When Does The U.S. Government Not Own The Rights To A War Memorial?

The City of Washington perhaps has more memorials, including war memorials, than any other American city. But does the federal government really own the rights in these memorials? The ongoing litigation between sculptor Frank Gaylord and the United States reveals what happens when the U.S. fails to adequately secure the copyright, or at least a perpetual license, in its war memorials.

Frank Gaylord is a prominent sculptor of "The Column," a group of 19 sculptures depicting a platoon of U.S. foot soldiers in the Korean War. "The Column" is the centerpiece in the Korean War Veterans' Memorial on the west end of the National Mall in Washington, DC.

The Korean War was as brutal as World War II. Some sources peg the U.S. war dead in excess of 33,000, plus more than 8,000 MIAs. In honor of the sacrifice and service to the U.S. during the Korean conflict, Congress in 1986 passed legislation putting in process a mechanism to develop a Korean War memorial. The Army Corps of Engineers was responsible for selecting the memorial's design team, Cooper-Lecky Architects of Washington, DC. Frank Gaylord, a well-regarded sculptor, was selected to craft the sculptural works. He began working on this project in 1990. His sculpted soldiers were assembled into the memorial, and depicted on a sunny day as follows:

The memorial was dedicated in July 1995 and has become a favorite venue on the National Mall. In 2002, the U.S. Postal Service elected to issue a stamp to acknowledge the 50th anniversary of the Korean War armistice. The stamp, depicted below, --

-- was financially successful. By 2005, the Postal Service sold nearly 48 million stamps, earning over $17 million. The Postal Service also sold retail goods, including commemorative panels and framed art, bearing the stamp's image.

Frank Gaylord sued the United States in 2006 for copyright infringement. Following trial in the Court of Claims, the Federal Circuit in February 2010 determined that Gaylord was the copyright author of The Column and that the U.S. government was liable for infringement. The case was remanded to establish damages. The first Federal Circuit opinion is located here.

During the damages case, Gaylord sought a 10% royalty on approximately $30.2 million in total revenue earned by the Postal Service in using The Column image. The Postal Service countered that Gaylord should receive at most a nominal amount since the Postal Service would never have entered into a 10% royalty arrangement. The Postal Service further argued that it never agreed previously to license an existing image for more than $5,000. The Court of Claims awarded Gaylord $5,000 for copyright infringement damages.

On appeal for the second time, the Federal Circuit reversed the nominal monetary award. A copy of the second appellate opinion is here. The Federal Circuit criticized the Court of Claims for limiting its analysis of the damage award solely to the Postal Service's position that it would never pay a 10% royalty. On the contrary, the Federal Circuit explained that, in establishing a copyright damages award against the federal government, "the court should not arbitrarily cap this award at $5,000 simply because the Postal Service claims it has never paid more to license a copyright for use on a stamp."

"Defendants cannot insulate themselves from paying for the damages they caused by resting on their past agreements and by creating internal 'policies' that shield them from paying fair market value for what they took."

The Federal Circuit observed that the test for copyright damages is not based on what the infringer would prefer to pay. Indeed, the amount of damages for this present claim of infringement may be unrelated to prior royalty agreements of either of the parties.

"The court should keep in mind that Mr. Gaylord's recovery is not limited to the Postal Service's actual profits. * * * Indeed, the court may find that a hypothetical negotiation between the parties would result in a higher ongoing royalty that the rate earned by Mr. Gaylord or the Postal Service under past agreements."

The Federal Circuit further determined that an award of prejudgment interest on the damages sum was appropriate. "Mr. Gaylord is entitled to prejudgment interest because it is necessary to make his compensation complete." The Federal Circuit vacated the trial court's decision and remanded for a new damages determination.

While it will be interesting to learn how the trial court resets the sum that the Postal Service will be required to pay Gaylord for nonpermitted use of The Column images, a much more fundamental question presents itself. Why must the government ever be required to pay for use of the image of a beloved memorial, particularly when the memorial was undertaken pursuant to federal legislation, involving federal money, located on federal ground, and depicting federal military personnel in U.S. sponsored military action? There is no question that Frank Gaylord's creativity and artistic talents resulted in a magnificent war memorial honoring brave wounded, dead and missing military personnel. But why did the government lawyers and procurement staff not include a perpetual copyright license or, better yet, a copyright release to the federal government for use of The Column?

The Branding Message From Leonard Lauder

The International Trademark Association (INTA) annual meeting is occurring this week in Washington, DC. Providing the key note address this year was Leonard Lauder, Chair Emeritus and son of his company's namesake Estée Lauder. Leonard's company sells such well-known brands as Estée Lauder, Clinique and Aramis, enjoying annual world-wide revenue in excess of $7 billion. The messages provided by Leonard Lauder to the assembled trademark practitioners were profound:

• Brands stand for a promise between the product and the consumer. Consumers come to know a product by this promise. Does a brand adequately protect this promise?
• Companies must seek a broad view of what constitutes a brand. A brand is not only a product name, but also product color, design, packaging and a domain. Have all of these brand elements been protected?
• A company's intellectual property counsel must be involved in licensing and transactional negotiations. This is particularly true in that IP impacts so many aspects of a company's product and brand.
• The image of a company's product can be key to product success because it is the image that sells.

One element that Leonard did not mention, but that was presented during the course of INTA's educational offerings, is the sobering reality that over 50% of people under 20 years of age look to social media for brand information. As such, and to the above important branding issues addressed by Leonard Lauder, it should be asked whether a company's brand is adequately being developed on-line and in social media.

The Old False Marking Statute Is Dead -- Really, Truly Dead

Prior to the recent amendments to the U.S. Patent Act, it became common for anyone to bring a claim in federal court accusing a manufacturer of mislabeling based on false patent marking. Former section 292 of the Patent Act allowed anyone to sue for up to $500 per item when a patent number was falsely applied to a product, or on advertising for a product. Numerous lawsuits erupted claiming $500 for hundreds of thousands of items bearing false patent numbers. But this is now behind us with the recent patent amendments contained in the America Invents Act. The present section 292 no longer allows anyone to bring a claim for false patent marking. Now, only a plaintiff who suffers a competitive injury caused by the false marking is permitted to sue.

Congress made the amendment retroactive to pending cases, and the retroactive application is made clear in the Federal Circuit's new decision in Rogers v. Tristar Products, dismissing a pending false patent marking claim. In Rogers, the plaintiff sought $500 per falsely marked item but conceded that he was not a competitor to Tristar Products and did not suffer a competitive injury. He argued, nonetheless, that the amendments to section 292 should not be made retroactive because, to do so, constitutes a governmental taking of his litigation rights in violation of the Fifth Amendment. The Federal Circuit quickly disposed of Roger's argument, pointing out that a litigant does not have a vested right in a statutory-based claim until entry of final judgment. Statutory amendments can be made retroactive so as to negatively impact pending litigation. The Federal Circuit observed that Congress had a real good reason to make the section 292 amendments retroactive: to protect companies from having to expend resources to defend themselves from claims that they intentionally sought to harm consumers.

"By making the False Marking Act amendments retroactive, Congress was in significant part attempting to reduce the litigation expenditures in the large number of complaints filed but not yet subject to final judgment. 

* * * 

This was a legitimate justification * * *."

Recalling that the former false marking statute prohibited the fraudulent use of false patent markings, the Federal Circuit's new Rogers decision confirms Congressional elimination of an important tool preventing fraud on consumers.

The Value Of A Student-Athlete's Jersey

LaMichael James has been a college football star at the University of Oregon, and will be drafted pretty high in this week's NFL draft. The University of Oregon is doing spring cleaning this week. What do these two things have in common?

The University of Oregon has a lot of excess football gear in storage that it is trying to get rid of. This makes perfect sense since the UO football team wears an assortment of jerseys, pants, helmets, socks and shoes in different color and style combinations. Images displaying a wide assortment of the "can't figure out what to wear" team is located here. So, with all of this stylish apparel, is it any wonder that the team needs to clear out its cupboards of old gear so as to make room for this fall's new fashions? Of course not. Who wouldn't?

So, the University of Oregon is auctioning off the jerseys and other equipment worn by players, including well-known NFL draft-eligible players such as LaMichael James. The gear auction is happening now at oregonauthentic.com. Some of the LaMichael James gear is commanding an auction price in excess of $600. And we know that the gear was genuinely worn by these famous players because the website oregonauthentic.com says so. The gear is Oregon authentic!

All of which caused LaMichael James to go onto Twitter recently and inquiry "How much do I get?" Good question. Most likely, NOTHING.

Most states in the U.S. have some form of right of publicity law that protects a person's image and persona from commercial appropriation by third parties. The states of California and Washington, each bordering Oregon to the south and north, have right of publicity laws. But not Oregon. Nope. Oregon is one state that does not recognize a person's right of publicity. A person who wants to protect their image or persona from crass commercial appropriation by another without permission is basically out of luck in Oregon. If LaMichael James played football at a school in California or Washington -- heaven forbid! -- he would certainly have the ability to call up the athletic department and request his cut of the proceeds from the auction of his worn and valuable jersey. But because he played in Oregon, and because the appropriation of his persona is occurring in Eugene and not in Seattle or LA, he gets nothing.

Let's be clear. The reason the UO athletic department is holding an auction of LaMichael James' jersey, together with the gear of a lot of other well-known players, is because these worn jerseys represent a gold mine to the school. These worn jerseys have no inherent value beyond the reasonable value that any used apparel might bring in a thrift store. But because these jerseys were worn by well-known college football stars, there is extra value to be gained. These jerseys were sweat stained. They were put on, tugged at, yanked, tackled, rolled on the turf and otherwise abused during the course of athletic play by college football stars. The public is offering to pay extra for this gear because of the star-association with these players.

So, the UO athletic department may end up pocketing hundreds of extra dollars for each auctioned item rather than the lower mark-up that it usually gets from retail sales of new gear. The extra margin exists because of the player. The skill and renown of the player created this extra value. These players, such as LaMichael James, paid their dues to the school, left the school and its football program, and are now free citizens who should have the ability to control their fame, their name, their persona and their innate value.

But not in Oregon.

A Grand Dame at 100

A ball park constructed on cheap land in a backwater area of Boston has become over the past 100 years a national treasure. Boston's Fenway Park hosted its first professional baseball game on this date 100 years ago: April 20, 1912. Then, the Boston Red Sox beat the New York Highlanders (later renamed the Yankees) 7 - 6 in 11 innings.

There aren't many things that survive and remain useful for 100 years. Many large, modern ballparks have been constructed in other towns that are sterile and uninspired (e.g., the old Riverfront Stadium in Cincinnati and the ugly Kingdome in Seattle, now each thankfully torn down and replaced). Many recent parks have gone for the retro look (Baltimore's Camden Yards started this trend twenty years ago). But Fenway doesn't need the retro look -- it is retro! Indeed, its foul lines are now too short, its seating capacity provides a challenge for last minute ticket buyers and parking stinks. But it's a good thing to appreciate oldness. Not everything old needs to be destroyed and rebuilt. Sometimes old things, like the U.S. Constitution, stand the test of time.

A Second Bite Of The Patent Apple

The Supreme Court ruled today that inventors whose patent applications are denied by the PTO, and by its Board of Patent Appeals and Interferences, can either appeal the denial to the Federal Circuit or can institute a new civil action in the district court against the PTO Director. In Kappos v. Hyatt, the Supreme Court expressly permits a do-over by allowing a patent applicant to present new evidence in a district court proceeding, and requiring the district court to review all evidence de novo.

For these reasons, we conclude that there are no limitations on a patent applicant’s ability to introduce new evidence in a §145 proceeding beyond those already present in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Moreover, if new evidence is presented on a disputed question of fact, the district court must make de novo factual findings that take account of both the new evidence and the administrative record before the PTO.

The basis of today's Supreme Court decision is §145 of the Patent Act, permitting a patent applicant who is refused a patent registration by the Board of Patent Appeals and Inferences to either appeal the administrative denial to the Federal Circuit or to maintain a new action against the PTO Director.

35 U.S.C. 145 Civil action to obtain patent.
An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the District of Columbia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board of Patent Appeals and Interferences, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.

This opportunity to retry in district court a case, with new evidence and de novo review, is certainly rare. But today's decision may open the litigation floodgates for inventors whose patent applications are denied by the PTO administrative process. That is, rather than appeal directly to the Federal Circuit -- which is not permitted to receive new evidence or to evaluate the record de novo -- the inventor can now bring a new proceeding with new evidence, obtain independent and de novo review, and thereafter seek appellate review with the Federal Circuit based on the new evidence and new argument. In effect, the administrative proceeding before the PTO will become mere trial preparation for the more significant district court case.

Misuse Of Your Employer's Computer System Is Not A Crime In The U.S. West Coast

The Ninth Circuit has confirmed what many employees have understood for a long time: while it may be beyond inappropriate for an employee to use access to a workplace computer in a way that misuses the employer’s confidential data, it is not a crime.

In my post from May 2, 2011, and again on December 27, 2011, I discussed the Ninth Circuit's criminal case of U.S. v. Nosal. The Justice Department accused Mr. Nosal under the Computer Fraud and Abuse Act (CFAA) of aiding and abetting the criminal misuse of his employer’s computer.

Nosal’s conduct was absolutely outrageous, assuming the allegations against him are correct. The Ninth Circuit explains:

David Nosal used to work for Korn/Ferry, an executive search film. Shortly after he left the company, he convinced some of his former colleagues who were still working for Korn/Ferry to help him start a competing business. The employees used their log-in credentials to download source lists, names and contact information from a confidential database on the company's computer, and then transferred that information to Nosal. The employees were authorized to access the database, but Korn/Ferry had a policy that forbade disclosing confidential information. The government indicted Nosal on twenty counts, including trade secret theft, mail fraud, conspiracy and violations of the CFAA, The CFAA counts charged Nosal with violations of 18 U.S.C. §1030(a)(4) for aiding and abetting the Korn/Ferry employees in “exceed[ing their] authorized access” with intent to defraud.

The Ninth Circuit wrestled with the question whether the CFAA criminalizes the conduct of an employee who is not a hacker but merely misuses employer data. The Court determined that Congress intended the CFAA to prevent hacking – the unauthorized access to a computer system – and that the CFAA does not address the unauthorized use of data taken from a properly accessed computer system.

Minds have wandered since the beginning of time and the computer gives employees new ways to procrastinate, by g-chatting with friends, playing games, shopping or watching sports highlights. Such activities are routinely prohibited by many computer-use policies, although employees are seldom disciplined for occasional use of work computers for personal purposes. Nevertheless, under the broad interpretation of the CFAA, such minor dalliances would become federal crimes. While it is unlikely that you’ll be prosecuted for watching Reason.TV on work computer, you could be. Employers wanting to rid themselves of troublesome employees without following proper procedures could threaten to report them to the FBI unless they quit. Ubiquitous, seldom-prosecuted crimes invite arbitrary and discriminatory enforcement.

This decision of the Ninth Circuit is in line and consistent with similar interpretations of the CFAA from several district courts in New York, Arizona, Georgia and Maryland. However, the Eleventh Circuit, the Fifth Circuit and the Seventh Circuit have seen things differently, extending the criminal reach of the CFAA to use restrictions, even when hacking is not involved.

Should most people care about how the CFAA is interpreted and applied? Is this a real problem, really?

For example, it's not widely known that, up until very recently, Google forbade minors from using its services. See Google Terms of Service, effective April 16, 2007—March 1, 2012. §2.3, http://www.google.com/intl/en/policies/terms/archive/20070416 (“You may not use the Services and may not accept the Terms if … you are not of legal age to form a binding contract with Google …”) (last visited Mar. 4, 2012). Adopting the government’s interpretation would turn vast numbers of teens and pre-teens into juvenile delinquents—and their parents and teachers into delinquency contributors. Similarly, Facebook makes it a violation of the terms of service to let anyone log into your account. See Facebook Statement of Rights and Responsibilities § 4.8 http://www.facebook.com/legal/terms (“You will not share your password, … let anyone else access your account, or do anything else that might jeopardize the security of your account.”) (last visited Mar. 4, 2012). Yet it’s very common for people to let close friends and relatives check their email or access their online accounts. Some may be aware that, if discovered, they may stiffer a rebuke from the ISP or a loss of access, but few imagine they might be marched off to federal prison for doing so.

Note to the world: any comments to this post must only contain nice thoughts.

Justice Kennedy: Say It Ain't So

This blog deals with intellectual property and not the present legal issues relating to Obamacare, nor the limits of Congressional power under the Commerce Clause. And so, to comment on last week's oral argument at the Supreme Court regarding Obamacare, the following tie-in with the U.S. Copyright Act is offered.

Focusing on the one justice who may end up writing the majority opinion, Justice Kennedy made the following comment:

"And here the government is saying that the Federal Government has a duty to tell the individual citizen that it must act, and that is different from what we have in previous cases and that changes the relationship of the Federal Government to the individual in the very fundamental way."

Examples have been provided recently of instances in which the U.S. government requires citizens to act, or risk adverse consequences. It has been pointed out that citizens are required to contribute to Social Security and Medicare even if they don't elect to do so. It's mandatory.

So, here is the IP tie-in that may help Justice Kennedy understand that his observation is not rationally based. The U.S. Copyright Act, at Section 407, requires that all copyright owners shall deliver -- free of charge -- to the Library of Congress two best copies of a published work within three months of publication, or risk paying a fine. This obligation to donate two copies of a work applies whether or not the copyright owner seeks to register the copyright. This obligation applies to everyone who owns a work published in the U.S. The purpose of this "donation" requirement, of course, is to assist the Library of Congress in developing its collection. 

Congress certainly has no problem requiring a tribute of two free copies of a work for its library -- with no quid pro quo to its citizens, other than a nicely developed federal library. And no one has previously expressed the view, as best as can be determined, that this donation requirement fundamentally changes a citizen's relationship with government. 

Justice Kennedy, as you think through the issue of Obamacare, the Commerce Clause, and the power of Congress, reflect that there are many onerous obligations to act imposed on citizens by government, but ultimately Congress gets to decide if these are publicly beneficial.

Golan v. Holder: Views on Partial Restoration

This past October 5, the Supreme Court heard oral argument in Golan v. Holder. This copyright case seeks to test the ability of Congress to grant copyright protection to foreign works that previously were deemed to be free to the U.S. public -- that is, in the U.S. "public domain."

Petitioner Larry Golan is a symphony conductor and a professor of the University of Denver's Lamont School of Music. Other petitioners are people who claim to rely on the free appropriation of work in the U.S. public domain for their livelihood. The petitioners argue that Congress did not have the power to enact the Uruguay Round Agreements Act of 1994. This legislation added new section 104A to the U.S. Copyright Act, thereby enabling the owner of an eligible foreign work that was in the public domain in the U.S., but still protected under copyright in the foreign source country, to obtain a "restored" U.S. copyright protection in the foreign work. This right to restore a U.S. copyright to a previously "free" foreign work commenced as early as January 1, 1996 if the foreign source country adhered to one of several copyright treaties (the Berne Convention, WIPO Copyright Treaty) or was a WTO member, or if the country was designated in a Presidential proclamation.

Larry Golan complains that prior to January 1, 1996 he was able to perform Prokofiev's Peter and the Wolf and Shostakovitch's Symphony 14, plus many other valuable works, freely -- without paying any royalties. This was so because many great works were created in foreign source countries at a time when the foreign source countries did not adhere to a copyright treaty. As such, these works were not eligible for protection under U.S. copyright law at the time the works were created or at the time the works were introduced into the U.S. Indeed, the current Copyright Act continues to require national eligibility. Current section 104 of the U.S. Copyright Act excludes published works from U.S. copyright protection unless on the date of publication one of the authors was a national or domiciliary of the U.S. or of a treaty country, or a stateless person, or the work was first published in the U.S. or a treaty country, plus other coverage options. So, authors first publishing their work in Ethiopia, Afghanistan, Iran, Iraq or other sourcing states who are not treaty, WIPO or WTO members continue to have their works excluded from copyright protection in the U.S. These works remain free to use today. A complete listing of countries, together with their copyright treaty status, is provided by the U.S. Copyright Office.

There are two primary types of foreign works that are subject to copyright restoration under Section 104A. The first type of work is one that was lost to the public domain because of a mess up. That is, the work is a foreign work that has copyright protection in its source country that is a copyright treaty country, but the owner of the work failed to comply with U.S. formalities. The most common formalities include the obligation to make a timely renewal filing and to include a copyright notice on the published work. The second type of work restored under Section 104A involves a foreign work that was not previously permitted to be copyright protected in the U.S. because of lack of national eligibility. If by January 1, 1996 the foreign source country was a treaty, WIPO or WTO member then this second type of foreign work could receive the benefit of U.S. protection for the first time ever.

Getting back to Larry Golan for a minute, Larry argues that he should be free to use all foreign works in the public domain without paying a royalty notwithstanding how the work came to be in the U.S. public domain in the first place. He argues that once a work is in the public domain, it remains in the public domain forever. To borrow from a religious argument, once a soul arrives in hell it remains in hell forever. This is a stark analogy to be sure, but the impact of Golan's argument on Prokofiev's copyright successors is also stark. Golan does not recognize the possibility of something less stark; such as a temporary or transitional state of purgatory where a soul resides for a period of time subject to removal.

[If the religious analogy is too harsh, then consider a comparable analogy pertaining to a person's presence in jail. A person can be present in jail in one of two ways: by placing himself or herself in jail upon commission of a crime or by being born in jail. Society has completely different interests in a person's presence in jail depending how the person came to be in jail in the first place. It seems to me that we should consider why a person is present in jail before we throw away the key.]

For Golan, the state of copyrightlessness is all or nothing. Either there is a copyright or there is not, he argues, and if there is no copyright then there cannot ever be a copyright. Hence, according to Golan, he should be permitted to conduct Peter and the Wolf, and other nonprotected works, freely without royalty or other restriction.

I do not share Golan's all or nothing views. Indeed, I have two separate views of the restoration of U.S. copyright in foreign works. I have one view as to restored foreign work that was eligible for protection in the U.S. but lost protection due to the owner's mess up -- failure to comply with formalities. I have another, opposite view as to restored foreign works that never previously had the right to U.S. protection.

If a foreign work from a treaty, WTO or WIPO member source country was eligible for copyright protection in the U.S., but if the work lost this protection for failure of the copyright owner to comply with the U.S. recording and notice laws, then I have little sympathy for the resulting public domain status. For the same reason that every person, notwithstanding his or her country of origin or immigration status, who drives a motor vehicle on a U.S. highway is required to comply with U.S. driving laws, every copyright owner was required to comply with U.S. copyright law formalities prior to January 1, 1996. What is good for a U.S. citizen should be good enough for a non-citizen. Everyone should be treated equally. If a foreign citizen does not know the U.S. rules of the road prior to driving in the U.S., then they should read up on the law. If the owner of a foreign work does not know about U.S. copyright formalities, then retain legal counsel or borrow a library book and learn about U.S. copyright law. But it is not appropriate in my view for the owner of a foreign work to bring the work into the U.S. in order to take advantage of the U.S. market and U.S. law, but then complain that the law is too harsh when it comes to failure to comply. To the extent that a foreign work was eligible for copyright protection in the U.S., but lost the protection due to the copyright owner's own conduct, then this type of work should not be given a free pass out of the public domain jail.

A foreign work that was never eligible for U.S. copyright protection, however, is in a completely different circumstance than a work that was eligible but lost protection due to failure to comply with U.S. law. Prokofiev never had an opportunity to obtain U.S. copyright law protection for Peter and the Wolf until January 1, 1996, with the addition of Section 104A to the Copyright Act. Prokofiev never lost pre-existing protection as a result of a mess up on his part. He never had protection -- ever -- because Congress never extended protection to him or to his work created in the early Twentieth Century in the Soviet Union.

I submit that the U.S. public domain should not be viewed as an end in and of itself, but rather as a condition that exists based on how a work is protected, or not protected. If a work is never protected under U.S. copyright, then the lack of any protection is not a condition of being in the "public domain" as much as a condition of non-protection. [The concept of public domain and the concept of non-protection are admittedly nuanced and, in any event, live close to a common border, but they indeed can live separate lives.] In this event, the "public domain" is not a protectable property interest owned by other users but is merely a present condition caused by a lack of protection. Congress has authority in my view to add protection where none ever existed. In this case, the lack of protection is more akin to being born in jail. This is particularly so in that the owner of the work has done nothing to cause the loss of protection. On the other hand, if there previously was protection to a foreign work, but if protection was lost due to a failure on the part of the copyright owner, then this voluntary failure to adhere to required formalities creates a permanent jail -- abandonment to the public domain.

Furthermore, the expectations of users differ depending on how a work came to be placed in the public domain. If a free user knew that the work was protected at a point in time but then lost protection due to faulty conduct by the work's owner, then the free user can be said to have a firmer expectation of continued free use. This differs from the expectation of a free user who knows that a work was never protected through no fault of the work's author. This type of free user expectation is more transitional. Enjoy it while you can, but it may not last.

Public domain need not be considered as an all or nothing proposition. If a copyright owner voluntarily placed a work into the public domain by failing to comply with formalities, or if the copyright terminated for other technical reasons, then the copyright should not be revived. But if an owner of a work never had protection to begin with, then the right to protection should begin at some point. January 1, 1996 is as good a start date as any.

It will definitely be interesting to see how the Supreme Court rationalizes the common restorative treatment that Section 104A provides to two completely different "public domain" conditions. My prediction is that Section 104A will be found to be constitutional as to restorations based on the lack of national eligibility, but unconstitutional as to restorations based on failure to comply with formalities.

James Joyce and Stephen Dedalus

Today is the 95th anniversary of the first publication in the United States in 1916 of the James Joyce classic Portrait of the Artist as a Young Man. The novel features the Joyce alter ego Stephen Dedalus in a semi-autobiographical examination and rejection of traditional Irish values. The novel is ranked by Modern Library as the third most important English novel. Joyce's other great classic, Ulysses, is ranked No. 1.

James Joyce, c. 1915

Ghost Rider Writer Sues Marvel Comics - And Loses

Yesterday’s decision by Judge Katherine Forrest of the southern district of New York federal court provides a glimpse of insight into the development and ownership of popular comic book characters. The case pits Gary Friedrich, the creator of the Ghost Rider character, against Marvel Comics, publisher of the Ghost Rider comic books.

Ghost Rider is a super hero with a skeletal head emitting fire, riding a fire emblazoned motorcycle. The character became popular, spawning video games and a 2007 Nicholas Cage movie (also starring Eva Mendes and Sam Elliot).

According to the court, Friedrich conceived and developed the Ghost Rider super hero character in the early 1970s, including additional characters of Johnny Blaze, the Ghost Rider’s alter ego, Roxanne Simpson and Crash Simpson. Friedrich conceived and wrote the text for the comic book featuring these new characters. Others also wrote and contributed to some of the episodes.

Friedrich sued Marvel for various causes including copyright infringement. The court easily found that Friedrich did not have a copyright claim in that during the period of time that he developed the Ghost Rider characters, Marvel paid Friedrich by check containing an assignment legend. Friedrich acknowledged that he endorsed the checks, and that the checks "said something about by signing over the check I gave over my rights to * * * Marvel." And then in 1978, Friedrich signed a written assignment document by which he expressly granted "to Marvel forever all rights of any kind and nature" in the work he created.

The court pointed out that whenever anyone endorses a check subject to a condition, he accepts the condition. As such, any right that Friedrich may have had in the Ghost Rider characters were assigned by virtue of his endorsement of the checks containing the assignment language. Further, the court observed that the 1978 assignment "undoubtedly conveyed whatever renewal rights he [Friedrich] may have retained, if any."

So, the bottom line is that endorsing a check with assignment language has consequences, as does the signing of a general assignment document. If you are a graphical artist or writer who creates highly valuable characters, do not endorse checks containing assignment language unless you intend to assign your rights. And do not sign a general assignment document unless you intend to fully assign all rights. If your intent is to assign only certain limited rights, and to retain the balance of the rights, then make certain that the assignment language clearly describes what is being assigned and what is being retained.

More information about Marvel Comic's Ghost Rider (Johnny Blaze) character is available here.

Resale of Artwork May Yield New Fees to Original Artists

Last week, Congressman Jerrold Nadler from New York and Senator Herb Kohl of Wisconsin introduced into the House and Senate proposed legislation that would effectively tax the resale of valuable works of visual arts (consisting of original and limited edition photographs, paintings, drawings, prints and sculpture), and harm the business of large auction houses, including Sotheby's and Christies. A copy of the jointly introduced bill is set out here. The proposed legislation would compel the payment of 7% of the sale price of visual art sold at auction following the first sale by the original artist, provided that the art sells at auction for at least $10,000, and provided that the auction house sold at auction during the previous year more than $25 million of visual art. Failure to pay the 7% would permit the copyright owner to sue for infringement and recover statutory damages up to $150,000. The fee would be payable to an artist agency with authority to pay a portion of the collected fee to the original artist, or the artist's estate, and a portion to non-profit art museums to help fund purchases of works of visual art.

This proposed legislation borrows from the European concept of droit de suite which permits a form of resale fee to the original artist. It also borrows from a similar California statute that authorizes resale royalties of art auction sales made in California (the California art resale fee is only 5%). Here is the link for the Resale Royalty Act, Cal. Civil Code §986.

It seems to me that there are some issues to be considered with the proposed legislation:

1. Since failure to pay the 7% resale fee subjects the auction house to an infringement claim, the auction house can perhaps avoid paying the fee if it has no concerns about being sued for infringement. This would be the case if the original artist waived or assigned the copyright interest in the visual art to the first purchaser, and if the waiver or copyright interest is transferred as part of each further resale of the art. In this case, there would not be a likely plaintiff with standing to bring an infringement lawsuit if the 7% is not paid. Indeed, and particularly as to lesser known artists, this proposed legislation may encourage auction houses to obtain a "compulsory" assignment of an artist's copyright interest as part of the first sale of the artwork.

2. The owner of a valuable work of visual art can avoid the 7% tariff by auctioning the work at a small auction house with preceding year sales of less than $25 million. Indeed, this legislation may encourage the development of a greater number of small auction houses specializing in a few high value pieces. One potential problem, though, is that the smaller auction houses may not generate sufficient revenue to pay for errors and omission insurance covering the risks associated with the evaluation, valuation and transfer of valuable high-end art.

3. One portion of the proposed legislation provides that visual art would not be subject to the copyright notice provisions of Section 401 of the Copyright Act. Section 401 as presently written does two things. First, it provides that a copyright notice is discretionary, not mandatory (although, prior to 1989, copyright notice was mandatory). Second, Section 401(d) provides that if the copyright notice is employed then an infringer's evidence of innocence shall be given no weight in an infringement trial. So, for new works created after 1989, the use of a copyright notice makes practical litigation sense in order to receive the evidentiary benefit of Section 401(d). Avoiding this evidentiary benefit makes no sense.

4. The task of keeping track of artists and their heirs may be difficult. The Copyright Office, copyright lawyers and copyright users have collectively encountered considerable difficulty with "orphan works." The lack of an obligation under these new bills to compel the filing of contact information for visual art artists will almost certainly cause the loss of resale payments that may come due to original artists or heirs, who may have long forgotten about a lost piece of art.

No progress has yet been made to these new bills and, given the election uproar expected in 2012, it is not completely clear how well these new bills will advance. Of further note, the artist community has not yet joined together to provide a unifying voice in favor of these bills. We will see how all this works out.

2011: An Intellectual Property Year In Partial Review

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

Georgia State University: College Course Electronic Packets ~

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

Appropriation Art on Appeal: Cariou v. Prince ~

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

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

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

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

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

Betty Boop: Lost in the Public Domain ~

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

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

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

Criminalizing an Employee's Computer Use ~

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

Don't Remove That Credit! ~

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

Foreign Internet Posting Triggers U.S. Copyright Law ~

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

A New York State of Mind ~

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

Hot News is now Cold ~

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

More Odds and Ends ~

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

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

Happy New Year, everyone.

The Copyright Office Needs Google

The U.S. Copyright Office needs help. Like an old library, the Copyright Office maintains a card catalog indexing system for its pre-1978 records. And the Copyright Office has a lot of cards, over 46 million. These index cards are housed in wooden drawers contained within row after row of wooden boxes. Updates to the cards have been made in pen directly onto the cards. Recognizing that this type of indexing system has not been in fashion for some time, the Copyright Office is now attempting to join the digital age by scanning its index cards and somehow creating a database of pre-1978 filings going back to 1790.

Maria Pallante explains it this way: "Have you ever attempted to build an electronic index and searchable database of a complex and diverse collection of 70 million imaged historical records? Neither have we. One of the largest card catalogs in the world, the U.S. Copyright Office card catalog comprises approximately 46 million cards."

The Copyright Office has established a blog to allow public comments and suggestions on how best to digitally index and document its pre-1978 records. It also provides updates on its digitization goals and status.

Note to the Register, call Google.

The Time For Mandatory Patent Assignment Recording Is Now

Something strange occurs when the U.S. Patent Office issues a patent monopoly; it does not necessarily know the identity of the monopoly recipient. U.S. patent applications are required to identify the inventors of the invention pursuant to Section 116 of the Patent Act, but they are not required to identify the owner of the application or the resulting issued patent.

The lack of an accurate database of owners of issued patents can be troubling for the public. The absence of readily accessible patent ownership information can inject an unacceptable level of mystery and risk into patent clearances and chain-of-title searches. This is particularly true if the ownership interests in a patent become fragmented among several parties, including lien holders or other creditors.

Further support for an accurate patent ownership database comes from the “bona fide purchaser for value” rule incorporated into Section 261 of the Patent Act. This section confirms that an unrecorded patent assignment or grant is void as to a subsequent purchaser or mortgagee for value and without notice of the unrecorded assignment or grant. A voided assignment can, in turn, create undesirable liability on the part of an assignor to a patent acquirer.

But, good news. The U.S. Patent Office is presently seeking comment on several rules that would mandate the disclosure of any patent assignment. Specifically, the PTO is proposing to require that disclosure of the current assignee be made:

1. At the time the patent application is filed, 
2. At the time of payment of the patent issue fee, 
3. Any time an assignment is made after the application filing date, 
4. Any time an assignment would cause the loss of entitlement to the small entity fee, 
5. In order to obtain a discount of maintenance fees. 

Provide your comments regarding the proposed mandatory disclosure of assignments prior to January 23, 2012. Send your e-mail comments to saurabh.vishnubhakat@uspto.gov. More information regarding mandatory assignment filing is available in the Federal Register.

JFK: 11-22-11

John Fitzgerald Kennedy

May 29, 1917 - Nov. 22, 1963 (12:30 p.m. CST, Dallas, Texas)

"So let us begin anew—remembering on both sides that civility is not a sign of weakness, and sincerity is always subject to proof. Let us never negotiate out of fear. But let us never fear to negotiate.

Let both sides explore what problems unite us instead of belaboring those problems which divide us."

Inaugural Address, Jan. 20, 1961

Another Veterans Day: "Sweet and Fitting"

DULCE ET DECORUM EST

by WILFRED OWEN

[Written 1917, published posthumously 1920]

Bent double, like old beggars under sacks,

Knock-kneed, coughing like hags, we cursed through sludge,

Till on the haunting flares we turned our backs

And towards our distant rest began to trudge.

Men marched asleep. Many had lost their boots

But limped on, blood-shod. All went lame; all blind;

Drunk with fatigue; deaf even to the hoots

Of tired, outstripped Five-Nines that dropped behind.

Gas! Gas! Quick, boys!---An ecstasy of fumbling,

Fitting the clumsy helmets just in time;

But someone still was yelling out and stumbling,

And flound'ring like a man in fire or lime...

Dim, through the misty panes and thick green light,

As under a green sea, I saw him drowning.

In all my dreams, before my helpless sight,

He plunges at me, guttering, choking, drowning.

If in some smothering dreams you too could pace

Behind the wagon that we flung him in,

And watch the white eyes writhing in his face,

His hanging face, like a devil's sick of sin;

If you could hear, at every jolt, the blood

Come gargling from the froth-corrupted lungs,

Obscene as cancer, bitter as the cud

Of vile, incurable sores on innocent tongues,---

My friend, you would not tell with such high zest

To children ardent for some desperate glory,

The old Lie: Dulce et decorum est

Pro patria mori*.

[* How sweet and fitting it is to die for one's country.]

The Silence of Veterans Day

In Flanders fields the poppies blow

Between the crosses, row on row,

That mark our place; and in the sky

The larks, still bravely singing, fly

Scarce heard amid the guns below.

We are the Dead. Short days ago

We lived, felt dawn, saw sunset glow,

Loved and were loved, and now we lie,

In Flanders fields.

Take up our quarrel with the foe:

To you from failing hands we throw

The torch; be yours to hold it high.

If ye break faith with us who die

We shall not sleep, though poppies grow

In Flanders fields.

By Lt. Col. John McCrae, written on May 3, 1915 upon witnessing the death in combat of his good friend Lt. Alexis Helmer, 22 years old.

Flanders Field American Cemetery and Memorial, Belgium

Nike - Joe Paterno - Child Abuse - Common Sense

The Joe Paterno Center on Nike's campus outside of Portland houses Nike's child day care facility for its staff. The Oregonian reports this morning that Nike has no present intention to change the name on this building, notwithstanding the outrageous child abuse controversy presently surrounding Paterno and his football program at Penn State. Question for Nike: Is it really appropriate to have Paterno's name associated with a child care facility? Put his name on a sporting field, a gymnasium, the snack lounge, anyplace - but not on a child care facility.

The Non-Fixed, Illusional Copyright

CTV published a report today about magic troubles involving the Dutch illusionist, Hans Klok The article explains that Klok was found liable by a Dutch court for copyright infringement of a magic trick developed by his former assistant, Magician Rafael van Herck. The magic trick that is the center of the litigation is described as involving a fight with a stubborn butler, reaching through his body to get a glass of water, and capped by smacking off his head.

Apparently, you need to see it to appreciate it.

The article explains that the Dutch court determined that the magic trick is copyright protectable because the "combination is unique."

Hans Klok

The Dutch decision granting copyright protection to a magic trick addresses an interesting issue under U.S. copyright law. That is, can a magic trick (or any performance art, for that matter) be protected by copyright? The U.S. Copyright Act, of course, establishes fixation as a central tenet of copyright. "Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression * * *." 17 U.S. §102(a). So, the lack of fixation in a tangible medium of a publicly performed magic trick causes any thought of copyright protection to disappear up the sleeve before our very eyes.

But wait.

While there may not be any copyright protection under federal copyright law, there may be protection under a particular state's copyright law. The U.S. Copyright Act preempts any conflicting state law equivalent to "the exclusive rights within the general scope of copyright." But federal preemption exists only as to "works of authorship that are fixed in a tangible medium of expression." 17 U.S. §301(a). There is no preemption under federal law for works not fixed. 17 U.S. §301(b).

Indeed, California has its own version of copyright protection for non-fixed works.Under Cal. Civ. Code §980(a)(1), the state of California grants copyright-like protection to an original work of authorship that is not fixed in a tangible medium of expression. This copyright-like coverage would certainly appear to extend to the public performance of a magic trick, particularly a trick that the Dutch court determined is unique. Indeed, what can be more non-fixed than an act of illusion?

Now you see me, now you ......................................

Where, Or Where, Did The Copyright Litigation Go?

The federal litigation statistics published by the Office of U.S. Courts reveals striking information about the litigation climate for copyrights -- it's disappearing. For several years now, the number of filed copyright cases has been dwindling. The following table contains new copyright litigation filing data from U.S. Courts statistics for the past five years (no stats yet for 2011). There has been a consistent reduction in the number of new copyright cases filed with the federal courts during that time, representing a cumulative drop in new filings since 2006 of 63.85%.
 

Year	New Copyright Cases Filed	% Change From Prior Year
2006	5488	--
2007	5074	-7.54%
2008	3346	-34.06%
2009	2780	-16.92%
2010	1984	-28.63%
Five year change		-63.85%

There may be different reasons for this trend, but the U.S. Copyright Office believes that the cost of copyright litigation, particularly for the small litigant, is one significant contributing factor. As a result, the Copyright Office is undertaking a study of the possibility of establishing a small claims resolution process for certain copyright claims. Possibilities include establishing a small claims department within the federal courts, providing for a small claims procedure through the Copyright Office, or some other small claims process. The Copyright Office wants to hear from interested persons on this issue. Its website provides information on this study, together with a link to provide comment. The comment period runs through January 16, 2012.

Odds and Ends: Oklahoma City Thunder; Blown Insurance Coverage; Marybeth Peters

Some odds and ends for Friday:

No Copyright Infringement By The Oklahoma City Thunder Basketball Team For "Go Thunder." The NBA team and its owner were sued for copyright infringement by the composer of a copyright registered song containing the words "Thunder Up," "Go Thunder," and "Let's Go Thunder," among other phrases. The composer argued that the Thunder cheer group, the team mascot, and members of the crowd often violated his registered copyright by using these words while chanting during Thunder games, plus in advertising and on banners. The composer sought up to 30% of the Thunder net gross as compensation. But, alas, the court gave the composer a slam dunk facial, pointing out that words and short phrases, including slogans, are ordinarily not copyrightable, that these common cheers do not contain minimal creativity supporting copyright protection, and that the idea embodied in these cheers merge into the common expression of the cheers. The court pointed out that merely because a copyright registration issues does not mean that there is copyright protection. Syrus v. Bennet (10th Cir., Nov. 3, 2011).

How To Void Trademark Insurance Coverage. Rockland was sued for trademark infringement, told its insurance company, GAIC, about the lawsuit some seven weeks later, and forwarded a copy of the papers to GAIC after about three months. The Second Circuit held that the obligation to provide immediate or prompt notice of claims to an insurer is breached when the purported covered party waits seven weeks to provide oral notice of a claim and three months to provide written notice of a claim. Rockland Exposition v. Great America Ins. Co. (2d Cir., Nov. 2, 2011).

Marybeth Peters Is Now A Part Of The Public Domain. Marybeth Peters, recently retired as U.S. Register of Copyrights for the past 16 years, has joined the private sector, electing to become a practicing attorney with the Oblon Spivak firm of Alexandria, Virginia. You cannot keep a good copyright lawyer down -- congratulations, Marybeth!

Eliminate Software Patents: The White House Responds

My post of September 27 explained how the White House's We The People website elicited an interesting petition, presently supported by about 15,000 signatures, to eliminate the issuance of software patents. The White House  responded to this petition, and explains its position on software patents. The White House argues that the recently enacted American Invents Act (AIA), and the resulting patent reforms, will reduce the number of overly broad business method patents that may improperly reach into unpatentable areas. The White House further points out that the PTO's renewed emphasis on quality patent review will assist in this effort. Read the entire response provided by the White House and provide your comments as to whether the AIA will reduce the prior level of perceived abuse in the issuance of overly broad method patents.

Ghouls, Goblins and Beer

On this frightful day of ghouls and goblins of all shapes and sizes, let us pause to toast a singularly important individual. Joseph Bramah of Yorkshire, England (1748-1814) on this date applied for his beer engine patent. Bramah was a proficient inventor, having devised the Bramah lock, the hydraulic press, the rotary engine, the first pumper fire truck, and other important inventions during England's Industrial Age. But he will, perhaps, best be remembered for the device that led to frothy suds, the beer engine device that became the precursor to the beer tab. England's Patent Office bestowed Patent No. 2196 on this device. Subsequent adaptations lead to the beer faucet (U.S. Patent No. 325,316, issued Sept. 1, 1885 to E.A. Byrne and J. P. Lenahan), a close cousin to today's beer tap.

There is an additional patent that Bramah obtained that in some circles closely compliments the beer engine. That is, Bramah received an English patent for the flushing toilet in 1778.

So, here's to Bramah. Tonight, let us offer up a toast!

Joseph Bramah (1748 - 1814)

More on the Computer Fraud and Abuse Act

My post of May 5, 2011 discussed the recent Ninth Circuit criminal case of US v. Nosal applying the Criminal Fraud and Abuse Act to actions by an employee that violate an employer's rules of computer usage. Two out of three members of the Ninth Circuit panel determined that an employee's violation of an employer's computer use restrictions can constitute a felony under the CFAA. In effect, the Ninth Circuit's opinion permits a private entity -- an employer -- to define what is or is not criminal liability under the CFAA. Utah District Judge Tena Campbell, sitting by designation on the Ninth Circuit panel, dissented from the majority decision, arguing that if every violation of an employer's computer use rules, including innocuous, personal usage, created felony liability under the CFAA, then the arbitrary application of the CFAA would render the CFAA unconstitutionally vague.

A majority of the rest of the Ninth Circuit must believe that Judge Campbell's view has merit. Last Thursday, the Ninth Circuit entered an order agreeing to rehear the Nosal case en banc. The prior Nosal opinion is no longer valid. More to come.

To Obtain A Trademark Registration, There Must First Be A Trademark

It sounds axiomatic that the registration of a trademark requires the existence of a trademark. Similar to giving birth, a trademark can register only after it exists. Rene Descartes said it best: Cognito ergo sum ("I think, therefore I am").

But some trademark owners claim the right to a trademark when, in fact, there is no trademark. A case in point pertains to the recent decision of the Trademark Trial and Appeal Board upholding the refusal to register the proposed trademark LOCKBACK pertaining to a folding utility knife. The examiner refused to register based on descriptiveness and the TTAB agreed. Indeed the TTAB determined that the proposed mark is generic and pointed to the product packaging provided by the applicant as proof of genericness.

The TTAB observed that the proposed mark is used on the product packaging in a manner that serves to described the product rather than in a manner that serves as a trademark.

The term “Lockback” is used to describe the type of utility knife (i.e., “Folding Lockback Utility Knife”). The term “Lockback” is not set off from the other words with which it is used.  “Lockback” is displayed in the same size, font, and style as “Folding” and “Utility Knife.”  As displayed on the package, consumers would perceive Ser No. 76679933 SHEFFIELD as a trademark, but not “Lockback.”  In this regard, applicant’s use of the federal registration symbol does not transform “Lockback” into a trademark.  See In re Aerospace Optics Inc., 78 USPQ2d 1861, 1864) (TTAB 2006); In re Brass-Craft Manufacturing Co., 49 USPQ2d 1849, 1853 (TTAB 1998); In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) (mere use of the “TM” indicator cannot transform an otherwise unregistrable term into a
trademark). 

The lesson: if you want to register a word as a trademark, then it is necessary to treat the word as a trademark. As instructed by the TTAB regarding the LOCKBACK application:

1. Don't use the proposed mark on packaging to describe the product.
2. Set off the proposed mark on the package so that it looks different from surrounding text. Use different font style, font size or graphics to create a different appearance for the proposed mark than the surrounding text.
3. Do not use another word on the packaging that appears to be the trademark, thereby creating confusion as to the true trademark.
4. Merely putting a TM symbol next to the proposed trademark does not create a trademark.

Cognito ergo sum

PTO To Critique China's Patent Enforcement

Encouraging public insight to pour forth, the PTO has requested comments from inventors regarding personal experiences in enforcing patent rights in China. The PTO will use these public comments to prepare a report on the patent enforcement landscape in China.

The PTO held a series of roundtables in several Chinese cities this past summer to develop experience-based knowledge into enforcement of patent rights in China. The specific topics of the roundtables included:

1. the ability to acquire and enforce utility model and design patents in China,
2. the process of evidence collection and preservation in Chinese courts,
3. the ability to obtain damages and injunctions in Chinese courts,
4. the enforceability of Chinese court orders, and
5. administrative patent enforcement in China.

Now, the PTO is extending an invitation to any member of the public to submit written comments of personal experiences in China dealing with each of the above five patent protection topics.The PTO notice in the Federal Register, published October 17, explains:

To ensure that the USPTO receives a wide array of views, the USPTO would like to invite any member of  the public to submit written comments on China’s patent enforcement system, including, but not limited to, the five specific issues listed above. Examples of firsthand experience using China’s patent enforcement system, and recommendations on ways to improve the system, are encouraged. Based on these comments, the USPTO intends to produce a report that details the patent enforcement landscape in China and identifies any challenges faced by U.S. innovators, together with recommendations for improving the system.

Written comments can be e-mailed no later than November 4 to IP.Policy@uspto.gov, or mailed to Mail Stop OPEA, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 USA, Attention: Elizabeth Shaw.

Creation and Protection of an Actor's Audiovisual Performance Right

As discussed in my August 4 blog post, WIPO has shown a recent and enlivened interest in developing international copyright-based protection for an actor's audiovisual performance. Further to its purpose of protecting performance rights for actors, WIPO has recently announced that it intends to convene a diplomatic conference in 2012 to finalize a treaty protecting the rights of actors in their audiovisual performances.

The preliminary drafts of the proposed WIPO Treaty for the Protection of Audiovisual Performances give the exclusive right in the first instance to actors for the download of their performances by wire and wireless means.The current draft of the treaty provides in pertinent part that "Performers shall enjoy the exclusive right of authorizing the making available to the public of their performances fixed in audiovisual fixations, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them." In other words, the treaty gives actors the exclusive right to control on-demand downloads of movies. As an alternative to granting actors exclusive rights over movie downloads on demand, the proposed treaty allows a contracting party to "establish a right to equitable remuneration for the direct or indirect use of performances."

A proposed amendment to the current draft would permit the transfer of the actor's exclusive right to the producer of the audiovisual work. "Contracting Parties may provide in their national law that once a performer has consented to incorporate his or her performance in an audiovisual fixation, the exclusive rights of authorization * * * shall be owned or exercised by the producer of the audiovisual fixation."

It will be interesting to understand how the proposed international protection of audiovisual performances will play out in the U.S. Under the U.S. Copyright Act, a motion picture or other audiovisual work is deemed to be a work for hire, meaning that the authorship (and the right to copyright in the first instance) vests with the commissioning party, provided that there is a writing signed by the parties indicating that the work is a work for hire. Since application of U.S. law stops at the border, there may be a real concern on the part of motion picture and audiovisual producers, distributors and lenders regarding an independent performance right of actors in on-demand downloads occurring outside of the U.S. If foreign law does not recognize the U.S. work for hire rule in relation to the actor's performance rights, then the work for hire principle may not have much viability for overseas on-demand downloads of audiovisual and motion picture work. In this case, producers and commissioning parties may need to re-evaluate their actor compensation models and actor assignment agreements. Importantly, given the longevity of copyright interests in motion pictures and audiovisual work, producers, distributors, commissioning parties and actors should begin planning now for the potential impact of WIPO's proposed treaty.

Is 100,000 Year Old Art Copyrightable?

The October 11th edition of Science magazine features an article concerning the discovery of an early-human "art factory" in the Blombos Cave area of South Africa. The archaeological find may provide important insight into the early development of human reasoning, including the development of creative tasks. This find also raises an interesting question in copyright. That is, if the landowner of a parcel of land on which an ancient piece of art is found outside of the U.S. becomes the lawful owner of the treasure trove, does this also mean that the landowner can claim a U.S. copyright interest in the previously unpublished art once the art is published in the U.S.?

This past week on October 5, the Supreme Court heard argument in the copyright case of Golan v. Holder. The issue in Golan involves the constitutional ability of Congress to "restore" copyright protection to a work in the public domain under Section 104A of the U.S. Copyright Act. Reports of the oral argument in Golan suggest that Justice Ginsburg may be leaning to upholding the right of Congress to allow copyright protection for a work in the public domain under the view that a foreign work may never have had protection in the U.S. in the first instance (Scotusblog contains a full set of links to the various elements of this case). If an aged, foreign work has never been protected in the U.S., then one line of thinking suggests that there should not be anything wrong with granting full protection once the aged work comes into the U.S., even if the work becomes subject to U.S. copyright law years after its creation, assuming that the work is protectable in its home country.

Which takes us back to the ancient art factory in the Blombos Cave of South Africa. Wondering out loud what Justice Ginsburg's reaction would be to a copyright claim on a piece of art that newly arrives in the U.S. from the Blombos Cave? If the owner of the Blombos Cave art seeks to protect the 100,000 year old work under U.S. copyright law, would such an event not cause Justice Ginsburg, and everyone else, a bit of heartburn, assuming that South Africa would extend copyright protection to the previously unpublished work? Just thinking out loud.

Wyden to Obama: Declare ACTA Invalid

In his October 12th letter to President Obama, Sen. Ron Wyden (Dem., Oregon) asked President Obama to declare that the United States is not bound to comply with the terms of ACTA. The U.S., through the Office of the U.S. Trade Representative, and together with seven other nations, signed on October 1st in Tokyo the Anti-Counterfeit Trade Agreement. The signing nations are: U.S., Japan, Australia, Canada, Morocco, New Zealand, Singapore and South Korea. Of note, China, India and Malaysia are among the many nations not signing this agreement. ACTA seeks to establish an international legal framework for the uniform enforcement of intellectual property rights. Sen. Wyden argues in his letter that the President does not have authority under the U.S. Constitution to bind the United States on an issue relating to intellectual property and trade -- that only Congress has this authority. No response from President Obama has been noted to date, and no other members of Congress co-signed this letter with Sen. Wyden.