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Mistake No. 6 – Improper specimen or outdated specimen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

Be wary of using a laundry list of goods and services.
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.

Mistake No. 9 – Maintenance filings

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.

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?

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.]

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.

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.

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!

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.

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.

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.

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.

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

Wells passed away on August 13, 1946 in Regent's Park, London.

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.

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.

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:

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

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.

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.

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—  

(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.

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.

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.

Note the modest, attenuated use in the U.S. of the unregistered First Niagara marks by the Canadian firm. This tepid use by a foreign trademark owner is nevertheless sufficient to allow standing in a PTO opposition proceeding. Could a U.S.-based search have discovered this nominal use by the Canadian firm touching the U.S.? Likely not, since this use is generated within Canada.

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.

Ask Not What Copyright Can Do For You

The police in Sussex are fit to be tied. Sussex is a village outside of central London. Apparently, some local UK citizens have seen fit to publish on the Internet speeding photos taken from Sussex police speed cameras. The link is here. You know how these cameras work. The camera has an autofocus lens (or a fixed lens with a large depth of field) and is coupled with a radar-type device. If a car goes through the radar scan in excess of a set speed, a signal is sent to the trigger to snap the photo from the fix-mounted camera. Apparently, some of these photos have made their way onto Internet sites, and the Sussex constables are beside themselves. In order to regain control, the police are bringing a copyright claim. Sussex asserts a copyright in the photos.

Several years ago I was taking a tour of Kensington Palace, the home of Prince Charles and other sorts of upper crust. While on tour, I attempted to take a photo out the window from one of the palace rooms of a scene overlooking the palace's south gate. The attendant told me that taking a photo out the window was not permitted because, as explained, "the government owns the copyright of the view out the window."

I get a chuckle every time I think about the Kensington Palace visit. The idea that every image is protectable by copyright is just plain wrong. Neither a view out the window nor all photographs are copyrightable. Certainly, this is the rule in the United States. This rule follows from several basic principles of copyright law.

First, creativity is the sine qua non of copyright. The Supreme Court's decision in Feist Publications v. Rural Telephone Service instructs that the Constitution mandates the presence of minimal creativity in order for copyright to exist in a work. If no creativity, then no copyright.

Second, copyright has always required that a human exercise creative judgment in the creation of a work. As expressed in 1903 by Justice Oliver Wendall Holmes in the case of Bleistein v. Donaldson Lithographing Co., art is the "personal reaction of an individual upon nature." Indeed, the copyright law passed by the first Congress in 1790 provided that an author of a copyrightable work must be a citizen or resident of the United States. It is notable that many of the patriots who negotiated the provisions of the Constitution sat in that first Congress, and courts give respect to the laws of that first Congress as indicating the intent of the framers. The concept that a human force must create a copyrightable work has been imbued in the context of the U.S. copyright law to this day.

With the foregoing in mind, can it be said that a human exercises a minimal degree of creativity by pointing a camera to a space, flipping the On switch, then walking away -- particularly when everything that the camera does from that point on is rigidly controlled by mechanical or optical function? Who/what is exercising creative judgment; man or machine? Who/what is applying a personal reaction; the speed camera or the person who flips the switch? The lens focuses automatically or is fixed with a large depth of field. No film exists, as the image is saved digitally. The shutter speed is often fixed. The lens and light-sensitive computer chip can record images in all occasion of light and weather conditions. Where is the human creativity? There is none.

The Sussex incident raises a profound question as to how much control a human must exercise over a machine so as to create a copyrightable work. Certainly humans employ machines and other tools to assist the creation of copyrightable work. In doing so, the human maintains control by exercising judgment. As suggested by Justice O'Connell in Feist, it may not be possible to determine the degree of copyrightable creativity present in any particular work, but it can be determined when none exists. The Feist court dealt with an alphbetical arrangement of phone listings in a phone book. Justice O'Connell pointed out that, nothwithstanding the considerable degree of human labor required to compile the phone listings, the point is that the listings were arranged in the only logical manner permitted to accomplish the purpose of the phone book -- in alphabetical order by name of the phone subscriber. If there is no other logical way to present the listings in a phone book, then there is no creativity in presenting the listings in the only logical manner appropriate for the function of the phone book. The same is true for a speed camera. There is only one way to take a photo of a speeding car. The radar records the speed and if it exceeds a predetermined number then the trigger causes the camera to take a set photo. The lens must be set at a large enough angle to obtain all necessary information about the car and driver. The computer chip must be fast enough to record in all light conditions. There is no other way to do it so as to accomplish the purpose or function of the speed camera device.

The Sussex police may have a complaint, but it is not copyright based. Perhaps they could attempt to determine how the images escaped their grasp to begin with.

Elizabeth and Robert

Today in 1846, Elizabeth Barrett and Robert Browning, both renown poets from the Victorian Age, were wed.

From Sonnets from the Portuguese:

How do I love thee? Let me count the ways.
I love thee to the depth and breadth and height
My soul can reach, when feeling out of sight
For the ends of Being and ideal Grace.
I love thee to the level of everyday's
Most quiet need, by sun and candlelight.
I love thee freely, as men strive for Right;
I love thee purely, as they turn from Praise.
I love thee with the passion put to use
In my old griefs, and with my childhood's faith.
I love thee with a love I seemed to lose
With my lost saints,—I love thee with the breath,
Smiles, tears, of all my life!—and, if God choose,
I shall but love thee better after death.

"Infringe First and Ask Questions Later"

The Copyright Office has finally been heard from in relation to the proposed Google class action book settlement. All sorts of amici and other interested persons have commented on the good and bad of the proposed settlement except for the Copyright Office -- until now. As reported in the New York Times, the register of copyrights, Marybeth Peters, told the House Judiciary Committee that she really, really does not like the proposed Google settlement deal.

The register pointed out several flaws that she observes in the proposed settlement. First, in granting what appears closely aligned with a compulsory license, the proposed settlement usurps the authority of government to establish principles that regulate the use of copyright. Congressional debate and oversight are thereby ignored in this process. Second, the proposed settlement is structured to appear to give Google the ability to 'infringe first and ask questions later." Third, the proposed settlement would place stress on U.S. diplomacy in that the settlement would impact foreign rights owners for whom the U.S. holds treaty obligations.

The Department of Justice's Antitrust Division continues to investigate the underlying antitrust implications flowing from this proposed settlement and has not yet filed a report of its position with the court.

There are certainly all sorts of policy issues that are affected by, and flow from, the proposed settlement that are distinct from the legal issues pending in the class action. Given the weight and preeminence of these overriding public policy questions, is the N.Y. federal court the best place for resolution of these class action issues?