US IP LAW of COPYRIGHTS - TRADEMARKS - PATENTS. Comments on all aspects of U.S. intellectual property law and policy, general IP, business IP, and entertainment IP, plus comments of interest!
Thursday, April 28, 2011
Federal Juris-Prudent
It is interesting how really smart, astute, worldly and, at times, humorous, a federal judge can be about so many issues that require attention and decision. See this interesting Order from Judge Melgren of the District of Kansas.
Keith Aoki
A wonderful write-up about Keith's scholarship and life work is presented on The Public Domain. I'm sure that more information will be provided in the days to come at the UC Davis law school site and the UO law school site.
Keith successfully merged his comic drawing talents with his IP scholarship. A copy of his entertaining and creative Pictures within Pictures should not be missed.
Thursday, April 14, 2011
What We Learned From our Mothers
Do not steal. And if you do steal, give it back and apologize.
Many of us learned this basic truth in our youth, but the message is often forgotten in adulthood. Or, so it seems when it comes to IP infringement. Indeed, the more public and obvious the infringement, the greater the apparent need for an embarrassing public apology.
We all may recall that John McCain's presidential campaign, along with the Republican National Committee and the Ohio Republican Party, were sued by Jackson Brown for infringement of his classic "Running on Empty" during the McCain-Obama presidential contest. McCain provided an embarrassing and public apology for the infringement as part of the settlement of the ensuing litigation.
Most recently, two days ago former Florida governor Charlie Crist posted a video apology on You Tube relating to the unauthorized use by his 2010 Senate campaign of the Talking Heads' 1985 classic "Road to Nowhere." The full text of the Crist apology is transcribed and follows:
And if infringement does occur, someone will have to eat crow. Or, post an embarrassing apology.
Many of us learned this basic truth in our youth, but the message is often forgotten in adulthood. Or, so it seems when it comes to IP infringement. Indeed, the more public and obvious the infringement, the greater the apparent need for an embarrassing public apology.
We all may recall that John McCain's presidential campaign, along with the Republican National Committee and the Ohio Republican Party, were sued by Jackson Brown for infringement of his classic "Running on Empty" during the McCain-Obama presidential contest. McCain provided an embarrassing and public apology for the infringement as part of the settlement of the ensuing litigation.
Most recently, two days ago former Florida governor Charlie Crist posted a video apology on You Tube relating to the unauthorized use by his 2010 Senate campaign of the Talking Heads' 1985 classic "Road to Nowhere." The full text of the Crist apology is transcribed and follows:
It is an ironic observation that politicians as a class are not immune to infringement claims when many politicians are working in Congress to stem abuse of U.S. IP. In any event, politicians, and all of us, need to be vigilant concerning the wrongful use of IP owned by others. This is particularly true when oversight may be lacking in large organizations, or when the IP misuse occurs during the heat of the moment. Indeed, this is exactly why organizational and managerial tools must be in place in all organizations to insure that infringement does not occur by lower ranking employees.Hi, I’m Charlie Crist. During 2010, I ran for a seat in the United States Senate. During that campaign, a video advertisement utilized a song made famous by David Byrne and the Talking Heads called Road to Nowhere. The advertisement was posted on my campaign website, on You Tube and sent out via e-mail. Regrettably, the campaign did not ask permission to obtain a license from Mr. Byrne to use Road to Nowhere in the advertisement. In fact, Mr. Byrne has never permitted his songs to be used for advertising of any kind, a position I respect deeply. The use of David Byrne’s song and his voice in my campaign advertisement without his permission was wrong and should not have occurred. I do not support, nor do I condone, any actions taken by anyone involved in the Senate campaign that were inconsistent with David Byrne’s rights, or with any other artist’s rights, or the various legal protections afforded to intellectual property. I sincerely apologize to David Byrne for using his famous song and his unique voice in my campaign advertisement without his permission. I pledge that should there be any future election campaigns for me, I will respect and uphold the rights of artists and obtain permission or a license for the use of any copyrighted work. Thank you.
And if infringement does occur, someone will have to eat crow. Or, post an embarrassing apology.
Monday, April 11, 2011
Ninth Circuit: The Winklevosses Cannot Undo Their Facebook Settlement
The Ninth Circuit holds today that the Winklevoss twins and Divya Narendra (the “Winklevii”) cannot void their settlement with Facebook. The Winklevii accused Mark Zuckerberg of stealing the idea for what has become Facebook while they were students at Harvard. For its part, Facebook accused the Winklevii of hacking into the Facebook computers and attempting to steal Facebook users.
The parties sought to end their contentious litigation by entering into a settlement arrangement. They signed a short, one and one-third page, handwritten settlement document, including a full release and an agreement that all information presented during the settlement discussions were confidential and could not be introduced in any judicial proceeding. The Winklevii received considerable cash and Facebook shares in the settlement. Unfortunately, their disputes continued unabated, and the parties continued to disagree as to whether the settlement was valid. The Winklevii argued in part that the settlement was not valid due to the omission of material terms. They also argued that the settlement was induced by fraud; specifically, that the value of Facebook was less than it was represented to be during the course of the settlement discussions.
Both the trial court and, now, the Ninth Circuit have held that the settlement is valid and enforceable. As to the question of whether material terms were omitted, the Ninth Circuit found that all material terms that needed to be included were included. Concerning the issue of fraudulent representation of Facebook value that the Winklevii argued induced their agreement to settle, the Ninth Circuit held that this claim was fully released and, in any event, could not be proven due to the confidential nature of the information disclosed during settlement discussions. Of note, the Ninth Circuit points out that the present value of Facebook is some 3.33 times the value that the Winklevii claimed they were lead to believe the shares were worth during the settlement discussions.
Finally, the Ninth Circuit’s pointed observation about this dispute bears some scrutiny:
The parties sought to end their contentious litigation by entering into a settlement arrangement. They signed a short, one and one-third page, handwritten settlement document, including a full release and an agreement that all information presented during the settlement discussions were confidential and could not be introduced in any judicial proceeding. The Winklevii received considerable cash and Facebook shares in the settlement. Unfortunately, their disputes continued unabated, and the parties continued to disagree as to whether the settlement was valid. The Winklevii argued in part that the settlement was not valid due to the omission of material terms. They also argued that the settlement was induced by fraud; specifically, that the value of Facebook was less than it was represented to be during the course of the settlement discussions.
Both the trial court and, now, the Ninth Circuit have held that the settlement is valid and enforceable. As to the question of whether material terms were omitted, the Ninth Circuit found that all material terms that needed to be included were included. Concerning the issue of fraudulent representation of Facebook value that the Winklevii argued induced their agreement to settle, the Ninth Circuit held that this claim was fully released and, in any event, could not be proven due to the confidential nature of the information disclosed during settlement discussions. Of note, the Ninth Circuit points out that the present value of Facebook is some 3.33 times the value that the Winklevii claimed they were lead to believe the shares were worth during the settlement discussions.
Finally, the Ninth Circuit’s pointed observation about this dispute bears some scrutiny:
The Winklevosses are not the first parties bested by a competitor who then seek to gain through litigation what they were unable to achieve in the marketplace. And the courts might have obliged, had the Winklevosses not settled their dispute and signed a release of all claims against Facebook. With the help of a team of lawyers and a financial advisor, they made a deal that appears quite favorable in light of recent market activity. See Geoffrey A. Fowler & Liz Rappaport, Facebook Deal Raises $1 Billion, Wall St. J., Jan. 22, 2011, at B4 (reporting that investors valued Facebook at $50 billion —3.33 times the value the Winklevosses claim they thought Facebook’s shares were worth at the mediation). For whatever reason, they now want to back out. Like the district court, we see no basis for allowing them to do so. At some point, litigation must come to an end. That point has now been reached.
Friday, April 8, 2011
Response To The Slants Trademark Post
My March 25, 2011 post addressed whether the PTO is too touchy when it comes to perceived scandalous trademarks. Below is a response that I received to that post from the attorney for the trademark applicant, the Slants music group:
"Hi Michael:
Not sure if you remember this, but I believe that you and I spoke for a few minutes a few years back at a CLE. Hope you are doing well. I was reading up on some of the recent commentary regarding the trademark case involving my client, The Slants, and I noticed you recently talked about the case on your blog. I appreciate the coverage, but I also wanted to point out that this matter is one that involves an allegedly “disparaging” mark and not a “scandalous” one. The difference is significant because, unlike the case of scandalous marks, the legal test for deciding whether a mark is disparaging ultimately looks only to the views of the referenced group (as opposed to the views of the general public). See In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267 (TTAB 2006) (citing Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1740-41 (TTAB 1999), rev’d on other grounds. The point was also addressed in the Harjo case at 1339, where the opinion states that “the perceptions of the general public are irrelevant…[O]nly the perceptions of those referred to, identified or implicated in some recognizable manner by the involved mark are relevant to this determination.”
Best regards,
Spencer
Spencer I. Trowbridge, Esq.
McNamer and Company
920 SW Third Ave, Suite 200
Portland, Oregon 97204
ph: 503.727.2502 fax: 503.727.2501
http://www.mcnamerlaw.com/attorneysTrowbridge.html"
"Hi Michael:
Not sure if you remember this, but I believe that you and I spoke for a few minutes a few years back at a CLE. Hope you are doing well. I was reading up on some of the recent commentary regarding the trademark case involving my client, The Slants, and I noticed you recently talked about the case on your blog. I appreciate the coverage, but I also wanted to point out that this matter is one that involves an allegedly “disparaging” mark and not a “scandalous” one. The difference is significant because, unlike the case of scandalous marks, the legal test for deciding whether a mark is disparaging ultimately looks only to the views of the referenced group (as opposed to the views of the general public). See In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267 (TTAB 2006) (citing Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1740-41 (TTAB 1999), rev’d on other grounds. The point was also addressed in the Harjo case at 1339, where the opinion states that “the perceptions of the general public are irrelevant…[O]nly the perceptions of those referred to, identified or implicated in some recognizable manner by the involved mark are relevant to this determination.”
Best regards,
Spencer
Spencer I. Trowbridge, Esq.
McNamer and Company
920 SW Third Ave, Suite 200
Portland, Oregon 97204
ph: 503.727.2502 fax: 503.727.2501
http://www.mcnamerlaw.com/attorneysTrowbridge.html"
USPTO Will Not Close Today
The USPTO has issued its press release informing the public that, in the event of a government shut down after today, it will remain open and operational through April 18, 2011.
Tuesday, April 5, 2011
Trademark Audit
A trademark audit, comprehensive to unfold,
Doth require patience, detail and examination in bold.
The audit provides true knowledge of worth,
And, Eureka, its owner sees royalties with mirth.
See yesterday's blog, down below, for a summary list of issues to address in a trademark audit.
Doth require patience, detail and examination in bold.
The audit provides true knowledge of worth,
And, Eureka, its owner sees royalties with mirth.
See yesterday's blog, down below, for a summary list of issues to address in a trademark audit.
Monday, April 4, 2011
Have You Audited Your Trademarks?
Do you know what intellectual property your business owns? Do you know what type of legal and business condition your business IP is in? Maintaining clean intellectual property is just as important as maintaining a clean set of financial records. Your financial records are audited, right? So, too, should your business IP be thoroughly examined. Doing so provides assurance of ownership, confirms value, clarifies rights of use, and places your business is a better posture for the license of its IP or the sale of its assets.
This article provides a list of potential issues to address concerning your firm’s trademarks. Future articles will address domain names, copyrights, patents and trade secrets.
Here is a list of potential issues to consider in conducting a trademark audit.
Trademark Due Diligence:
Have you identified your firm’s trademarks? Is the trademark limited solely to a word mark or to a design mark (logo)? Or, does your firm’s trademark include product trade dress, the design of a product or its packaging?
Have you documented your firm’s trademark use? Do you have written documents showing specifically how your trademark is used? If not, why not?
Have you registered your trademark for each type of good or service that your firm offers to the public? If not, why not?
If your firm is using its trademark on different goods or services than as indicated in a trademark registration, is it appropriate to apply for an additional registration for the non-covered goods or services?
If your firm uses its trademark on its website, is the on-line usage of the trademark covered by the trademark registration? Should there be an additional registration covering on-line usage?
Have you conducted a search to determine whether there are other users of your trademark (or a similar version) and trade dress for similar goods or services? If not, why not?
Have you documented your firm’s trademark and trade dress ownership? Was your firm’s trademark or trade dress initially developed or used by former owners of your business? Or by other parties? If so, does a transfer document exist from the prior users to your firm? If not, why not?
If your firm acquired its trademark or trade dress from another person or party in the past, has a transfer document been recorded with the U.S. Patent and Trademark Office?
Have you documented the first use date of your firm’s trademark or trade dress for each type of good or service provided by your firm? If so, does your documentation of first use adequately establish usage in interstate commerce, foreign commerce or commerce with the Indian tribes (these are the forms of "commerce" that Congress has the right to regulate)?
Have you obtained documentation of the first use date of any trademark or trade dress obtained from a prior user?
Is your firm’s trademark or trade dress “free and clear” of liens or encumbrances? Has your firm given a security interest to a lender covering your firm’s trademarks or trade dress? Or, covering “general intangibles”? Has a prior owner of your firm’s trademark or trade dress given a security interest to a lender covering the trademark, or covering general intangibles? If you license the use of a trademark or trade dress, has your licensor given a security interest in the trademark or trade dress, or in its general intangibles?
Does your firm use its trademark or trade dress in a consistent manner, or does it modify its trademark or trade dress from time to time? Does the present use of your firm’s trademark or trade dress match exactly the representation or design that is registered (as to font, color, styling and other design attributes)? Has the appearance of your firm’s trademark or trade dress been altered over time, even slightly? If so, is it appropriate to apply for a new registration for the modified styling?
Does your firm use its trademark or trade dress in foreign countries? If so, has it obtained protection in foreign countries?
Does your firm intend to use a new trademark in the future? If so, has it filed an Intent to Use application with the Patent and Trademark Office?
Does your firm license the use of its trademark or trade dress to others? Here, the term “license” applies to all forms of permission, from implied consent, to a consensual handshake, to a formal license document. If a license exists, is it in writing? If it is not in writing, why not?
Does your trademark license contemplate new uses that presently do not exist but which may subsequently develop in your industry?
Have you obtained the right to use a trademark or trade dress pursuant to a license obtained from another person or firm? If so, is it in writing? Is the trademark free and clear?
Does the license to use a trademark or trade dress include specific obligations concerning quality control of the usage, the type or manner of usage, or other limitations or requirements of use? If not, why not? Does the licensor actually monitor quality control of the licensee’s usage? Does the licensee actually comply with its quality control obligations?
Does the license to use a trademark or trade dress give the licensee any rights to the trademark or trade dress? Does it limit the usage of the trademark or trade dress to certain goods or services, or to certain geographic areas? Does it include a provision to reconcile any dispute concerning trademark use, quality control, termination of use and royalty?
The PTO requires the filing of periodic maintenance documents, and the payment of periodic fees, in order to prevent cancellation of a trademark registration. Is someone specifically charged with monitoring and maintaining the registration status of the trademark?
Do you allow your dealers, distributors or customers to use your firm’s trademark in their business name, in their domain name, or in their marketing materials? If so, do you have written documentation controlling this usage? If not, why not?
What is your trademark worth? What is your trade dress worth? What would happen to your business in the event your firm lost the exclusive use and control over its trademark or trade dress?
The foregoing list of trademark due diligence issues is not intended to be comprehensive. Every business is different and these issues should be considered in the context of a particular business. But these issues represent the basics for many business users.
This article provides a list of potential issues to address concerning your firm’s trademarks. Future articles will address domain names, copyrights, patents and trade secrets.
Here is a list of potential issues to consider in conducting a trademark audit.
Trademark Due Diligence:
Have you identified your firm’s trademarks? Is the trademark limited solely to a word mark or to a design mark (logo)? Or, does your firm’s trademark include product trade dress, the design of a product or its packaging?
Have you documented your firm’s trademark use? Do you have written documents showing specifically how your trademark is used? If not, why not?
Have you registered your trademark for each type of good or service that your firm offers to the public? If not, why not?
If your firm is using its trademark on different goods or services than as indicated in a trademark registration, is it appropriate to apply for an additional registration for the non-covered goods or services?
If your firm uses its trademark on its website, is the on-line usage of the trademark covered by the trademark registration? Should there be an additional registration covering on-line usage?
Have you conducted a search to determine whether there are other users of your trademark (or a similar version) and trade dress for similar goods or services? If not, why not?
Have you documented your firm’s trademark and trade dress ownership? Was your firm’s trademark or trade dress initially developed or used by former owners of your business? Or by other parties? If so, does a transfer document exist from the prior users to your firm? If not, why not?
If your firm acquired its trademark or trade dress from another person or party in the past, has a transfer document been recorded with the U.S. Patent and Trademark Office?
Have you documented the first use date of your firm’s trademark or trade dress for each type of good or service provided by your firm? If so, does your documentation of first use adequately establish usage in interstate commerce, foreign commerce or commerce with the Indian tribes (these are the forms of "commerce" that Congress has the right to regulate)?
Have you obtained documentation of the first use date of any trademark or trade dress obtained from a prior user?
Is your firm’s trademark or trade dress “free and clear” of liens or encumbrances? Has your firm given a security interest to a lender covering your firm’s trademarks or trade dress? Or, covering “general intangibles”? Has a prior owner of your firm’s trademark or trade dress given a security interest to a lender covering the trademark, or covering general intangibles? If you license the use of a trademark or trade dress, has your licensor given a security interest in the trademark or trade dress, or in its general intangibles?
Does your firm use its trademark or trade dress in a consistent manner, or does it modify its trademark or trade dress from time to time? Does the present use of your firm’s trademark or trade dress match exactly the representation or design that is registered (as to font, color, styling and other design attributes)? Has the appearance of your firm’s trademark or trade dress been altered over time, even slightly? If so, is it appropriate to apply for a new registration for the modified styling?
Does your firm use its trademark or trade dress in foreign countries? If so, has it obtained protection in foreign countries?
Does your firm intend to use a new trademark in the future? If so, has it filed an Intent to Use application with the Patent and Trademark Office?
Does your firm license the use of its trademark or trade dress to others? Here, the term “license” applies to all forms of permission, from implied consent, to a consensual handshake, to a formal license document. If a license exists, is it in writing? If it is not in writing, why not?
Does your trademark license contemplate new uses that presently do not exist but which may subsequently develop in your industry?
Have you obtained the right to use a trademark or trade dress pursuant to a license obtained from another person or firm? If so, is it in writing? Is the trademark free and clear?
Does the license to use a trademark or trade dress include specific obligations concerning quality control of the usage, the type or manner of usage, or other limitations or requirements of use? If not, why not? Does the licensor actually monitor quality control of the licensee’s usage? Does the licensee actually comply with its quality control obligations?
Does the license to use a trademark or trade dress give the licensee any rights to the trademark or trade dress? Does it limit the usage of the trademark or trade dress to certain goods or services, or to certain geographic areas? Does it include a provision to reconcile any dispute concerning trademark use, quality control, termination of use and royalty?
The PTO requires the filing of periodic maintenance documents, and the payment of periodic fees, in order to prevent cancellation of a trademark registration. Is someone specifically charged with monitoring and maintaining the registration status of the trademark?
Do you allow your dealers, distributors or customers to use your firm’s trademark in their business name, in their domain name, or in their marketing materials? If so, do you have written documentation controlling this usage? If not, why not?
What is your trademark worth? What is your trade dress worth? What would happen to your business in the event your firm lost the exclusive use and control over its trademark or trade dress?
The foregoing list of trademark due diligence issues is not intended to be comprehensive. Every business is different and these issues should be considered in the context of a particular business. But these issues represent the basics for many business users.
Saturday, April 2, 2011
Condom-Free Sex Film Tax Credits
Item No. 1: California requires sex actors working in pornographic film to use condoms.
Item No. 2: California has fined Hustler for non-protected sex by actors in its sex film shot in California.
Item No. 3: The Oregon House has agreed to extend the film production credits that were otherwise set to expire by the end of this year. These tax credits will encourage the production of all types of film and video in Oregon.
Item No. 4: Oregon shares a common, non-fenced border with California.
Query: Will the Oregon film tax credit encourage the production of condom-free sex films in Oregon?
Item No. 5: The present Oregon weather is 41 degrees, and cloudy with chance of rain.
Item No. 2: California has fined Hustler for non-protected sex by actors in its sex film shot in California.
Item No. 3: The Oregon House has agreed to extend the film production credits that were otherwise set to expire by the end of this year. These tax credits will encourage the production of all types of film and video in Oregon.
Item No. 4: Oregon shares a common, non-fenced border with California.
Query: Will the Oregon film tax credit encourage the production of condom-free sex films in Oregon?
Item No. 5: The present Oregon weather is 41 degrees, and cloudy with chance of rain.
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.
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.
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.
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.
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.
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 (http://www.piers.com/). 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 (http://www.zepol.com/) and Panjiva, Inc. (http://panjiva.com/). 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.
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 (http://www.piers.com/). 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 (http://www.zepol.com/) and Panjiva, Inc. (http://panjiva.com/). 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.
Tuesday, October 6, 2009
Can't Sue -- Can't Settle
Tomorrow morning, the Supreme Court will hear oral argument on an interesting copyright jurisdiction case that promises to cast a long shadow over the ongoing Google book settlement negotiations. Tomorrow’s Supreme Court case, Reed Elsevier, Inc. v. Muchnick, deals with Section 411(a) of the 1976 Copyright Act. This section provides that “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 short, a copyright owner of a work subject to the U.S. Copyright Act cannot sue for infringement unless the work is preregistered or registered. There are several exceptions to this strict rule. Infringement of a work of visual art need not be preregistered or registered in order to sue. Owners of foreign, non-U.S., works can sue without registration. And, if registration has been properly applied for, but rejected by the Copyright Office, then the owner of the work can sue but only if the owner notifies the Copyright Office (in this event the Copyright Office has the right to become a party to the lawsuit on the issue of registrability).
The Reed Elsevier case arrives at the Supreme Court in an interesting context. Almost all of the parties now argue that Section 411(a) is not jurisdictional or that its requirements can be waived. Not having an adequate voice in support of Section 411(a), the Supreme Court asked Deborah Merritt, a professor at Ohio State’s Moritz College of Law and a clerk to former Justice O'Connor, to appear as amicus curiae in support of the badgered Section 411(a).
The litigation that is now Reed Elsevier commenced years ago in the Southern District of New York. Generally, freelance writers who submitted work to publishers complained when the publishers sold the work to electronic databases. The Supreme Court’s 2001 opinion in New York Times Co. v. Tasini held that such conduct on the part of publishers constituted infringement absent agreement from the freelancers. The Tasini case recommended that the publishers enter into direct agreement with freelancers so as to define agreeable expansion of publication rights that the freelancers would permit.
Following Tasini, many publishers did enter into new or revised publishing agreements with freelancers so as to permit the republication of freelance articles by electronic databases, or in other contexts, beyond the initial publication. But many freelance articles published by the publishers were not the subject of consent agreements with writers, and some publishers did a poor job keeping records of which freelancers they bought articles from and which of these freelancers consented to republication. As such, the class action litigation that has now become the Reed Elsevier case proceeded forward and the class representatives and publishers eventually entered into a class settlement agreement. The settlement sought to resolve royalty issues based, in part, on whether the freelancer had obtained copyright registration for the work. Unregistered freelance works received the lowest level of compensation under the class settlement.
The class settlement was approved by the district court over the objection of some writers. An appeal to the Second Circuit followed. Both the class representatives and the publishers argued that the difference in treatment between copyright registered works and unregistered works was justified in part because of Section 411(a). That is, the parties argued in favor of the class settlement by observing that unregistered works cannot sue for infringement and, as such, these owners are not entitled to the same compensation as registered copyright owners. The parties made other argument in support of their settlement, but this Section 411(a) issue is highlighted here because it now serves as the basis for the Supreme Court’s certiorari. The Second Circuit, noting the Section 411(a) prohibition on litigating infringement claims by unregistered copyright owners, rejected the district court’s approval of the class settlement agreement. The Second Circuit took the position that, with regard to the application of Section 411(a), a class party that cannot sue cannot be a covered party to the class settlement.
Now, before the Supreme Court, both the class representatives and the publishers are arguing against the position they took in the district court and the Second Circuit. They now assert that the Section 411(a) litigation limitation is not jurisdictional but can be waived. Because of the lack of advocacy in support of the Second Circuit’s holding, the Supreme Court invited amicus participation. The brief by court-appointed amicus curiae is set out here and provides a good background of both the Reed Elsevier litigation together with the history of the registration requirement.
As observed correctly by the court-appointed amicus, the overwhelming judicial view of the registration requirement is that it is jurisdictional and, as such, non-waivable. Indeed, the obligation to register in order to sue for infringement was contained in every copyright act since the founding of the country. Against this statutory and case background, it is hard to see how the Reed Elsevier parties are going to be successful in overturning some two hundred years of jurisprudence.
But consider what all of this may mean to the ongoing Google book settlement. Two weeks ago the parties in that case agreed to go back to the drawing board and renegotiate over the numerous issues that the public and the DOJ criticized. It appears that the issue of unregistered work should be right at the top of the redo list. If the Supreme Court upholds the Second Circuit and affirms that Section 411(a) establishes a non-waivable jurisdictional requirement, then how will it be possible for the Google parties to craft a settlement that includes nonregistered works? And if nonregistered works cannot be the subject of the Google settlement until these works pass into the public domain, any resulting settlement with Google will not be as beneficial to the extent a rather large subset of writings are not covered. In this circumstance, Google will not receive the settlement benefit it was hoping for as to all of the books it has copied, and hopes to copy in the future. Further, the desire to digitalize will not be as strong given the potential liability for nonpermitted copying.
Since we are now in the midst of the college football season and it is common to rate weekend games, I’m willing to rate the likely outcome of the Reed Elsevier case and its effect on the Google book resolution. I’m thinking that Section 411(a) will be upheld by two touchdowns and that the Reed Elsevier class settlement cannot include nonregistered works. I’m further thinking that the Google parties will view the Reed Elsevier case as providing a difficult challenge to a settlement modification. The big question is whether Google will still be willing to pay $125 million for a much smaller piece of the game.
The Reed Elsevier case arrives at the Supreme Court in an interesting context. Almost all of the parties now argue that Section 411(a) is not jurisdictional or that its requirements can be waived. Not having an adequate voice in support of Section 411(a), the Supreme Court asked Deborah Merritt, a professor at Ohio State’s Moritz College of Law and a clerk to former Justice O'Connor, to appear as amicus curiae in support of the badgered Section 411(a).
The litigation that is now Reed Elsevier commenced years ago in the Southern District of New York. Generally, freelance writers who submitted work to publishers complained when the publishers sold the work to electronic databases. The Supreme Court’s 2001 opinion in New York Times Co. v. Tasini held that such conduct on the part of publishers constituted infringement absent agreement from the freelancers. The Tasini case recommended that the publishers enter into direct agreement with freelancers so as to define agreeable expansion of publication rights that the freelancers would permit.
Following Tasini, many publishers did enter into new or revised publishing agreements with freelancers so as to permit the republication of freelance articles by electronic databases, or in other contexts, beyond the initial publication. But many freelance articles published by the publishers were not the subject of consent agreements with writers, and some publishers did a poor job keeping records of which freelancers they bought articles from and which of these freelancers consented to republication. As such, the class action litigation that has now become the Reed Elsevier case proceeded forward and the class representatives and publishers eventually entered into a class settlement agreement. The settlement sought to resolve royalty issues based, in part, on whether the freelancer had obtained copyright registration for the work. Unregistered freelance works received the lowest level of compensation under the class settlement.
The class settlement was approved by the district court over the objection of some writers. An appeal to the Second Circuit followed. Both the class representatives and the publishers argued that the difference in treatment between copyright registered works and unregistered works was justified in part because of Section 411(a). That is, the parties argued in favor of the class settlement by observing that unregistered works cannot sue for infringement and, as such, these owners are not entitled to the same compensation as registered copyright owners. The parties made other argument in support of their settlement, but this Section 411(a) issue is highlighted here because it now serves as the basis for the Supreme Court’s certiorari. The Second Circuit, noting the Section 411(a) prohibition on litigating infringement claims by unregistered copyright owners, rejected the district court’s approval of the class settlement agreement. The Second Circuit took the position that, with regard to the application of Section 411(a), a class party that cannot sue cannot be a covered party to the class settlement.
Now, before the Supreme Court, both the class representatives and the publishers are arguing against the position they took in the district court and the Second Circuit. They now assert that the Section 411(a) litigation limitation is not jurisdictional but can be waived. Because of the lack of advocacy in support of the Second Circuit’s holding, the Supreme Court invited amicus participation. The brief by court-appointed amicus curiae is set out here and provides a good background of both the Reed Elsevier litigation together with the history of the registration requirement.
As observed correctly by the court-appointed amicus, the overwhelming judicial view of the registration requirement is that it is jurisdictional and, as such, non-waivable. Indeed, the obligation to register in order to sue for infringement was contained in every copyright act since the founding of the country. Against this statutory and case background, it is hard to see how the Reed Elsevier parties are going to be successful in overturning some two hundred years of jurisprudence.
But consider what all of this may mean to the ongoing Google book settlement. Two weeks ago the parties in that case agreed to go back to the drawing board and renegotiate over the numerous issues that the public and the DOJ criticized. It appears that the issue of unregistered work should be right at the top of the redo list. If the Supreme Court upholds the Second Circuit and affirms that Section 411(a) establishes a non-waivable jurisdictional requirement, then how will it be possible for the Google parties to craft a settlement that includes nonregistered works? And if nonregistered works cannot be the subject of the Google settlement until these works pass into the public domain, any resulting settlement with Google will not be as beneficial to the extent a rather large subset of writings are not covered. In this circumstance, Google will not receive the settlement benefit it was hoping for as to all of the books it has copied, and hopes to copy in the future. Further, the desire to digitalize will not be as strong given the potential liability for nonpermitted copying.
Since we are now in the midst of the college football season and it is common to rate weekend games, I’m willing to rate the likely outcome of the Reed Elsevier case and its effect on the Google book resolution. I’m thinking that Section 411(a) will be upheld by two touchdowns and that the Reed Elsevier class settlement cannot include nonregistered works. I’m further thinking that the Google parties will view the Reed Elsevier case as providing a difficult challenge to a settlement modification. The big question is whether Google will still be willing to pay $125 million for a much smaller piece of the game.
Thursday, October 1, 2009
61 in 61
On this date, the last day of baseball's 1961 regular season, Roger Maris blasted a home run over the right field fence at Yankee Stadium, besting Babe Ruth's single-season record of 60 home runs set in 1927. Three players have "officially" surpassed Maris' feat: Mark McGwire, Sammy Sosa and Barry Bonds. Each of these three are under suspicion for steriod use.
"As a ballplayer, I would be delighted to do it again. As an individual, I doubt if I could possibly go through it again." Roger Maris.
"Now they talk on the radio about the record set by (Babe) Ruth, and (Joe) DiMaggio and Henry Aaron. But they rarely mention mine. Do you know what I have to show for the sixty-one home runs? Nothing, exactly nothing." Roger Maris.
"As a ballplayer, I would be delighted to do it again. As an individual, I doubt if I could possibly go through it again." Roger Maris.
"Now they talk on the radio about the record set by (Babe) Ruth, and (Joe) DiMaggio and Henry Aaron. But they rarely mention mine. Do you know what I have to show for the sixty-one home runs? Nothing, exactly nothing." Roger Maris.
Monday, September 28, 2009
Ten Mistakes In Seeking A U.S. Trademark Registration
Today's post was prepared by my outstanding trademark paralegal, Mollie Roberts.
If you recall the last time one of your trademark applications sailed through the USPTO’s office without a hiccup, you probably wish you could also recall the magic sequence of events you followed to make it so.
I participated in INTA’s Trademark Administrator’s Conference held in Chicago last week, and attended an informative trademark presentation led by Daphne Maravei of Blake Cassels & Graydon in Canada, and former USPTO examiner Christopher Ott, now of Vorys, Sater, Seymour & Pease, LLP, in the United States. I took away the following list of 10 common mistakes that practitioners make when filing U.S. trademark applications with the PTO:
Mistake No. 1 - Inadequate searching
Your search should allow you to substantially answer the following questions with regard to the mark: Can you register it? Use it? Enforce it? Depending on what a knock-out search reveals, a full search may be advisable and, once you obtain your search results, get moving on the application. It is never a good idea to delay a filing once you receive the search results.
Mistake No. 2 - Wrong applicant name
Make sure you are confident that the correct entity is named as the owner/applicant. Double-check records with the secretary of state, where applicable, and don’t forget to simply ask the client. This is particularly true with regard to international filings where inconsistent trademark ownership is more common.
Mistake No. 3 – Inconsistent foreign registrations and U.S. applications
When you file a U.S. application based on a foreign registration, be wary of using a laundry list of goods and services. Rather, verify that each item is in use. Obtain a proper translation, and consider getting the foreign registration before filing in the United States.
Mistake No. 4 – Describing goods and services
Before you attempt to describe the goods and services associated with the mark, be confident that you have a clear understanding of what your client actually does with its mark.
Mistake No. 5 – Is the mark in use?
Establish a check-list of what “in-use” means and go over the list with your client before you file the application.
Mistake No. 6 – Improper specimen or outdated specimen
Educate your client about the importance of specimens. The specimen must be a substantially exact representation of the drawing, so ask for packaging and examples of use, then confirm that the mark is in use with the goods and services listed in the application. Further, ensure that the specimen is current.
Mistake No. 7 – Creative declarations
The USPTO provides a declaration for trademark applications. Use it. Then ask your client to sign it. Attorneys should avoid signing declarations on behalf of clients.
Mistake No. 8 – Unusual situations - Madrid Protocol mishaps
Maintenance filings offer an opportunity to correct prior mistakes, update information like client addresses, and prevent future mistakes.
Declarations of use must be filed by the owner of the mark and the mark must be used in the same manner as stated in the registration. If the mark is being used with fewer than all of the goods listed, review 37 C.F.R. § 2.161 to ensure that the proper form of declaration is filed.
Mistake No. 10 – Abandonment
If you recall the last time one of your trademark applications sailed through the USPTO’s office without a hiccup, you probably wish you could also recall the magic sequence of events you followed to make it so.
I participated in INTA’s Trademark Administrator’s Conference held in Chicago last week, and attended an informative trademark presentation led by Daphne Maravei of Blake Cassels & Graydon in Canada, and former USPTO examiner Christopher Ott, now of Vorys, Sater, Seymour & Pease, LLP, in the United States. I took away the following list of 10 common mistakes that practitioners make when filing U.S. trademark applications with the PTO:
Mistake No. 1 - Inadequate searching
Your search should allow you to substantially answer the following questions with regard to the mark: Can you register it? Use it? Enforce it? Depending on what a knock-out search reveals, a full search may be advisable and, once you obtain your search results, get moving on the application. It is never a good idea to delay a filing once you receive the search results.
Mistake No. 2 - Wrong applicant name
Make sure you are confident that the correct entity is named as the owner/applicant. Double-check records with the secretary of state, where applicable, and don’t forget to simply ask the client. This is particularly true with regard to international filings where inconsistent trademark ownership is more common.
Mistake No. 3 – Inconsistent foreign registrations and U.S. applications
When you file a U.S. application based on a foreign registration, be wary of using a laundry list of goods and services. Rather, verify that each item is in use. Obtain a proper translation, and consider getting the foreign registration before filing in the United States.
Mistake No. 4 – Describing goods and services
Before you attempt to describe the goods and services associated with the mark, be confident that you have a clear understanding of what your client actually does with its mark.
Mistake No. 5 – Is the mark in use?
Establish a check-list of what “in-use” means and go over the list with your client before you file the application.
Mistake No. 6 – Improper specimen or outdated specimen
Educate your client about the importance of specimens. The specimen must be a substantially exact representation of the drawing, so ask for packaging and examples of use, then confirm that the mark is in use with the goods and services listed in the application. Further, ensure that the specimen is current.
Mistake No. 7 – Creative declarations
The USPTO provides a declaration for trademark applications. Use it. Then ask your client to sign it. Attorneys should avoid signing declarations on behalf of clients.
Mistake No. 8 – Unusual situations - Madrid Protocol mishaps
Be wary of using a laundry list of goods and services.Mistake No. 9 – Maintenance filings
Remember that you cannot amend the mark in a Madrid registration. So, get it right the first time.
Educate yourself about statutory prohibitions.
Review the statute at least once before filing.
Maintenance filings offer an opportunity to correct prior mistakes, update information like client addresses, and prevent future mistakes.
Declarations of use must be filed by the owner of the mark and the mark must be used in the same manner as stated in the registration. If the mark is being used with fewer than all of the goods listed, review 37 C.F.R. § 2.161 to ensure that the proper form of declaration is filed.
Mistake No. 10 – Abandonment
“Use it or lose it” - Educate the client about continued use of the mark.
Licensing - Discuss proper licensing with your client – the licensor must always exercise control over the mark. Implied licenses may not be worth the paper they are (not) printed on.
Enforcement - Educate the client about proper enforcement of the mark so it doesn’t become generic.
Assignment – A mark cannot be assigned without corresponding goodwill.
No. 9
In 1941, on this date Ted Williams went 6 for 8 for the Red Sox in a season ending doubleheader, raising his season batting average to .405 and becoming the last player to average over .400 for a season. During the past 68 years, several players have come close but no one has achieved this milestone. Yet, as great as this accomplishment, Williams was not considered the MVP for 1941, that honor going to Joe DiMaggio in recognition of his 56 game hitting streak with the Yankees."Baseball is the only field of endeavor where a man can succeed three times out of ten and be considered a good performer." Ted Williams.
Friday, September 25, 2009
Random Thoughts
Am I the only one wondering why Borders is selling the Sony Reader? Won't this device cannibalize the sale of Borders' books, particularly since Borders does not appear to sell electronic book versions? I don't believe that Chevron sells batteries for electric cars. Perhaps Borders should follow the Chevron model.
Does anyone really believe that Google is going to be able to put a settlement together in its class action case without substantially increasing the cash it's willing to put into the deal? I'm thinking that Google needs to ante up something around $500 million. That should reduce the objections.
Why hasn't the administration nominated an IP czar, yet? Come to think of it, perhaps this is a good thing.
The last time I checked the U.S. Judiciary statistics on patent litigation, about one-half of all patent verdicts are overturned on appeal. In other words, litigants have about a 50-50 shot of obtaining a different decision from the Federal Circuit. Which raises the question, why is it taking so long to develop patent courts?
Would you want your son or daughter, after recently graduating from law school and passing the bar, to work for the PTO? Even if big law isn't hiring?
Why are there more IP stories in the news on Monday morning than on Friday afternoon? What, the law takes a holiday on Fridays?
Does anyone really believe that Google is going to be able to put a settlement together in its class action case without substantially increasing the cash it's willing to put into the deal? I'm thinking that Google needs to ante up something around $500 million. That should reduce the objections.
Why hasn't the administration nominated an IP czar, yet? Come to think of it, perhaps this is a good thing.
The last time I checked the U.S. Judiciary statistics on patent litigation, about one-half of all patent verdicts are overturned on appeal. In other words, litigants have about a 50-50 shot of obtaining a different decision from the Federal Circuit. Which raises the question, why is it taking so long to develop patent courts?
Would you want your son or daughter, after recently graduating from law school and passing the bar, to work for the PTO? Even if big law isn't hiring?
Why are there more IP stories in the news on Monday morning than on Friday afternoon? What, the law takes a holiday on Fridays?
Faulkner
William Faulkner was born on this date in 1897 in Mississippi, one year and one day after F. Scott Fitzgerald. Faulkner was part of the growing Southern literary heritage of the early Twentieth Century and his writing facility may have eclipsed his fellow Southern writers of that era, including Tennessee Williams, Robert Penn Warren, Margaret Mitchell, Sherwood Anderson, Carson McCullers, Harper Lee, John Kennedy Toole, and of course many others. Some of Faulkner's most known works include The Sound and the Fury (1929), As I Lay Dying (1930), Light in August (1932), Absalom, Absalom (1936), Requiem for a Nun (1951), The Reivers (1962), along with many other novels, novellas and short stories. Faulkner won the Nobel Prize for Literature in 1949. He passed away July 6, 1962 in Mississippi.
[This concludes major literary birthdays, at least for a while. It should not be too surprising that birthdays tend to stack up in late September, given the holiday period nine months previous. Never mind.]
[This concludes major literary birthdays, at least for a while. It should not be too surprising that birthdays tend to stack up in late September, given the holiday period nine months previous. Never mind.]
Thursday, September 24, 2009
Copyright Termination
Jack Kirby drew superhero cartoons for Marvel Comics. The recent article in the N.Y. Times, regarding the efforts by Kirby's heirs to terminate his prior transfer of copyright to his superhero artwork, raises an interesting question relating to the proper timing of copyright termination. Kirby drew a lot of superhero cartoons over the years, including X-Men and Fantastic Four. About the same time that Disney announced its proposed acquisition of Marvel, Kirby's heirs sent termination notices to Marvel and others seeking to terminate Kirby's prior copyright transfer of his artwork.
Kirby's heirs are not the only folks seeking to take back old copyright transfers. The granddaughter of A.A. Milne sought to do so as to a prior copyright grant but was unsuccessful. Some heirs of John Steinbeck also sought to terminate a prior copyright grant but were rebuffed. In fact, it is possible for heirs of a creator to terminate successfully prior copyright transfers. Last year, the heirs of Jerry Siegel, one of the original creators of the Superman comics, successfully terminated Siegel's prior copyright transfer to DC Comics. To terminate properly is a bit tricky and requires some mathematics and a calendar.
Section 304(c) of the Copyright Act allows termination of copyright transfers made prior to January 1, 1978, provided the copyright was in its first or renewal term as of that date, and provided further that the copyright was not created as a work for hire, or the transfer was not made by will. Subject to these limitations, any pre-1978 transfer can be terminated by an author, or by an author's statutorily defined heirs, at one or the other of the following periods of time:
1. Between the end of the 56th year through the 61st year after the copyright was secured (that is, following first publication). Or, if termination did not occur during this period, then
2. Between the end of the 75th year through the 80th year after the copyright was secured (after first publication).
In either of these cases, a statutorily required notice must be given at least two years prior to termination during one of these periods. The notice cannot be given more than ten years prior to the date of termination.
Let's see how this all works. Since today is September 24, 2009, and if the minimally required two year termination notice is given today, then the first date that a prior grant can be terminated pursuant to such notice is September 24, 2011. The oldest secured copyright that can be thus terminated under the first termination period would be for a work first published 61 years previous, in 1950. Any work first published by 1950 or later can be terminated under the first termination period, but nothing earlier.
If the first termination period is not available to terminate, then the second termination period may be. Under the second termination formula, if a statutory notice is given today for a termination on September 24, 2011, then the oldest secured copyright that can be terminated would be for a work first published 80 years ago, in 1931. Any work published after that date can be terminated under the second formula, but nothing earlier.
If an author or an author's statutory heir owns an interest in a cartoon, or other artwork, or other work first published in 1931 or later, and provided that the copyright remains valid and the prior grant was not a work for hire nor by will, then it is possible that a pre-1978 grant is terminable. But the termination is tricky and must be accomplished according to precise statutory requirements.
Hi ho silver, Lone Ranger. Up, up and away, Superman.
Kirby's heirs are not the only folks seeking to take back old copyright transfers. The granddaughter of A.A. Milne sought to do so as to a prior copyright grant but was unsuccessful. Some heirs of John Steinbeck also sought to terminate a prior copyright grant but were rebuffed. In fact, it is possible for heirs of a creator to terminate successfully prior copyright transfers. Last year, the heirs of Jerry Siegel, one of the original creators of the Superman comics, successfully terminated Siegel's prior copyright transfer to DC Comics. To terminate properly is a bit tricky and requires some mathematics and a calendar.
Section 304(c) of the Copyright Act allows termination of copyright transfers made prior to January 1, 1978, provided the copyright was in its first or renewal term as of that date, and provided further that the copyright was not created as a work for hire, or the transfer was not made by will. Subject to these limitations, any pre-1978 transfer can be terminated by an author, or by an author's statutorily defined heirs, at one or the other of the following periods of time:
1. Between the end of the 56th year through the 61st year after the copyright was secured (that is, following first publication). Or, if termination did not occur during this period, then
2. Between the end of the 75th year through the 80th year after the copyright was secured (after first publication).
In either of these cases, a statutorily required notice must be given at least two years prior to termination during one of these periods. The notice cannot be given more than ten years prior to the date of termination.
Let's see how this all works. Since today is September 24, 2009, and if the minimally required two year termination notice is given today, then the first date that a prior grant can be terminated pursuant to such notice is September 24, 2011. The oldest secured copyright that can be thus terminated under the first termination period would be for a work first published 61 years previous, in 1950. Any work first published by 1950 or later can be terminated under the first termination period, but nothing earlier.
If the first termination period is not available to terminate, then the second termination period may be. Under the second termination formula, if a statutory notice is given today for a termination on September 24, 2011, then the oldest secured copyright that can be terminated would be for a work first published 80 years ago, in 1931. Any work published after that date can be terminated under the second formula, but nothing earlier.
If an author or an author's statutory heir owns an interest in a cartoon, or other artwork, or other work first published in 1931 or later, and provided that the copyright remains valid and the prior grant was not a work for hire nor by will, then it is possible that a pre-1978 grant is terminable. But the termination is tricky and must be accomplished according to precise statutory requirements.
Hi ho silver, Lone Ranger. Up, up and away, Superman.
So we beat on
Francis Scott Key's cousin, F. Scott Fitzgerald, was born on this date in 1896. His significant novels, inspired by the Jazz Age, included This Side of Paradise (1920), The Beautiful and Damned (1922), The Great Gatsby (1925), Tender Is the Night (1934) and The Last Tycoon (published posthumously, 1942). He also authored many short stories. Fitzgerald suffered from alcoholism since his college days, and died of a massive heart attack on December 21, 1940. The opening line from his masterpiece The Great Gatsby is inscribed on his tombstone:
So we beat on, boats against the current,
Borne back ceaselessly into the past.
Wednesday, September 23, 2009
Oh Deceit, Thy Home Is Marketing
Two reports came out yesterday suggesting that folks forget the basic tenets taught to children -- don't lie or trick people.
First, there was the announcement about the yogurt settlement. Dannon, the maker of the Activia brand of yogurt, settled a class action claim alleging marketing misrepresentation. It agreed to refund $35 million to consumers harmed by its false advertising. The class plaintiff alleged that the commercials for Activia falsely touted the product's benefits to digestive health, falsely claiming that consuming this yogurt for two weeks would clear up what may clog you up, internally speaking. As a result of the settlement, consumers can apply for a cash refund (you need to fill in a form) and Dannon's ad agency will have to reinvent the marketing approach for this product, hopefully in line with reality.
Second, there was a settlement announcement of the class action case against Facebook. The class plaintiffs sued Facebook for tracking personal information about Facebook users through the Beacon feature. Apparently, Facebook thought that it would be a good idea to track the personal comings and goings of folks on the Internet, sometimes without consent or notice, and sometimes when Internet users were not online at Facebook. Facebook's spying device, Beacon, amassed this information for Facebook marketing purposes. When users became aware that their private Internet usage was in fact being traced, they sued. And now Facebook is throwing in the towel, terminating Beacon, and contributing $9.5 million in funding toward a new foundation to study Internet privacy. Facebook can certainly provide instruction as to what not to do.
These pesky class action cases sure have a way of spoiling a good marketing idea!
First, there was the announcement about the yogurt settlement. Dannon, the maker of the Activia brand of yogurt, settled a class action claim alleging marketing misrepresentation. It agreed to refund $35 million to consumers harmed by its false advertising. The class plaintiff alleged that the commercials for Activia falsely touted the product's benefits to digestive health, falsely claiming that consuming this yogurt for two weeks would clear up what may clog you up, internally speaking. As a result of the settlement, consumers can apply for a cash refund (you need to fill in a form) and Dannon's ad agency will have to reinvent the marketing approach for this product, hopefully in line with reality.
Second, there was a settlement announcement of the class action case against Facebook. The class plaintiffs sued Facebook for tracking personal information about Facebook users through the Beacon feature. Apparently, Facebook thought that it would be a good idea to track the personal comings and goings of folks on the Internet, sometimes without consent or notice, and sometimes when Internet users were not online at Facebook. Facebook's spying device, Beacon, amassed this information for Facebook marketing purposes. When users became aware that their private Internet usage was in fact being traced, they sued. And now Facebook is throwing in the towel, terminating Beacon, and contributing $9.5 million in funding toward a new foundation to study Internet privacy. Facebook can certainly provide instruction as to what not to do.
These pesky class action cases sure have a way of spoiling a good marketing idea!
Google Book Settlement: A Procedural Suggestion
If ever there is need for a mulligan in litigation, the time is now.
The parties in the Google class action litigation have announced their intent to re-work their proposed settlement. Yet, it should be pointed out that any potential re-write may suffer from the same flaws as the present settlement arrangement. The DOJ observed last Friday that the plaintiff's class is seriously under-represented. There is no one in the plaintiff's class specifically aligned with present and future orphan work owners, with foreign rights owners or with future authors, heirs and distributors. Also, importantly, the class does not represent the interest of the U.S. government, which certainly has a role to play given its regulation in the copyright arena since 1790.
It is well that the class parties seek a re-do with the assistance of the DOJ. But there are a lot of other interest holders at stake, and the present class parties coupled with the DOJ cannot be expected to represent all competing and objecting interests. This anticipated pause in the litigation provides a good opportunity to address the lack of adequate class representation for all of the new, post-complaint issues that have been placed in the first proposed settlement and that will likely be the subject of negotiation for the re-write. Indeed, the court should insist that the parties brief the issue of adequate class representation now.
The parties in the Google class action litigation have announced their intent to re-work their proposed settlement. Yet, it should be pointed out that any potential re-write may suffer from the same flaws as the present settlement arrangement. The DOJ observed last Friday that the plaintiff's class is seriously under-represented. There is no one in the plaintiff's class specifically aligned with present and future orphan work owners, with foreign rights owners or with future authors, heirs and distributors. Also, importantly, the class does not represent the interest of the U.S. government, which certainly has a role to play given its regulation in the copyright arena since 1790.
It is well that the class parties seek a re-do with the assistance of the DOJ. But there are a lot of other interest holders at stake, and the present class parties coupled with the DOJ cannot be expected to represent all competing and objecting interests. This anticipated pause in the litigation provides a good opportunity to address the lack of adequate class representation for all of the new, post-complaint issues that have been placed in the first proposed settlement and that will likely be the subject of negotiation for the re-write. Indeed, the court should insist that the parties brief the issue of adequate class representation now.
If You Don't Like the Present Google Book Settlement, Then Wait, There's More
The class action parties in the Google book settlement have thrown in the towel as far as the present settlement agreement is concerned. They recognize that the significant opposition, including some 400 filed objections to the proposed settlement, and including the important objections raised last Friday by the United States, all but doom the present iteration of the settlement arrangement. In their unopposed motion filed yesterday afternoon, the class plaintiffs suggest that the settlement will be renegotiated by the parties with the assistance of the DOJ.
Accordingly, because the parties intend to amend the Settlement Agreement and need adequate time to negotiate amendments among themselves and with the DOJ, plaintiffs respectfully request that the Court adjourn the Fairness Hearing scheduled for October 7, 2009.
Tuesday, September 22, 2009
When One Million Eyes Don't Count
Is the Ninth Circuit correct that one million pairs of eyes are not relevant to a claim for copyright infringement?
The Ninth Circuit basically said as much in its opinion last Friday in Art Attacks Ink, LLC v. MGA Entertainment Inc. In this appeal of a copyright defendant’s motion for judgment as a matter of law, the Ninth Circuit considered the degree by which access exists when copyrighted goods are displayed and sold at a county fair. And not just any county fair, but county fairs in Southern California with millions of people coming through the gates.
The copyright plaintiff, Art Attacks Ink, claimed that it owned the copyright to a series of "Spoiled Brats" designs. "The Spoiled Brats collection features cartoonish, predominantly female characters with oversized eyes, disproportionately large heads and feet, makeup, and bare midriffs." Id. at *13443. The Bratz doll marketed by defendant MGA contained a similar design. "In 2001, MGA began selling “Bratz” dolls, which, like Art Attacks’ designs, feature large eyes, heavy makeup, oversized eyes, heads, and feet, and bare midriffs." Id. at *13445.
The copyright claim of Art Attacks Ink turned on whether the defendant copied its Spoiled Brats design. In considering the existence of wrongful copying, the Ninth Circuit presented a fairly typical copyright analysis, addressing the proof of copying when actual copying cannot be established. To prove copying, the plaintiff can produce evidence of actual copying or, alternatively, indirect evidence of copying by proving access and similarity.
It is often stated that two works can be developed independent of one another, and neither will infringe the other unless there is copying. To establish copying without direct proof requires “access.” The plaintiff can present a case of access by proving that the defendant possessed a reasonable probability of viewing the plaintiff's work. Access can be established circumstantially by producing evidence of a chain connecting the plaintiff's work with defendant's access, or by showing that the plaintiff's work was widely distributed.
The Ninth Circuit in Art Attacks Ink first observed that the plaintiff was not able to establish a direct linkage between its work and the defendant's access. It then discussed the evidence of wide dissemination. Art Attacks Ink is a small, family-owned business that displayed and sold its Spoiled Brats designs primarily at numerous county fairs in Southern California.
The Ninth Circuit noted that one million visitors were present at the Del Amo Fair. Art Attacks Ink had a 20 x 10 booth at the fair entrance and some 75% of the fair visitors passed by its booth. Millions more passed by its booths at other fairs. "Millions of fair attendees have walked past the booth over the years." Id. at *13445.
But, says the Ninth Circuit, this was not good enough to establish wide dissemination for purposes of proving access.
Let me repeat this. There was no evidence that significant numbers of passersby would notice the plaintiff's booth, says the Ninth Circuit. Why not? If Art Attacks Ink described its Spoiled Brats design on a radio station broadcasting at the Orange County fair, or the Ventura County fair, or the Del Amo fair, or any other venue with a million pair of ears, would that not be sufficient evidence of wide dissemination?
Consider the radio industry in my home state of Oregon, for example. There are over 230 radio station transmitters broadcasting in the state of Oregon. The only metropolitan area in Oregon with more than one million people is the Portland-metro market. Of these some 230 station/transmitters, only about 33 radio transmitters serve the Portland-metro market. All the rest, about 200 transmitters, serve markets in the rest of the state – all with less than one million pairs of ears in each market. Most of these transmitters belong to commercial stations, all of which sell varying amounts of time for commercials. How do we know this? Because the stations are still in business.
Would it not be clear enough that the radio stations in Oregon, outside of the Portland market, sell sufficient ad time to stay in business, and have a sufficient audience to develop market value? Of course. If a million pair of non-captive ears, unknown and undefined, in a radio station market can support ad time revenue and radio station value, why can't a million pair of captive eyes at a county fair – albeit a “large” county fair – support wide dissemination, particularly when these very eyes are connected to feet that walk right in front of the Art Attacks Ink booth at the fair entrance? What are we missing here? Why can a million non-captive people in a radio market constitute a sufficient size to support ad sales and market value, but if these same million people walk past a booth at the front entrance of a fair then such captive numbers do not support wide dissemination and, therefore, do not support access?
Certainly the Art Attacks Ink plaintiff had other evidence of wide dissemination, including modest sales and an Internet presence. But the Ninth Circuit explained that the number of sales in question, about 2,000, were too few in number. Prior authority established that some 6,000 sales were not sufficient to prove wide dissemination. The Ninth Circuit further did not like the plaintiff's Internet evidence. It pointed out that the plaintiff's website was slow to load because it was graphically intense, taking some two minutes, and that there were several designs displayed by plaintiff on its website in addition to its Spoiled Brats designs.
I cannot quarrel too much with the evidence of sales and Internet usage. Evidence of 2,000 sales over a several year period is pretty modest. And Internet evidence, without establishing the number of hits or Internet sales, is not very persuasive. But having a booth at the front entrance to a fair with millions of captive visitors walking past the booth – now that's evidence of wide dissemination in my view.
Importantly, the issue here is access, not sales. There is a big difference. There can be plenty of access even though sales are low. People may see but may not like and may not buy. The impression remains. Access exists.
Perhaps the Ninth Circuit panel does not go to county fairs in Southern California. Whether the panel has this type of experience or not does not mean that it is appropriate for an appellate court to dismiss the value of a million captive impressions made by a booth at the entrance gate. Most of the radio stations in my state would love to have this large of a market base. Indeed, in considering the connection between a radio market and a captive fair market, if the Ninth Circuit is so dismissive of proof of access to a million fair attendees, is any plaintiff safe in assuming that radio broadcasts to a sub-million market can safely prove access?
The Ninth Circuit basically said as much in its opinion last Friday in Art Attacks Ink, LLC v. MGA Entertainment Inc. In this appeal of a copyright defendant’s motion for judgment as a matter of law, the Ninth Circuit considered the degree by which access exists when copyrighted goods are displayed and sold at a county fair. And not just any county fair, but county fairs in Southern California with millions of people coming through the gates.
The copyright plaintiff, Art Attacks Ink, claimed that it owned the copyright to a series of "Spoiled Brats" designs. "The Spoiled Brats collection features cartoonish, predominantly female characters with oversized eyes, disproportionately large heads and feet, makeup, and bare midriffs." Id. at *13443. The Bratz doll marketed by defendant MGA contained a similar design. "In 2001, MGA began selling “Bratz” dolls, which, like Art Attacks’ designs, feature large eyes, heavy makeup, oversized eyes, heads, and feet, and bare midriffs." Id. at *13445.
The copyright claim of Art Attacks Ink turned on whether the defendant copied its Spoiled Brats design. In considering the existence of wrongful copying, the Ninth Circuit presented a fairly typical copyright analysis, addressing the proof of copying when actual copying cannot be established. To prove copying, the plaintiff can produce evidence of actual copying or, alternatively, indirect evidence of copying by proving access and similarity.
It is often stated that two works can be developed independent of one another, and neither will infringe the other unless there is copying. To establish copying without direct proof requires “access.” The plaintiff can present a case of access by proving that the defendant possessed a reasonable probability of viewing the plaintiff's work. Access can be established circumstantially by producing evidence of a chain connecting the plaintiff's work with defendant's access, or by showing that the plaintiff's work was widely distributed.
Absent direct evidence of copying, proof of infringement involves fact-based showings that the defendant had ‘access’ to the plaintiff’s work . . . .” To prove access, a plaintiff must show a reasonable possibility, not merely a bare possibility, that an alleged infringer had the chance to view the protected work. Where there is no direct evidence of access, circumstantial evidence can be used to prove access either by (1) establishing a chain of events linking the plaintiff ’s work and the defendant’s access, or (2) showing that the plaintiff ’s work has been widely disseminated.Id. at *13448, internal citations omitted.
The Ninth Circuit in Art Attacks Ink first observed that the plaintiff was not able to establish a direct linkage between its work and the defendant's access. It then discussed the evidence of wide dissemination. Art Attacks Ink is a small, family-owned business that displayed and sold its Spoiled Brats designs primarily at numerous county fairs in Southern California.
Art Attacks sold its wares primarily from a booth at several county fairs. Because Art Attacks is a small family business, it did business at only one location at a time. Art Attacks traveled to fairs in Orange County, San Diego County, Ventura County, Riverside County, San Bernardino County, and, after 1998, Los Angeles County. Art Attacks also did business at the Camp Pendleton Exchange, a convention in the Navajo Nation, and several malls, amusement centers, and Wal-Mart stores in Arizona. Art Attacks also sold its wares at Wal-Mart stores in California, including the Santee, Chula Vista, and Poway Stores.Id. at *13444.
The Ninth Circuit noted that one million visitors were present at the Del Amo Fair. Art Attacks Ink had a 20 x 10 booth at the fair entrance and some 75% of the fair visitors passed by its booth. Millions more passed by its booths at other fairs. "Millions of fair attendees have walked past the booth over the years." Id. at *13445.
But, says the Ninth Circuit, this was not good enough to establish wide dissemination for purposes of proving access.
Although Art Attacks did not present any evidence of how many people saw or noticed the booth, Art Attacks showed that millions of people attend the relevant county fairs. Even so, there is no evidence that significant numbers of passersby would notice the Art Attacks booth among the many other similar booths at the fair or be able to view the Spoiled Brats displays.Id. at *13450.
Let me repeat this. There was no evidence that significant numbers of passersby would notice the plaintiff's booth, says the Ninth Circuit. Why not? If Art Attacks Ink described its Spoiled Brats design on a radio station broadcasting at the Orange County fair, or the Ventura County fair, or the Del Amo fair, or any other venue with a million pair of ears, would that not be sufficient evidence of wide dissemination?
Consider the radio industry in my home state of Oregon, for example. There are over 230 radio station transmitters broadcasting in the state of Oregon. The only metropolitan area in Oregon with more than one million people is the Portland-metro market. Of these some 230 station/transmitters, only about 33 radio transmitters serve the Portland-metro market. All the rest, about 200 transmitters, serve markets in the rest of the state – all with less than one million pairs of ears in each market. Most of these transmitters belong to commercial stations, all of which sell varying amounts of time for commercials. How do we know this? Because the stations are still in business.
Would it not be clear enough that the radio stations in Oregon, outside of the Portland market, sell sufficient ad time to stay in business, and have a sufficient audience to develop market value? Of course. If a million pair of non-captive ears, unknown and undefined, in a radio station market can support ad time revenue and radio station value, why can't a million pair of captive eyes at a county fair – albeit a “large” county fair – support wide dissemination, particularly when these very eyes are connected to feet that walk right in front of the Art Attacks Ink booth at the fair entrance? What are we missing here? Why can a million non-captive people in a radio market constitute a sufficient size to support ad sales and market value, but if these same million people walk past a booth at the front entrance of a fair then such captive numbers do not support wide dissemination and, therefore, do not support access?
Certainly the Art Attacks Ink plaintiff had other evidence of wide dissemination, including modest sales and an Internet presence. But the Ninth Circuit explained that the number of sales in question, about 2,000, were too few in number. Prior authority established that some 6,000 sales were not sufficient to prove wide dissemination. The Ninth Circuit further did not like the plaintiff's Internet evidence. It pointed out that the plaintiff's website was slow to load because it was graphically intense, taking some two minutes, and that there were several designs displayed by plaintiff on its website in addition to its Spoiled Brats designs.
I cannot quarrel too much with the evidence of sales and Internet usage. Evidence of 2,000 sales over a several year period is pretty modest. And Internet evidence, without establishing the number of hits or Internet sales, is not very persuasive. But having a booth at the front entrance to a fair with millions of captive visitors walking past the booth – now that's evidence of wide dissemination in my view.
Importantly, the issue here is access, not sales. There is a big difference. There can be plenty of access even though sales are low. People may see but may not like and may not buy. The impression remains. Access exists.
Perhaps the Ninth Circuit panel does not go to county fairs in Southern California. Whether the panel has this type of experience or not does not mean that it is appropriate for an appellate court to dismiss the value of a million captive impressions made by a booth at the entrance gate. Most of the radio stations in my state would love to have this large of a market base. Indeed, in considering the connection between a radio market and a captive fair market, if the Ninth Circuit is so dismissive of proof of access to a million fair attendees, is any plaintiff safe in assuming that radio broadcasts to a sub-million market can safely prove access?
Can the PTO Save Money?
For years, the PTO's trademark side has had the technology to permit electronic filing and to generate electronic notices -- except for notices of publication. All sorts of notices emanate electronically from the trademark side, yet every notice of publication is mailed on a postcard bearing a postage stamp. At INTA in Chicago three years ago, I raised this issue with the attendant at the PTO's booth as I was being handed a cool PTO note pad. I was told that the PTO would look into forwarding notices of publication electronically.
I did not view this matter as being too technically difficult since the PTO places an electronic entry of the notice of publication on its electronic database, and since a copy of the electronic notice can be downloaded from the database. Three years later, the PTO has now developed a mechanism allowing electronic distribution in the first instance of notice of publication. But not just yet. These e-notices won't begin until October 6th. Further, they will be sent only to users who agree to receive e-mail notification from the PTO. Yes, progress!
The PTO's announcement explains that using the new e-notification system for notices of publication will save the PTO on postage. The postage for each postcard costs 28¢. If the production cost of a postcard is, say, 5¢, then the PTO saves 33¢ for each eliminated postcard notice of publication. If the PTO mails out, say, 500,000 postcards per year, it may save about $165,000 annually with e-notice. Over the three years since INTA was last held in Chicago, the lost savings on notices of publication amounts to almost $500,000.
Here's hoping that the PTO will find an appropriate use for this cost savings.
I did not view this matter as being too technically difficult since the PTO places an electronic entry of the notice of publication on its electronic database, and since a copy of the electronic notice can be downloaded from the database. Three years later, the PTO has now developed a mechanism allowing electronic distribution in the first instance of notice of publication. But not just yet. These e-notices won't begin until October 6th. Further, they will be sent only to users who agree to receive e-mail notification from the PTO. Yes, progress!
The PTO's announcement explains that using the new e-notification system for notices of publication will save the PTO on postage. The postage for each postcard costs 28¢. If the production cost of a postcard is, say, 5¢, then the PTO saves 33¢ for each eliminated postcard notice of publication. If the PTO mails out, say, 500,000 postcards per year, it may save about $165,000 annually with e-notice. Over the three years since INTA was last held in Chicago, the lost savings on notices of publication amounts to almost $500,000.
Here's hoping that the PTO will find an appropriate use for this cost savings.
Monday, September 21, 2009
Herbert George Wells
Happy birthday to H.G. Wells. I try, but am not always successful, in noting significant events in literature. The birth of H.G. Wells, who along with Jules Verne became renown as the fathers of science fiction, is significant. Wells, born in Kent, England, authored well-known works that kept us awake at night or sitting on the edge of our seats, including:
- The Time Machine
- The Island of Doctor Moreau
- The Invisible Man
- The War of the Worlds
- When the Sleeper Wakes
- The First Men on the Moon
The DOJ Does Not Like the Google Book Settlement Agreement
The United States has weighed in on the Google book settlement. The comments came this past Friday, but not from the Copyright Office. Rather, the Department of Justice and U.S. Attorney for New York filed a statement raising considerable caution to aspects of the proposed settlement. The comments provide substantial grist for the mill in considering the impact of a privately negotiated settlement on the public, on future authors, on unrepresented rights owners, and as a replacement for the deliberative mechanics of Congress.
The U.S. does not like the book settlement for reasons internal to the function of a class action proceeding, and for external reasons relating to the anti-trust and copyright laws. In considering the class action implications, the DOJ observes that this type of settlement is different than the typical class action settlement that seeks to settle historical claims defined in the plaintiff's complaint. By contrast, the primary thrust of the Google settlement relates to future conduct, future claims and future authors. Indeed, the effect of the settlement on future authors and publishers is significant.
The DOJ further notes that none of the class representatives come from key, discrete sub-classes that are impacted by the settlement: authors and owners of orphan works and foreign rights owners. Indeed, the DOJ points out that the settlement creates a conflict in treatment between non-orphan works and orphan works, not only in terms of the obligation to opt out in the future but also in terms of royalty distribution. As to foreign rights owners, not only is this entire subclass not represented in the class plaintiffs, but settlement treatment of foreign works may be in conflict with U.S. treaty obligations and with internal laws of foreign states.
The DOJ's comments relating to the effect on foreign rights owners mirrors much of the criticism filed by foreign governments (primarily France and Germany) and foreign rights owners (several foreign publishers have filed objections). Here, the DOJ points out that the significant impact on foreign rights owners, coupled with the absence of any foreign representation in the representative class, requires a robust notice to foreign rights owners together with a longer opt out period. To underscore this point, some foreign comments criticize the lack of foreign language translation of both the notice and the settlement agreement, implicating the effectiveness of the present notice.
The DOJ observes that the settlement flips traditional copyright concepts into an opt out regime for both present and future rights owners, a concept at odds with traditional exclusive rights principles under copyright law. The Register of Copyright has already observed in a statement to Congress that the "infringe first and ask questions later" structure of the settlement is at odds with 220 years of U.S. copyright legal history.
Finally, the DOJ addresses the antitrust thrust of the settlement. On this score, the DOJ points out that it is still examining the antitrust issues and no final decisions have yet been made. But at present it offers the following observations:
1. The settlement appears to violate the Sherman Act by constituting an agreement between the private parties as to wholesale distribution terms of present and future copyright work.
2. The settlement appears to restrict retail price competition, including the existence of an apparent floor below which retail price competition may not exist.
3. The settlement appears to give publishers the ability to control the future price of orphan works, including the pricing knowledge of a competitive product.
The DOJ points out repeatedly that the parties to the settlement agreement appear willing to re-open negotiations over key terms, and the DOJ expresses its willingness to participate so as to provide a public voice in addressing these numerous troubling issues. In its present form, the DOJ advocates rejection of the settlement agreement, coupled with efforts to recraft a regimen that may become the legal foundation for all digital rights distribution.
The U.S. does not like the book settlement for reasons internal to the function of a class action proceeding, and for external reasons relating to the anti-trust and copyright laws. In considering the class action implications, the DOJ observes that this type of settlement is different than the typical class action settlement that seeks to settle historical claims defined in the plaintiff's complaint. By contrast, the primary thrust of the Google settlement relates to future conduct, future claims and future authors. Indeed, the effect of the settlement on future authors and publishers is significant.
The DOJ further notes that none of the class representatives come from key, discrete sub-classes that are impacted by the settlement: authors and owners of orphan works and foreign rights owners. Indeed, the DOJ points out that the settlement creates a conflict in treatment between non-orphan works and orphan works, not only in terms of the obligation to opt out in the future but also in terms of royalty distribution. As to foreign rights owners, not only is this entire subclass not represented in the class plaintiffs, but settlement treatment of foreign works may be in conflict with U.S. treaty obligations and with internal laws of foreign states.
The DOJ's comments relating to the effect on foreign rights owners mirrors much of the criticism filed by foreign governments (primarily France and Germany) and foreign rights owners (several foreign publishers have filed objections). Here, the DOJ points out that the significant impact on foreign rights owners, coupled with the absence of any foreign representation in the representative class, requires a robust notice to foreign rights owners together with a longer opt out period. To underscore this point, some foreign comments criticize the lack of foreign language translation of both the notice and the settlement agreement, implicating the effectiveness of the present notice.
The DOJ observes that the settlement flips traditional copyright concepts into an opt out regime for both present and future rights owners, a concept at odds with traditional exclusive rights principles under copyright law. The Register of Copyright has already observed in a statement to Congress that the "infringe first and ask questions later" structure of the settlement is at odds with 220 years of U.S. copyright legal history.
Finally, the DOJ addresses the antitrust thrust of the settlement. On this score, the DOJ points out that it is still examining the antitrust issues and no final decisions have yet been made. But at present it offers the following observations:
1. The settlement appears to violate the Sherman Act by constituting an agreement between the private parties as to wholesale distribution terms of present and future copyright work.
2. The settlement appears to restrict retail price competition, including the existence of an apparent floor below which retail price competition may not exist.
3. The settlement appears to give publishers the ability to control the future price of orphan works, including the pricing knowledge of a competitive product.
The DOJ points out repeatedly that the parties to the settlement agreement appear willing to re-open negotiations over key terms, and the DOJ expresses its willingness to participate so as to provide a public voice in addressing these numerous troubling issues. In its present form, the DOJ advocates rejection of the settlement agreement, coupled with efforts to recraft a regimen that may become the legal foundation for all digital rights distribution.
Thursday, September 17, 2009
Cropping Photos - Cropping Truth: The Lack of Moral Rights Under U.S. Copyright Law
David Hume Kennerly, the White House photographer for President Ford, is upset, perhaps rightfully so, at the crop job by Newsweek to one of his photos. His article in the N.Y. Times, expressing frustration at misleading photo cropping, is here.
Kennerly submitted a photo of Vice President Cheney and his family in their kitchen, with the VP carving the family dinner. The magazine aggressively cropped the photo so as to show only the VP cutting up something bloody with a long knife. The cropped photo was used in an article criticizing the VP's stance on secret, aggressive CIA interrogation. Certainly worse, the magazine gave attribution to Kennerly for the cropped photo.
Kennerly's essay in today's N.Y. Times criticizes this type of gotcha journalism in that the cropping is misleading: it mischaracterizes the true meaning of the photo and the true circumstances depicted in the photo. But Kennerly's unstated point is broader and relates to the lack of practical "moral rights" present in U.S. copyright law.
Sect. 106A of the Copyright Act provides certain basic and very limited "moral rights" to an author of a work of visual art. A photograph can qualify as a work of visual art provided the photo is produced "for exhibition purposes only," in a single copy, or in a limited edition of 200 or fewer copies that are signed and consecutively numbered.
Kennerly's photo does not qualify as a work of visual art under the narrow statutory definition. Even if it did, Kennerly's "moral rights" would be exceedingly limited, including the right of attribution, the right not to have his name associated with his work in the event the work is distorted, mutilated or modified, and the right to prevent mutilation or distortion of the work in certain instances.
Kennerly's complaint, moreover, does not qualify for infringement purposes, likely for the same reason that Acuff-Rose Music lost its case against Two Live Crew. Accuff-Rose Music claimed that the taking of a portion of its copyrighted song "Pretty Woman" by Two Live Crew, who then produced a separate work strongly critical of the content and themes of "Pretty Woman," constituted copyright infringement. But the Supreme Court held that there was no infringement because the taking of a portion of the music resulted in fair use. In a similar manner, it is likely that the taking of a portion of Kennerly's family-friendly photo of Cheney, cropped to show only the VP cutting up something bloody, and then matching the cropped image to a statement attributed to Cheney about CIA interrogations, may be fair use for copyright purposes. But it certainly may not be fair for moral purposes.
The definition of "work of visual art" under U.S. copyright law is so limited that an author of a news photograph, not taken for purely exhibition purposes, cannot obtain any legal traction to prevent mutilation of the photo and, thereby, prevent mischaracterization of the work. It is unclear why the definition cannot be expanded to include all photos, including those taken for news purposes and not solely for exhibition purposes. If the definition were so broadened, then at least Kennerly could prevent his name from being associated with the mutilated photo. The misleading meaning of the cropped image would then not be attributed to him. This would be important to Kennerly, of course. And dropping Kennerly's name might perhaps cause Newsweek to rethink its cropping so as not to suffer the loss of Kennerly's authority and prestige. Bottom line, news photos should not be cropped if to do so becomes misleading.
Kennerly submitted a photo of Vice President Cheney and his family in their kitchen, with the VP carving the family dinner. The magazine aggressively cropped the photo so as to show only the VP cutting up something bloody with a long knife. The cropped photo was used in an article criticizing the VP's stance on secret, aggressive CIA interrogation. Certainly worse, the magazine gave attribution to Kennerly for the cropped photo.
Kennerly's essay in today's N.Y. Times criticizes this type of gotcha journalism in that the cropping is misleading: it mischaracterizes the true meaning of the photo and the true circumstances depicted in the photo. But Kennerly's unstated point is broader and relates to the lack of practical "moral rights" present in U.S. copyright law.
Sect. 106A of the Copyright Act provides certain basic and very limited "moral rights" to an author of a work of visual art. A photograph can qualify as a work of visual art provided the photo is produced "for exhibition purposes only," in a single copy, or in a limited edition of 200 or fewer copies that are signed and consecutively numbered.
Kennerly's photo does not qualify as a work of visual art under the narrow statutory definition. Even if it did, Kennerly's "moral rights" would be exceedingly limited, including the right of attribution, the right not to have his name associated with his work in the event the work is distorted, mutilated or modified, and the right to prevent mutilation or distortion of the work in certain instances.
Kennerly's complaint, moreover, does not qualify for infringement purposes, likely for the same reason that Acuff-Rose Music lost its case against Two Live Crew. Accuff-Rose Music claimed that the taking of a portion of its copyrighted song "Pretty Woman" by Two Live Crew, who then produced a separate work strongly critical of the content and themes of "Pretty Woman," constituted copyright infringement. But the Supreme Court held that there was no infringement because the taking of a portion of the music resulted in fair use. In a similar manner, it is likely that the taking of a portion of Kennerly's family-friendly photo of Cheney, cropped to show only the VP cutting up something bloody, and then matching the cropped image to a statement attributed to Cheney about CIA interrogations, may be fair use for copyright purposes. But it certainly may not be fair for moral purposes.
The definition of "work of visual art" under U.S. copyright law is so limited that an author of a news photograph, not taken for purely exhibition purposes, cannot obtain any legal traction to prevent mutilation of the photo and, thereby, prevent mischaracterization of the work. It is unclear why the definition cannot be expanded to include all photos, including those taken for news purposes and not solely for exhibition purposes. If the definition were so broadened, then at least Kennerly could prevent his name from being associated with the mutilated photo. The misleading meaning of the cropped image would then not be attributed to him. This would be important to Kennerly, of course. And dropping Kennerly's name might perhaps cause Newsweek to rethink its cropping so as not to suffer the loss of Kennerly's authority and prestige. Bottom line, news photos should not be cropped if to do so becomes misleading.
The Blonde at The Bitter End
She was the blonde for a generation. She was part of “Two Beards and a Blonde” – Peter, Paul and Mary. They got their start at The Bitter End in Greenwich Village in 1961. Now, the blonde is gone. Mary Travers passed away yesterday.
Some of Mary’s hits with Peter, Paul and Mary:
Some of Mary’s hits with Peter, Paul and Mary:
Lemon Tree
If I Had a Hammer
Leaving On a Jet Plane
Puff, the Magic Dragon
Blowin' in the Wind
500 Miles
Where Have All the Flowers Gone
Day Is Done
Don’t Think Twice, It’s All Right
I Dig Rock and Roll Music
Too Much of Nothing
Wednesday, September 16, 2009
Open-Access Publishing
The publishing business is certainly changing. The advent of new portable reading devices, such as the Amazon Kindle, permits convenient downloading of books. But perhaps the distribution of knowledge is experiencing its greatest makeover on college campuses. It is no surprise that the economy has produced multiple financial challenges to colleges, placing enhanced pressure on their budgets. But while college budgets are restricted, the cost of acquiring professional academic journals has been increasing.
College instructors who work in a publish or perish environment, or who require access to academic and scientific literature for research purposes, face a hardship when their university is unable to pay the cost of all requested academic journals. One solution that has been discussed generally in the recent past relates to open-access publication of academic and scientific literature. One website provides a link to open-access journals in the field of education. The site is here. There are other open-access sources.
Last week, Harvard faculty voted to allow free open-access distribution of their scholarly work. Indeed, Harvard, Dartmouth, Cornell, MIT and UC Berkeley are participating in a program to make scholarly articles of their faculty freely available through open-access publishing.
There has been discussion of open-access for a while. The Budapest Open Access Initiative, the Bethesda Statement on Open-Access Publishing, and the Berlin Declaration on Open Access to Knowledge in the Sciences and Humanities, have expressed principles for distribution of scientific and academic thought free from the constraints of copyright and publishing agreements.
Government now sees the value of open-access. The National Institute of Health requires peer-reviewed journal manuscripts funded through NIH grants to be submitted for public access distribution through a digital archive. Indeed, the recently introduced Senate bill S. 1373 requires government agencies to develop public access policies -- peer-reviewed papers developed from publically funded research are to be compiled into a publically available database.
Authors of academic literature have long quarreled with copyright's restrictions on free distribution of scientific literature. Some authors argue that they are pleased to allow free distribution of their academic writings, pointing out that it is the distributors and publishers of academic journals who restrict free distribution of important thought. A discussion of these views is contained in Princeton University Press v. Michigan Document Services, Inc. As pointed out by the dissent in Princeton, "The fair use doctrine, which requires unlimited public access to published works in educational settings, is one of the essential checks on the otherwise exclusive property rights given to copyright holders under the Copyright Act." Id. This was the losing view, of course, as the decision did not permit free copying of copyrighted academic writing.
The enhanced development of an open-access initiative, structured by free distribution mechanics under development by these renown universities, perhaps suggests a new future for all of publishing. Certainly the focus of open-access to date is on free distribution of academic and scientific thought filtered by peer-review. While development of this process is influenced by the presently tight publication budgets of college campuses, this new form of distribution may serve as a model for other forms of book distribution not tied to the academic or to government funding.
There is no good reason why Internet-based free distribution can't be developed for authors who seek a voice and a public presence unrestricted by the cost and restrictions of paper publication. It will certainly be interesting to see how the ongoing scholarly open-access movement might develop enhanced distribution options for all forms of text-based thought. Perhaps the copyright pendulum will swing back a bit from the side of distributors and publishers toward the side of authors.
College instructors who work in a publish or perish environment, or who require access to academic and scientific literature for research purposes, face a hardship when their university is unable to pay the cost of all requested academic journals. One solution that has been discussed generally in the recent past relates to open-access publication of academic and scientific literature. One website provides a link to open-access journals in the field of education. The site is here. There are other open-access sources.
Last week, Harvard faculty voted to allow free open-access distribution of their scholarly work. Indeed, Harvard, Dartmouth, Cornell, MIT and UC Berkeley are participating in a program to make scholarly articles of their faculty freely available through open-access publishing.
There has been discussion of open-access for a while. The Budapest Open Access Initiative, the Bethesda Statement on Open-Access Publishing, and the Berlin Declaration on Open Access to Knowledge in the Sciences and Humanities, have expressed principles for distribution of scientific and academic thought free from the constraints of copyright and publishing agreements.
Government now sees the value of open-access. The National Institute of Health requires peer-reviewed journal manuscripts funded through NIH grants to be submitted for public access distribution through a digital archive. Indeed, the recently introduced Senate bill S. 1373 requires government agencies to develop public access policies -- peer-reviewed papers developed from publically funded research are to be compiled into a publically available database.
Authors of academic literature have long quarreled with copyright's restrictions on free distribution of scientific literature. Some authors argue that they are pleased to allow free distribution of their academic writings, pointing out that it is the distributors and publishers of academic journals who restrict free distribution of important thought. A discussion of these views is contained in Princeton University Press v. Michigan Document Services, Inc. As pointed out by the dissent in Princeton, "The fair use doctrine, which requires unlimited public access to published works in educational settings, is one of the essential checks on the otherwise exclusive property rights given to copyright holders under the Copyright Act." Id. This was the losing view, of course, as the decision did not permit free copying of copyrighted academic writing.
The enhanced development of an open-access initiative, structured by free distribution mechanics under development by these renown universities, perhaps suggests a new future for all of publishing. Certainly the focus of open-access to date is on free distribution of academic and scientific thought filtered by peer-review. While development of this process is influenced by the presently tight publication budgets of college campuses, this new form of distribution may serve as a model for other forms of book distribution not tied to the academic or to government funding.
There is no good reason why Internet-based free distribution can't be developed for authors who seek a voice and a public presence unrestricted by the cost and restrictions of paper publication. It will certainly be interesting to see how the ongoing scholarly open-access movement might develop enhanced distribution options for all forms of text-based thought. Perhaps the copyright pendulum will swing back a bit from the side of distributors and publishers toward the side of authors.
Tuesday, September 15, 2009
Foreign Trademark Searching
How should trademarks be searched?
Is it sufficient for a U.S.-based user of a newly developed trademark to search solely in the U.S.? Certainly a search of PTO records is important to determine if an existing application or registration for the same or similar mark is of record. Conducting a search of other U.S.-based sources is also common. But is this enough? Many people, both lawyers and clients, may believe so, but here are two reasons why limiting a trademark search solely to U.S.-based sources, or to U.S.-based users, may not be sufficient.
First, Section 44 of the Lanham Act permits a trademark filing to be made in the U.S. by a foreign applicant within six months of the foreign filing, and to thereby be deemed filed in the U.S. as of the same date as filed in the foreign state.
As such, if the foreign trademark owner is not using its trademark in the U.S., what is there to search, particularly if the seach is limited solely to U.S. users? Limiting the search to U.S.-based search sources may produce a false sense of security.
Second, the existence of a foreign trademark, even a mark whose owner never intends to establish physical use within the U.S., can create problems for a U.S. user seeking to register the same or similar mark in the U.S. This problem is illustrated in the case of First Niagara Ins. Brokers, Inc. v. First Niagara Financial Group, Inc. (Fed. Cir. 2007). First Niagara Ins. Brokers is an insurance broker operating solely in Canada. It it not licensed or authorized to engage in insurance brokerage service in the U.S. It has no physical presence in the U.S. The Canadian firm employs unregistered marks in Canada featuring the words First Niagara. A similarly named firm, First Niagara Financial Group, provides financial services, including insurance brokerage services, in New York State and is not authorized to engage in business, and has no physical presence, in Canada. The N.Y. firm filed several Intent to Use applications with the PTO featuring the words First Niagara for financial services. The Canadian firm filed oppositions, arguing that the N.Y. firm's marks would likely cause confusion with the Canadian firm's unregistered First Niagara marks. The N.Y. firm argued that the Canadian firm's lack of use of its marks in the U.S. would not permit the Canadian firm to establish priority in the U.S. because the Canadian firm was not using the mark in commerce in the U.S. The TTAB ruled that the Canadian firm did not have standing to oppose since it was not using its First Niagara marks in commerce in the U.S.
The Federal Circuit disagreed with the TTAB and held that the type of use made of the unregistered First Niagara marks by the Canadian firm was sufficient to support an opposition even though it would not be sufficient use in commerce in the U.S. to permit U.S. registration by the Canadian firm. The Federal Circuit held that an opposer has standing to oppose if it uses its mark in the U.S., even though the use does not qualify as "use in commerce." In examining the type of use in the U.S. made by the Canadian firm, the court explained that the Canadian insurance brokerage:
The foregoing suggests that limiting a trademark search to the U.S. is not sufficient to adequately discover trademark danger from foreign users. Foreign entities have an ability to obtain priority over, or oppose, a newly developed U.S. mark. Indeed, the First Niagara opinion by the Federal Circuit appears so broad as to give opposition standing to a wide range of foreign-based mark users, including renown foreign bespoke tailors, renown foreign specialty retailers, and other foreign mark users who are known to U.S. travelers or who sell goods to U.S. tourists on a frequent basis. The list is endless. As is the risk that a foreign mark user, with insufficient usage in the U.S. to support registration in the U.S., can block the registration in the U.S. of a bona fide and meaningful U.S.-based user.
Foreign trademark searching is important. Just do it.
Is it sufficient for a U.S.-based user of a newly developed trademark to search solely in the U.S.? Certainly a search of PTO records is important to determine if an existing application or registration for the same or similar mark is of record. Conducting a search of other U.S.-based sources is also common. But is this enough? Many people, both lawyers and clients, may believe so, but here are two reasons why limiting a trademark search solely to U.S.-based sources, or to U.S.-based users, may not be sufficient.
First, Section 44 of the Lanham Act permits a trademark filing to be made in the U.S. by a foreign applicant within six months of the foreign filing, and to thereby be deemed filed in the U.S. as of the same date as filed in the foreign state.
44 (d) Right of priority.—An application for registration of a mark under sections 1, 3, 4, or 23 of this Act or under subsection (e) of this section filed by a person described in subsection (b) of this section who has previously duly filed an application for registration of the same mark in one of the countries described in subsection (b) shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, that—Under Section 44 (e), if the foreign application matures into a foreign registration, then the timely filed 44(d) U.S. application can be registered in the U.S. with the same priority as the foreign registration. This is the case even if the foreign registrant does not use the mark in the U.S. at the time of the U.S. filing or the U.S. registration. Sect. 44 (e) only requires that the foreign registrant declare its bona fide intent to use the mark in the U.S., "but use in commerce shall not be required prior to registration [in the U.S.]." Id.
(1) the application in the United States is filed within six months from the date on which the application was first filed in the foreign country.
As such, if the foreign trademark owner is not using its trademark in the U.S., what is there to search, particularly if the seach is limited solely to U.S. users? Limiting the search to U.S.-based search sources may produce a false sense of security.
Second, the existence of a foreign trademark, even a mark whose owner never intends to establish physical use within the U.S., can create problems for a U.S. user seeking to register the same or similar mark in the U.S. This problem is illustrated in the case of First Niagara Ins. Brokers, Inc. v. First Niagara Financial Group, Inc. (Fed. Cir. 2007). First Niagara Ins. Brokers is an insurance broker operating solely in Canada. It it not licensed or authorized to engage in insurance brokerage service in the U.S. It has no physical presence in the U.S. The Canadian firm employs unregistered marks in Canada featuring the words First Niagara. A similarly named firm, First Niagara Financial Group, provides financial services, including insurance brokerage services, in New York State and is not authorized to engage in business, and has no physical presence, in Canada. The N.Y. firm filed several Intent to Use applications with the PTO featuring the words First Niagara for financial services. The Canadian firm filed oppositions, arguing that the N.Y. firm's marks would likely cause confusion with the Canadian firm's unregistered First Niagara marks. The N.Y. firm argued that the Canadian firm's lack of use of its marks in the U.S. would not permit the Canadian firm to establish priority in the U.S. because the Canadian firm was not using the mark in commerce in the U.S. The TTAB ruled that the Canadian firm did not have standing to oppose since it was not using its First Niagara marks in commerce in the U.S.
The Federal Circuit disagreed with the TTAB and held that the type of use made of the unregistered First Niagara marks by the Canadian firm was sufficient to support an opposition even though it would not be sufficient use in commerce in the U.S. to permit U.S. registration by the Canadian firm. The Federal Circuit held that an opposer has standing to oppose if it uses its mark in the U.S., even though the use does not qualify as "use in commerce." In examining the type of use in the U.S. made by the Canadian firm, the court explained that the Canadian insurance brokerage:
- procures insurance for Canadians who travel into the U.S.,
- handles U.S.-based insurance claims of its Canadian customers,
- procures commercial liability policies for Canadian business regarding their U.S. operations,
- issues policy riders insuring goods shipped by Canadian customers into the U.S.,
- procures coverage for the Niagara Falls Bridge Commission that operates the bridge between the U.S. and Canada at Niagara Falls, and
- distributes advertising in Canada that features its unregistered First Niagara marks, and some of this advertising spills over into the U.S., among other uses.
The foregoing suggests that limiting a trademark search to the U.S. is not sufficient to adequately discover trademark danger from foreign users. Foreign entities have an ability to obtain priority over, or oppose, a newly developed U.S. mark. Indeed, the First Niagara opinion by the Federal Circuit appears so broad as to give opposition standing to a wide range of foreign-based mark users, including renown foreign bespoke tailors, renown foreign specialty retailers, and other foreign mark users who are known to U.S. travelers or who sell goods to U.S. tourists on a frequent basis. The list is endless. As is the risk that a foreign mark user, with insufficient usage in the U.S. to support registration in the U.S., can block the registration in the U.S. of a bona fide and meaningful U.S.-based user.
Foreign trademark searching is important. Just do it.
Subscribe to:
Posts (Atom)