proud to hear this good news, as he was a friend of the lawyer. The retired judge sent a laudatory e-mail to the lawyer. The e-mail stated:

Note that the retired judge was not on the panel that heard oral argument. And note further that the retired judge specifically invited the lawyer to "let others see this message."

So, what happened? The lawyer sent copies of the retired judge's e-mail to clients and prospective clients. And what happened next? Once the Federal Circuit learned that this e--mail of accolades was circulated by the lawyer, the court en banc issued an order publicly sanctioning the lawyer for distributing the e-mail. A copy of the court's order is here. The court determined that the lawyer's distribution of the e-mail constituted unprofessional conduct in that it inferred the lawyer's ability to improperly influence the court.

Note, finally, that the retired judge was not a part of the en banc court, but apparently the three judges, who gave the high accolades to the retired judge, were.

Monday, November 3, 2014

PTO To Provide Courtesy Reminders of Maintenance Filings

The U.S. trademark office recently announced that, beginning in late January 2015, it will begin providing courtesy reminders of upcoming Sections 8 and 71 declaration deadlines, and of upcoming Section 9 renewal deadlines. The PTO announcement is here. Reminders will be sent at the beginning of the filing period, but only to registrations (1) that are "live" on the date of sending, (2) that have valid e-mail addresses, and (3) that have granted permission to the PTO for e-mail communication. Reminders will be sent only by e-mail, not by regular mail, and there will be no follow-up reminders in the event the first attempted reminder fails.

Friday, October 31, 2014

A Tale of Ghoulish Copyright Authors

Late last night, I settled into a chair in front of my warm fire.
With the windows closed and blinds drawn,
I picked up my Compendium of U.S. Copyright Office Practices,
Seeking guidance on the new copyright regimen.

I began with authorship, and learned that,
Right there, in Section 306, a new rule is presented,
Clarifying that only a work created by a human being can be registered.
“Work purportedly created by divine or supernatural beings” cannot register.

Intrigued, I wondered why it was necessary for such a rule?
Had divine beings previously sought the right of registration?
I wondered. I took my laptop, logged onto copyright.gov
And conducted an author search.

I searched filings by author names.
I searched Dracula, and Poltergeist,
Witch, zombie, demon, mummy
Ghoul and ghost.

During my search, I heard what I took to be
A knock at my door. But I assumed that it was
The wind pushing against the windowpane,
And nothing more.

I was surprised with my search findings.
There, on my laptop screen, were search results
In the author field for:

Dracula, and Poltergeist
And Witch, Zombie
Demon and Mummy,
And for Ghoul and Ghost.
Authors all.

How can this be, I thought, since only
Humans by rule can be registered authors?
And then it occurred to me that,
Given the learned experience of the Copyright Office,
These creatures must be human, and nothing more.

They are among us.

The wind continued to batter the windows.
But then I heard a distinct knock at my door.
I put down my laptop, stood from my chair,
And walked to my door.

"Who is there," I asked? "Who is knocking on my door?"

I pondered the copyright registrations by







                  Ghouls, and




I open the door, slowly.





Tuesday, October 28, 2014

Don't Assume That Your U.S. Patent Is Valid

My blog post yesterday reported on the high invalidity patent rates of several developed countries. And last Friday, Judge Raymond T. Chen of the Federal Circuit, the appellate court charged with reviewing appeals of patent cases, raised a warning that patent owners should be cautious in assuming that their patent grant has merit.

Judge Chen told the annual meeting in D.C. of the American Intellectual Property Law Association on October 24th that the large grant of invalidity petitions by the Patent Trial and Appeal Board should produce a chill in many patent owners. Stated Judge Chen,
It is quite a commentary it seems to me that in a short period of time, the patent board has found it likely that at least some claims in almost 1,000 patents are unpatentable,
Those grants are of course non-final decisions, but the decision to grant the petition is not simply a small hurdle. It is a significant event that should get the attention of any patent owner.

Monday, October 27, 2014

Are Patents Worth The Paper They Are Printed On?

At the IP Scholars Conference held at UC Berkeley this past August 8, 2014, Joachim Henkel and Hans Zischka of the Technical University of Munich presented their paper on invalidation rates for issued patents. Their presentation is here. Henkel/Zischka suggest that if all patents issued by Germany went through invalidation proceedings, then about 75% of issued patents would be ruled either partially or fully invalid. As presented in their report, invalidation rates for other countries are:

  • Japan:                   73%     
  • United States:       60%
  • Australia               53%
  • United Kingdom:  50%
  • France:                 27%

This report should not provide much confidence to a patentee over the perceived strength of its patent.

Friday, October 24, 2014

Where Have The Trademark Cases Gone?

A review of the annual case filing statistics published by the Office of Federal Courts reveals that new trademark infringement filings in federal courts have been dropping while new patent and copyright filings have been increasing.

New patent case filings have more than doubled between 2009 and 2013, and new copyright filings have almost doubled since 2010. But trademark filings in federal courts reached a plateau in 2010 and have been decreasing since. Indeed, new copyright filings overtook new trademark filings in 2013 for the first time.

In a few months, the Office of Federal Courts will publish its new statistics for the period through September 30, 2014, and it will be interesting to see if these trends continue.

For the year ending September 30, 2013, the report identifies the following top five federal districts for new filings of copyright, patent and trademark claims:

A. New Copyright Cases:
  1. California Central:     541
  2. Illinois Northern:        321
  3. New York Southern:  229 
  4. Colorado:                   223
  5. Michigan Eastern:     158
B. New Patent Cases:
  1. Delaware:               1,492
  2. Texas Eastern:        1,386
  3. California Central:      505
  4. Virginia Eastern:        223
  5. Illinois Northern:        217

C. New Trademark Cases:
  1. California Central:      507
  2. New York Southern:  217
  3. Florida Southern:       210
  4. Illinois Northern:         209
  5. New Jersey:               126
The California Central federal district appears to be the most balanced in terms of the close number of new patent, copyright and trademark filings. Delaware and the Eastern District of Texas are the most out of balance, with their IP focus almost completely on patent cases.

Thursday, October 23, 2014

The Separate Accrual Rule in Copyright

In its decision today, the Seventh Circuit adopts a statue of limitations rule for copyright claims that many other courts have applied. The limitations test for copyright claims is not whether a lawsuit is filed by plaintiff within three years of discovery of an act of infringement. Rather, in copyright, a court looks to whether any claimed acts of infringement occurred within three years of filing the complaint. 

Today's opinion in Chicago Building Design, PC v. Mongolian House, Inc. deals with a pretty typical infringement claim relating to architectural plans. The plaintiff claims to have created architectural plans that the defendant copied and distributed as its own. Plaintiff had an inkling in 2008 that its plans were being infringed by defendant. Plaintiff saw what appeared to be a copy of its plans laying about at Chicago building permit offices, labeled with another architect's name. Plaintiff requested to see a copy of the suspect plans, but Chicago refused to provide a copy, claiming that the plans were exempt from disclosure. Plaintiff eventually filed its copyright infringement claim in 2012.

The statute of limitations for a copyright claim is three years. The district judge held that plaintiff was on inquiry notice in 2008, and that the statute of limitations began to run at that time. As such, the district judge ruled that the lawsuit was filed outside the three year window. The case was dismissed. But the Seventh Circuit disagreed, pointing out that the limitation analysis in copyright looks to whether acts of infringement occurred within three years of filing the complaint. The fact that an act of infringement occurred more than three years prior to commencement of the action is not the test. This is so because each act of infringement starts a new limitations period. And because plaintiff alleged that some acts of infringement occurred within three years of filing the complaint, the case should not have been dismissed.

The Seventh Circuit also determined that it is inappropriate to view a series of infringing acts as one, grand continuing infringement originating from a common, initial source. The fact that the initial act occurred outside of the three year look-back period does not prevent a copyright claim against related acts of infringement that occur within the three year period.

Wednesday, October 22, 2014

Revised Definition of Copyright Claimant: Can't Claim It If You Don't Own (All Of) It

The Copyright Office is amending its rules relating to who can apply for a copyright registration. The current rule permits certain classes of claimants, defined as:
  1. The author of the work,
  2. The person or entity that has obtained ownership of all rights to the work belonging to the author, and
  3. The person or entity that obtained from the author the contractual right to claim legal title to the copyright in the application.
The Copyright Office has published its notice of rulemaking to eliminate the third element set out above. That is, once the proposed amendment to the definition of claimant becomes effective, only the author, or a person or entity that has obtained all of the rights to the work from the author, can be a copyright claimant in order to apply to register a copyright. 

So, if an applicant seeks to obtain a copyright registration, the applicant must own all rights of authorship and not merely the contractual right to claim title to the copyright in the application. Excluded from the definition of permitted claimant will be assignees or devisees from the author or copyright owner who do not receive the entirety of the copyright interest. For example, excluded from the revised definition of claimant is a lender that takes a conditional security in software code under development containing the permitted right to apply for copyright registration. To become a successful claimant, the entirety of the copyright rights must transfer to the assignee and not merely the right to own the registration.

A person or entity that has the contractual right to apply for a copyright registration, or the right to own title to an unregistered copyrighted work, will no longer be able to apply for copyright registration in the work. In order to assure that an assignee has the right to apply for registration of copyright in an unregistered work, drafting appropriate language in a transfer document becomes key.

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."