Owners, Borrowers & Thieves 2.0

Some Answers Are Not So Hard In The Copyright Debate. Or Are They?

Dave Rein — Fri, 16 Jul 2010 08:56:57 -0600

One of my favorite sports columnists is Joe Posnanski who writes for Sports Illustrated and periodically, for the Kansas City Star. But, as insightful and funny as he is about sports and life, he's not the first place to turn for intellectual property issues. I don't think Posnanski would disagree.

So why am I reading a copyright article written by one of my favorite technology columnists, David Pogue? I guess that I can't help myself.

One of Pogue's posts, "No Easy Answers In The Copyright Debate" highlights the never-ending debate about whether it is okay to download someone's creative work without their permission. The blog post described a song writer's efforts to stop people from downloading his sheet music for free.

The song writer, Jason Robert Brown, was frustrated by the thousands of people who were trading his work for free when he was trying to make his living by selling the sheet music. His correspondence with one teenager who had a different view is not only an interesting read in that it highlights many of the arguments made by both sides of the debate, but also sheds some light on the cultural issues as well. A post by Digital Society provides another view supporting the song writer. But, Pogue's post raises one argument that I had not heard before.

In the post, he quotes a classical pianist who justifies his downloading of sheet music without permission as an effort to preserve works that would otherwise be lost to the ages of time. Of course, anyone could justify illegal downloading on this basis. Nobody would have to honor a copyright if all that he had to say was that his intentions were pure and he was simply acting as his own Library of Congress.

Yet, Pogue does end the post with an interesting question: Is digital piracy justified if it is difficult or impossible to figure out if the item is for sale? I think another way of asking the question is should you be able to use a work if the copyright owner cannot be found?

I don't think one gets to use a work for free just because it is difficult or even impossible to find the artist or copyright owner of the work. It is frustrating, however, when a work does not identify the copyright owner. Unfortunately, after several attempts, Congress has not been able to agree on Orphan Works legislation -- resolving how someone can use a copyrighted work when its owner cannot be realistically determined.

The failure of Congress to act doesn't justify violating a copyright, but does this debate suggest the need to revisit passing Orphan Works legislation?

Less Hope For Shepard Fairey in Obama Hope Poster Case?

Dave Rein — Wed, 14 Apr 2010 08:08:06 -0600

If the street artist, Shepard Fairey, initially thought the copyright litigation over the Obama Hope poster would be a good-natured pillow fight with the Associated Press, he probably knew that it was going to get ugly once it came to light that he was less than truthful to the court in representing which photograph he used to create the Hope poster.

Mr. Fairey sued the AP last year asking the court to declare that the Hope poster does not infringe any of the AP's rights. The AP countersued for copyright infringement and others have joined or been brought in as well. It is now getting uglier for Mr. Fairey. An earlier post describes Mr. Fairey's confession, but the saga continues. The court has shown that it is receptive to allowing discovery not just on which photograph Mr. Fairey actually used, but also on making him name names.

Specifically, Judge Alvin Hellerstein ruled on April 5, 2010 that Mr. Fairey must disclose who was involved in destroying documents in an effort to hide how the Hope poster was actually created: "Plaintiffs shall disclose the identities of those who did the deletion and destruction and of those who knew about such deletion and destruction." Mr. Fairey will have to disclose who performed the destruction, who supervised it and who knew about the destruction.

The court's April 5th order itself may not elicit much excitement, but it raises several questions: why did the court agree to allow discovery on the destruction of documents? Although documents bearing on the creation of the Hope poster would be relevant, Mr. Fairey has already admitted that he used the photograph that the AP believed he used. Does the discovery go to potential sanctions against Mr. Fairey and others who assisted in the destruction of documents? If so, does the court intend to impose sanctions on top of the related criminal investigation? Is such discovery relevant to undercut Mr. Fairey's fair use defense? Neither the court's order nor the joint letter that the parties submitted to the court address the relevancy of the discovery.

Regardless, the potential that others may have helped destroy documents on Mr. Fairey's behalf means that we may have more twists and turns to come in this case.

Supreme Court Rules On Copyright Registration: What Does It Mean?

Dave Rein — Tue, 16 Mar 2010 08:15:34 -0600

I previously wrote that I was hoping the United States Supreme Court’s decision in Reed Elsevier Inc. v. Muchnick would finally answer the question of whether copyright registration is necessary for courts to have subject matter jurisdiction. We now have a ruling – it is not jurisdictional -- but the impact of the decision is somewhat unclear. Certainly, some will cheer (can anyone say Google?) the decision, but for the vast majority of copyright cases, will the decision matter? Maybe, but probably not.

The courts have been split as to whether to dismiss copyright cases for the lack of subject matter jurisdiction if the plaintiff has not registered its copyrighted works. The Supreme Court ruled that registration is not jurisdictional because Section 411(a) did not “clearly state” that it is jurisdictional.

Instead of jurisdictional, registration is a precondition to filing a lawsuit or similar to a “claim-processing rule.” In other words, a plaintiff needs to comply with the requirements of the statute to proceed, but the failure to do so does not deny the court subject matter jurisdiction.

Presumably, if the plaintiff sues for a work that is not yet registered, a defendant will now bring a motion to dismiss the claim for the failure to state a claim. If you are in a jurisdiction that previously dismissed cases for lack of subject matter jurisdiction, a court may likely still dismiss the case although the reason for dismissal will change to “failure to state a claim.” Only the label or rationale change. Likewise, if you are in a jurisdiction that took a different approach to registration, the court will likely continue to apply that approach.

The instances of where it does matter are probably few and far between. The background of the Reed Elsevier case illustrates at least one category of cases, i.e. settlements of certain class actions, that will feel the impact of this case.

In Reed Elsevier, a group of publishers who wanted to publish certain works digitally reached a settlement with almost all of the members of a class of freelance authors – some of whose works were registered and some whose were not. When the district court approved the settlement, some freelance authors objected and appealed. The Second Circuit held that the district court did not have authority to approve the settlement because some of the works were not registered. The Supreme Court reversed and in effect, allowed the district court to approve the settlement even though some class members never registered their copyrights.

Sounds pretty narrow. Who else would care? The thousand-pound gorilla of copyright – Google. If the Supreme Court had said that a court cannot approve a settlement of copyright claims whose class included unregistered works, how would have changed the proposed Google Books Search Settlement? If the final settlement proposal does not include unregistered works (except foreign works), then perhaps not much. But, does anyone think that the book search is the last expansive project Google will take on? I doubt it.

Federal Circuit Says Korean War Memorial Stamp Violated Sculptor's Copyright

Dave Rein — Tue, 02 Mar 2010 11:07:31 -0600

Sometimes a 37¢ stamp does buy quite a bit. One lucky sculptor, Frank Gaylord, may find that such a stamp could give him some extra spending money in the neighborhood of six or seven figures.

The Court of Appeals for the Federal Circuit recently reversed the lower court and ruled that the U.S. Postal Service violated Mr. Gaylord's copyright when it issued a stamp based upon a photograph of a sculpture called "The Column". The Column is composed of 19 statutes representing a platoon of soldiers such as the one on the left and is part of the Korean War Memorial.

Years after the memorial was opened, the Postal Service decided to use a photograph of the Column that John Alli shot early in the morning after a snowstorm. It paid Mr. Alli $1,500 to use the photograph.

To show how difficult it can sometimes be to determine who owns a copyright, Mr. Alli believed he had authority to commercially exploit his photograph because he entered into a license agreement with an entity that said that it held the copyright in The Column. Only later did Mr. Alli learn that Mr. Gaylord actually held the copyright.

While it may have been difficult for Mr. Alli to determine who owned the copyright in The Column, the government was certainly aware of Mr. Gaylord as it worked with him on certain aspects of The Column (the degree of which was disputed). Surprisingly, it never required Mr. Gaylord to either share his copyrights or provide it with a license to use The Column.

Mr. Gaylord sued the Postal Service claiming that he was owed a 10% royalty on the sales of $17 million worth of postage stamps plus other merchandise that featured images of the stamp.

The parties agreed that Mr. Alli was entitled to his own copyright protection in his photograph as a derivative work. Although the parties stipulated that the photograph was a derivative work, as I noted elsewhere, this is still an open question.

There were multiple issues before the Federal Circuit, but the main one was whether or not the stamp's depiction of The Column was fair use under 17 U.S.C. § 107. It was not only the crux of the parties' argument, but also one of the first times that the Federal Circuit weighed in on fair use.

Typically, fair use is "for purposes such as criticism, comment, news reporting, teaching . . . scholarship, or research", but it also applies more generally to uses that fall within the four statutory factors. The Federal Circuit agreed that the stamp did not effect the potential market or value of The Column, but it found that the other three factors weighed against the government.

The parties' argument about the first factor, i.e. the purpose and character of the infringing use, centered on whether or not the stamp was "transformative" of the original sculpture. Mr. Gaylord argued that the stamp could not be transformative because the stamp and The Column both have the same purpose of honoring the veterans of the Korean War. The court agreed and rejected the government's argument that the addition of snow and muted colors enhanced the sculpture's surreal character because they do not change the "character, meaning or message" expressed in the sculpture. As the court said: "Nature's decision to snow cannot deprive Mr. Gaylord of an otherwise valid right to exclude."

The Court of Appeals also seemed troubled that the stamp did not comment upon the original work nor was it part of a biography. It will be interesting to see whether this case will be interpreted as narrowing the test for what constitutes a transformative use.

Because the stamp was not a transformative use and was for a commercial purpose, the court held the first factor weighed against fair use. The second (the nature of the copyrighted work) and third (the amount and substantiality of the portion used) factors also weighed against fair use according to the Federal Circuit. At least one commentator believes that the Federal Circuit's decision was right.

Regardless of whether it is right or not, this case illustrates the importance of licensing. The government decided it did not need a formal agreement that allowed it to use the sculpture. I applaud public entities for making sure that they treat artists fairly, but they also need to make sure that they think through the repercussions of not obtaining some protection in the form of joint ownership in the copyrights or a perpetual license to use the copyrighted works upon terms that are fair for everyone.

Frisbee and Picking the Perfect Trademark

Dave Rein — Tue, 23 Feb 2010 09:10:22 -0600

Pluto is no longer a planet. It is also no longer the name of the flying disc now know as a Frisbee, but which was once known as "Pluto's Platter." I stumbled upon that bit of trivia in reading about the passing last week of the inventor of the Frisbee, Walter Morrison. But, selecting or changing a product's trademark is no trivial matter as the iconic Frisbee shows.

I can't say whether Mr. Morrison's selection of Pluto's Platter was a good choice from a marketing view. As a group, lawyers are not the best people to tell you what mark makes the most sense for your product. Your marketing team or advertising agency are the experts who can help you find a unique, credible mark that will stand the test of time. Or perhaps you came up with the perfect mark yourself.

What lawyers are good at is helping you narrow your choices to select one that you can protect so as to keep your competitors and knock-offs from using your perfect mark. They are also good at helping you avoid ones that are too similar to those that others are already using. Mr. Morrison's selection of "Pluto Platter" for a flying disc was probably a good choice from a lawyer's view.

Today, a lawyer helping Mr. Morrison select a mark would evaluate which category of trademarks the proposed mark falls within:

Coined or arbitrary marks -- made up words like XEROX that do not have any meaning or words that do have meaning such as Apple, but not in the context of computers. Lawyers love these because courts give them strong protection, but marketing tends to cringe at these because they do not tell the consumer anything about the product.
Suggestive marks -- words that suggest some quality of the product or service, but require some thought or imagination to determine the suggestion. Pluto Platter probably fits here in that the mark suggests its shape and that it flies -- especially in the context of the 1950s UFO craze. Courts would likely protect this mark, but would not give it as much protection as a coined or arbitrary mark.
Descriptive marks -- words that directly tell the consumer what the product is or describe its attributes. "Flying Disc" arguably falls in this category. Marks that fall in this category generally take more effort and time before they become a trademark.

When the name changed from Pluto's Platter to Frisbee, the mark may have climbed to the strongest category of protection. But, before making the change, someone had to determine if Frisbee was available. Today, someone looking to see if anyone was using the same or similar mark might search:

the Internet;
its competitor's marks;
the United States Patent and Trademark Office;
the phone book or state databases.

There are any number of places to search so not surprisingly, there are professional search companies who can help in this process. A search for Frisbee might have come up with the Frisbie Pie Company. Indeed, one story is that college students in New England were actually calling Pluto Platter's, "Frisbies" after the Frisbie Pie Co. whose empty tins were tossed like the Pluto Platters. Some even suggest that the name Frisbee was used instead of Frisbie to avoid a lawsuit. A good lawyer can evaluate names like Frisbie that came up in searching for marks and advise the client accordingly.

Whether the toy company could have used "Frisbie" or whether changing to "Frisbee" avoided a lawsuit will have to be left for another post. Until then, tell us what you think by flicking us a comment, an e-mail or a Tweet!

Who Dat? The NFL and Trademarks

Dave Rein — Mon, 08 Feb 2010 23:13:15 -0600

Whether you were looking for false advertising claims on the Super Bowl commercials, roving the streets of Miami looking for counterfeit merchandise or just enjoying the game, the Super Bowl had a little something for everyone.

The NFL even threw those who have a special interest in trademarks a big meaty bone to chew on when the NFL claimed trademark rights in the chant: "Who Dat?"

The origins of "Who Dat" are not entirely clear, but it certainly has been used for many years and most recently by New Orleans Saints fans who chant: "Who dat? Who dat? Who dat say dey gunna beat them Saints?"

A furor immediately broke out when the NFL sent cease and desist letters to T-shirt shops in New Orleans selling merchandise with "Who Dat" on them. Days before the Super Bowl, the NFL appeared to change its position when it claimed that it would only pursue those who use "Who Dat" in connection with other Saints trademarks.

But, there are plenty of others besides the NFL who claim to own a trademark in "Who Dat". A search at the United States Trademark Office shows applications for "Who Dat" for pretty much any kind of apparel that you can think of, action figures and variations of the mark including "Who Dat!!" for more apparel, "Who Dat? Blues Band" for entertainment and "Who Dat' Je Crois" for T-shirts. For a store owner such as Lauren Thom, the NFL's announcement that it is no longer laying claim on "Who Dat" only provides some relief given the myriad of claims on the phrase.

I thought it was interesting to review the USPTO applications for "Who Dat", "Who Dat?" and "Who Dat!!" for apparel. The only difference between the applications, of course, being that one has no punctuation mark and the others have either a question mark or two exclamation marks. Likewise, other applications simply added "Je Crois" to "Who Dat". While these applications may be of limited use to one defending against claims of trademark infringement, they do give attorneys who are untangling this web a lot to talk about.

Regardless, the Saints and their fans had a lot to cheer about this weekend. In the space of a few days, they not only beat the Indianapolis Colts to win the Super Bowl, but they also beat the NFL itself. Who Dat!

Correction: the earlier post incorrectly referred to registrations instead of applications.

You Choose: Four Years of Litigation or Taking Care of the Copyright Portfolio

Dave Rein — Tue, 02 Feb 2010 19:28:43 -0600

As one of my daughters has discovered Calvin & Hobbes cartoons, I wonder whether she'll be inspired to try some of Calvin's outlandish ideas such as barreling down a steep hillside and over the abyss in a red wagon or if she'll make the proverbial "note to self" not to follow Calvin when the last frame shows the resulting crash.

I get it. There are metaphors and life lessons and the yearning for a more exciting life. But, I'm not sure that casting away the "dull and boring" best practices is a good way to protect one's intellectual property. The Seventh Circuit in Schrock v. Learning Curve Int'l, Inc. helped clarify some lingering questions about derivatives in the copyright world -- at least in that circuit. As I mentioned in an earlier post, to do so, the parties spent four years just to get to an oral argument before the Court of Appeals.

In reading the opinion, two things struck me that might have avoided the litigation or at least kept it from being so prolonged. First, it could have registered its copyrights in the toys. Some of the toy maker's registrations only applied to literary works related to the toys, but not the toys themselves. Whether the toy maker was the owner of the copyrights and whether they were properly registered (and therefore entitled to all presumptions that follow) was a matter the judges expressed considerable interest in at oral argument.

Second, the licensing agreement between the toy maker and the photographer consisted of the terms stated in the photographer's invoices. Leaving the determination of who owns a copyright and its licensing terms to the battle of the forms should make the true copyright owner nervous. In Schrock, the toy maker realized what happened years after it started doing business with the photographer and asked him to sign a "work for hire contract". He refused, but even if the photographer had signed the contract years after he first provided photographs, that may not have solved the problem. Some jurisdictions require that the contract be signed before the work is created or at least require that it memorialize an oral agreement made before the work's creation. That may have been too high a hurdle in this case although it likely would have been effective if entered at the onset of the work.

Regardless of whether a work-for-hire contract would have been effective, the court noted that the parties could have contractually agreed that the photographer would not register his copyrights in the photographs. Actually, it did more than note that issue. It remanded the case back to the district court to determine if the parties agreed to such a limitation.

Certainly keeping up with copyright registrations and thousands of contracts is a constant struggle for companies or individuals that continuously create new content. In these times when general counsels are under increasing pressure to reduce their departments' budgets, it is even harder to do so. The challenge then is how can they convince upper management of the wisdom to spend money now to avoid paying even more later.

The parties' ordeal in Schrock may be useful to show that even companies with good copyright practices might benefit if more resources are devoted to auditing the company's contracts and copyrights and maintaining them. Litigation is not always avoidable, but anyone who owns copyrights and enters into contracts involving copyrights might be able to avoid prolonging the litigation and save money in the long run. At least it is better than throwing your copyrights on a red wagon with Calvin and hoping that they fly safely across the abyss.

Debate Continues Whether A Photograph Is A Derivative Work But 7th Circuit Issues Broad Ruling

Dave Rein — Tue, 26 Jan 2010 23:50:30 -0600

Derivative. Is there a less appealing or scarier word in which to start a horror novel or blog post? The very word conjures up everything complex in the financial world and is synonymous with our current economic disaster. Woe be to the one who missteps in the financial derivative world for he or she will quickly be escorted by a torch-lit mob to the nearest Congressional inquiry!

So it is in the wide world of copyrights. The simple mention of the phrase "derivative work" is likely to spur many a copyright lawyer to dust off the copyright statutes and brandish them in one hand while holding a Tiki torch in the other.

When one makes a movie which is substantially based upon a novel, he or she is making a derivative work. A derivative work is one "based upon one or more preexisting works such as a . . . musical arrangement, dramatization . . . or any other form in which a work may be recast, transformed, or adopted. 17 U.S.C. § 101. As the owner of the underlying work has the exclusive right to make derivative works, whether a work is or is not a derivative work matters.

Is a photograph of a sculpture or a toy a derivative work? Professor Patry has firmly stated more than once that a photograph of another copyrighted work is not a derivative work, but the extensive comments to his blog posts demonstrate that others are not persuaded. Likewise, the courts have yet to find their footing on this issue as well.

And so I've been curious to watch the reaction to the 7th Circuit's decision in Schrock v. Learning Curve. Short of a few comments including one from Michael Kahn, the reaction has been muted. No torches, no dramatic readings from 17 U.S.C. § 101 . . . nothing. Admittedly, the Seventh Circuit two-stepped around the question that we were waiting for it to answer: "Is a photograph a derivative work?" It did so by assuming -- without deciding -- that the photographs were derivative works. But, the case is still worth a read whether or not you have any interest in photographs because it did address two broader questions about derivative works:

(1) Should the new derivative work be subject to a higher standard of originality before it receives its own copyright?

(2) Does the creator of the derivative work need the original creator's permission to register the copyright of the derivative work?

The 7th Circuit said "No" to both questions and changed its prior rulings or at least its dicta that was followed by the lower courts. The case involved the maker of Thomas & Friends toy trains, Madeline and other toys along with Daniel Schrock who was hired to photograph the company's toys for marketing. Just like in all good litigation, the relationship soured. When the toy maker allegedly breached the terms under which the photographs were licensed, Schrock sued for copyright infringement.

Surprisingly, the toy maker spent considerable time in oral argument pressing that the photographs themselves were not sufficiently original to to be copyrightable. The 7th Circuit stood fast that the test for whether a photograph is entitled to a copyright is not a high hurdle to overcome and found, like most every court, that originality can be found in the staging of the scene, the choice of perspective, focus, lens and lighting. As the court said, the toy maker's alternative argument, i.e. that a heightened standard of originality should apply to determine if a derivative work is copyrightable was a more interesting argument -- even if it was equally unsuccessful:

If the photographer's rendition of a copyrighted work varies enough from the underlying work to enable the photograph to be distinguished from the underlying work . . . then the photograph contains sufficient incremental originality to qualify for copyright. Schrock's photos of the 'Thomas & Friends' toys are highly accurate product photos but contain minimally sufficient variation in angle, perspective, lighting, and dimension to be distinguishable from the underlying works; they are not 'slavish copies.'

The 7th Circuit also changed course on one other question about derivative works. The toy maker argued that: (a) even though the photographer had permission to take the pictures (it hired him to do so), it never gave him permission to register the copyrights and (b) without registration, the photographer could not sue for copyright infringement. This had seemed to be the rule of law in the 7th Circuit. Therefore, any creator of a derivative work would not only have to have permission to create the work, but also the underlying copyright owner's permission to register the copyright in the derivative work. After Schrock (at least in the 7th Circuit), one who creates a derivative work no longer has to get permission from the owner of the underlying copyright to register the new copyright.

Could the parties have avoided four years of litigation and lawyers with Tiki torches? Absolutely! How they could have done so is the subject of my next post.

Now For Something Completely Different: Mattel Licenses "Barbie Girl" From Aqua

Dave Rein — Mon, 02 Nov 2009 05:26:49 -0600

A commercial that played this Halloween promoting a new line of Barbie Fashionista dolls reminded me of an earlier blog post in which I wrote about some of the legal lessons learned from Barbie. One of those lessons involved the parody of Barbie in the song "Barbie Girl" by the group Aqua to which Mattel did not take kindly and sued. In 2002, the Ninth Circuit ruled against Mattel in an opinion written by Judge Kozinski and in the process, helped shape the contours of the First Amendment and the trademark fair use defense.

The commercial shows that it took seven years, but the parties have apparently heeded Judge Kozinski's admonition that the: "parties are advised to chill." In a "Now For Something Completely Different" moment, Mattel and Aqua have joined forces in a series of commercials to promote the Barbie line of dolls and Barbie's first music video by using a reworked version of the "Barbie Girl" song:

I am not privy to the licensing deal, but in answer to a number of commentators and bloggers, Mattel is not using the song for free. Aqua and MCA Records were successful in their fair use defense because the song is a parody of Barbie. The reworked song is not. Nor could Mattel say that it was making fun of itself or of the song. Instead, Mattel acknowledges that is is using the song because the song has become the "epitome of Barbie" and is now "iconic."

There may be those like Charlie Brown's sister, Sally, who decry that Aqua has "sold out" (7:25 into the video clip) to Mattel, but even Sally can agree that Aqua is getting its "restitution" through this licensing deal even if she lost out on trick-or-treating this Halloween.

A Stunning Confession Potentially Destroys Fairey's Fair Use Defense

Dave Rein — Sat, 17 Oct 2009 02:34:31 -0600

Despite depictions in TV shows and the movies, most court cases do not involve dramatic confessions, cover ups and Presidential politics. Of course, most court cases don't involve Stephen Fairey. From pasting the Obey Giant (now his Twitter name) and other "Obey" posters on public property (much to the ire of city officials around the country) to talking smack with the Associated Press over the Presidential candidate Obama Hope poster, he seems to seek and thrive on controversey.

But the controversey with the AP over the Obama Hope poster may have seriously backfired on Fairey. On February 9, 2009, Fairey filed a Complaint in the Southern District of New York saying that his use of a photograph claimed by the AP fell within the fair use defense and therefore, he owed the AP nothing for using the photograph to create the Obama poster. One former blogger on this site thought that if Fairey's inspiration for the poster did come from the picture of Obama and George Clooney at a press conference as Fairey claimed, then Fairey might succeed. It is unlikely that we will find out if he was right.

On October 16, 2009, Fairey confessed that he used a different picture from the same press conference, one that more closely resembles the Obama poster. A number of bloggers including Tom Gralish, Photo District News and others had suspected as much, but Fairey had denied their claims until now.

An AP article appearing in the New York Times could barely conceal its delight of the confession and the news that Fairey's legal defense team from the Stanford Fair Use Project intend to withdrawal their representation because Fairey lied to them and tried to cover it all up.

Fairey can likely afford to hire other legal counsel, but the legal arguments for his new defense team just got a lot more difficult. One of the four fair use factors analyzes the amount of copyrighted work taken. When the Obama Hope poster is compared to the picture that Fairey now confesses to using, this prong may now weigh against him where it may have helped in in the other picture.

But beyond the simple analysis of the factors, it should be remembered that the fair use defense is an equitable rule. Fairey's confessed dishonesty undercuts his ability to ask for equity, i.e. fairness. In other cases, the courts have not looked kindly on those accursed of infringing a work who denied that he or she used the accuser's work and then later tried to invoke the fair use defense. Further, should this case go to trial, the AP will likely be able to tell the jury that Fairey initially lied about the picture and that he lied because he thought that he would lose if the actual photograph was known. Much of the jury sympathy that Fairey might have had has likely been lost.

While Fairey's case against the AP still raises interesting questions such as whether the AP or Mannie Garcia, the photographer, own the copyright to the photograph, it now looks like a much anticipated case analyzing the fair use defense will disappoint many.

Fraud On The Patent And Trademark Office Isn't What It Used To Be: In re Bose Corp.

Dave Rein — Thu, 03 Sep 2009 07:00:51 -0600

With the stroke of a quill pen pulled from their cap or with the tap of a keyboard, the Federal Circuit may have relegated an intensely litigated and debated line of fraud cases to the ancient history books. Likewise, it may yet send the stock price of Novartis, makers of Maalox, downward. More on stock prices and Maalox later . . . .

Starting with the seminal case, Medinol Ltd. v. Neuro Vasx, the Trademark Trial and Appeal Board has held that the trademark applicant or registrant commits fraud by claiming the use of a mark in connection with identified products or services when it actually did not use the mark on all of the claimed products or services. The standard that the Board applied was whether the applicant or registrant made a material representation of fact that it knew or should have known to be false. The penalty for such fraud was typically death to the trademark registration or at least to the registration of the offending class of products or services. From 2003 until as late as June of this year with the Esprit IP Limited v. Mellbeck Ltd decision (visit Christina Frangiosa's Privacy and IP Law Blog for more on the case), this had been the state of the law with a few tweaks here and there as the Board soften the impact of the Medinol cases.

This line of cases kept many a trademark attorney up at night wondering what would happen to their clients' valuable portfolios of trademarks registrations if subjected to a Medinol challenge. Trademark attorneys and their clients implemented a number of creative strategies, but the concern that the registrations might be canceled must have caused many to gulp down untold amounts of Maalox that surely sent the stock price soaring.

Perhaps it was this health concern that caused the Federal Circuit in In re Bose to strongly state that the Board was applying the wrong standard to establish fraud and effectively applying a negligence standard. The Federal Circuit was perhaps a bit harsh in its criticism given that the Board had lifted the "knew or should have known" standard from a prior Federal Circuit decision, but it is true that the standard that the Board applied was different than anyone else's standard for fraud.

Some have argued that after In re Bose, the only penalty for getting caught listing goods or services that are never used with the mark is to correct the registration because: 1) it is difficult to prove fraud and 2) it will be difficult to justify the cost of pursuing fraud claims given the limited relief that the Board can award. If the only realistic penalty is to correct the registration, the argument goes, then it will be much more difficult to keep applicants honest.

Even the "reckless disregard" standard that may have been left open is still a high standard to meet in a Board proceeding and although the PTO's rules prohibit an applicant from making a false statement, until the Board loosens its interpretation of this rule, it provides little comfort to those who are concerned that applicants may cheat if not checked.

John Welch of the TTABlog suggests that one way "to focus an applicant's or a registrant's attention on the issue of use would be to . . . require a specimen of use of every item listed in the application or registration." He suggests that submitting a catalog or pages printed from the Internet could be deemed sufficient. I am not sure of the extent legal costs might increase if registration required a specimen showing use of each product or service, but the suggestion is worthy of further discussion.

First, having to submit something -- even if the bar of what the PTO will accept is low -- will ensure that the applicant does some investigation before claiming use on a multitude of goods and services. Second, the "I didn't know" defense to fraud becomes more suspect if the applicant submits a specimen showing use of the mark on a product when the applicant never sold such products or never used the mark on such products.

For now, however, given that attorneys and their clients have less fear of their trademark registrations being canceled, fewer will be gulping down bottles of Maalox. Perhaps Novartis should offer to fund an appeal of the Federal Circuit's decision?

Michael Jackson: The Music And Copyright Infringement Lawsuit Continues

Dave Rein — Mon, 24 Aug 2009 06:45:23 -0600

While on a vacation in Northern Michigan recently, Michael Jackson's "Thriller" started playing in a local tavern. The song seemed out of place in the northern woods, but as I looked around, I could sense that the conversation at a number of tables had changed once the song began playing. It has been almost two months since Jackson's untimely death and yet, people across the country are still moved by his death. It seems appropriate then to write a short piece before Jackson's burial sometime around September 3rd.

As a pop star, Jackson was no stranger to copyright infringement lawsuits. But, even with his death, Jackson will play a role in shaping copyright law. The battle for his stake in the Sony-ATV Music Publishing catalog (which includes the Beatles, Elvis and contemporary artists) along with the catalog to his own songs has been discussed extensively and will likely be a topic worth following for sometime to come.

There is also the little issue of an ongoing copyright lawsuit. The lawsuit by Cameroon sax man, Manu Dibango, against Michael Jackson and Rihanna received a flurry of attention when it was filed in February, yet except for a wonderful article in the New Yorker, it has received almost no attention since then.

Dibango struck gold with his 1972 song, "Soul Makossa", that some credit as an early disco staple. He reaped an additional pot of gold ten years later with his lawsuit against Jackson who admitted that he borrowed the phrase: "ma ma se, ma ma sa, ma ma coo sa" in his song,"Wanna Be Startin' Something" on the Thriller album from Soul Makossa. After reaching a settlement, Jackson and Dibango moved on happily ever after.

Actually, not happily ever after. Fast forward to 2007 and things get interesting again. Pop star Rihanna received Jackson's permission to use the "Ma ma se, ma ma sa, ma ma coo sa" phrase in what became one of her many hit songs: "Don't Stop the Music". But, she did not receive permission from Dibango and it it does not appear that she asked him for permission. Dibango is suing for about $650,000 -- those who follow the exchange rate between the CFA (Communauté Financière Africaine) and the U.S. dollar can give us daily updates.

Absent Jackson's death, this battle of superstars with their millions of dollars would likely have been resolved quietly and quickly. But because it is unclear who will control and ultimately act on behalf of Jackson's estate, a quiet and quick resolution does not seem to be possible. For those of us curious about intellectual property issues, keeping the case moving towards trial will be enlightening. Some unanswered questions:

Why were Rhianna's lawyers savvy enough to track down Jackson to get his permission, but not Dibango's?
What rights in the "ma ma se . . . " phrase did Jackson get in his settlement with Dibango?
If Jackson didn't acquire any rights from Dibango to the phrase other than a license to use it in the "Wanna Be Startin' Something" song, what rights did Jackson's lawyers represent he had in the "ma ma se" phrase to even give Rihanna?

We may never find out the answers to these questions if the case does not go to trial. Perhaps the bigger shame would be that we would never see Jackson jumping out of his casket and moonwalk to the witness stand one last time to the beat of Thriller:

"That this is thriller, thriller night
'Cause I can thrill you more than any ghost would ever dare try
Thriller, thriller night . . . "

Are You Gambling With Your Copyright By Entering That Photography Contest?

Dave Rein — Tue, 14 Jul 2009 06:59:05 -0600

"Winner, winner, chicken dinner!" I'm told that the phrase first started in Las Vegas casinos where you would hear gamblers and dealers yell it out as winners would earn enough from their bets to buy the three-piece chicken special at the casinos. Whatever its origins, the phrase makes me smile after hearing it.

Thoughts of winning one of the countless photography contests also brings a smile to many as well -- amateurs and professionals alike. Who wouldn't like to win a Canon 5D Mark II or maybe that lens you've been eying? Before sending the kids out to lure the buffalo herd a little closer to get that winning shot, you might want to do some reading.

Reading, as in reading those pesky rules or what is usually called "terms and conditions." The terms vary from a photographer giving the promoter a non-exclusive right to use the photograph for a limited purpose and limited period of time to granting the promoter all the rights in your photograph. Of course, if you care to give the promoter all of the rights to your photograph, you might consider taking it off of your website and stop selling those signed prints because you might get sued!

Far fetched? Gary Crabee wrote in his Enlightened Images photoblog about Costco's photo contest in which, by entering the contest, the contestants assign the copyright to any image to Costco. Costco is not alone. There may be questions of the enforceability of the clause, but Gary is right that Costco and others with these terms arguably can sue any contestant who continues to reproduce or distribute what used to be the contestant's own photograph! I like to think that Costco would not enforce the full-extent of the assignment, but do you gamble on that by entering one of your bread-and-butter photographs in the contest? By assigning all your rights, stock agencies like Getty Images are also not likely to accept your photograph. Presto! You've just deprived you of another source of income.

Most contests don't require the photographer to assign all of his or her rights, yet the terms and conditions can still be fairly broad. In Walt Disney's Messy Baby Contest, you grant Disney the right to use your photograph throughout the "universe" in "perpetuity" although you have the right to use the photography as well. I'm at a bit of a loss in calculating the going rate for using an Ansel Adams photograph on Saturn or elsewhere in the universe. But if you have a gem on your hands, do you think you can compete with Disney's marketing muscle here on Earth? Sorry, but my money is on Disney.

So what can you do to protect yourself before entering a contest? Here are a few suggestions:

Read --the terms and conditions of the contest;
Examine -- by following any links on the terms and conditions to see if there are any buried terms.
Think -- before entering a contest where you assign "all the intellectual property rights", grant "exclusive rights" or "perpetual rights";
Consider recommendations -- by Pro-Imaging and others who monitor these contests. Pro-Imaging, for example, uses its photographer's Bill of Rights to develop a list of "bad" contests and list of "good" contests.

Armed with a little information, you can avoid the "sucker's bet" and call out with the rest of the contestants: "Winner, winner, chicken dinner!"

Judge Posner's Copyright Proposal To Save Newspapers -- A Cosmic Paperboy?

Dave Rein — Wed, 01 Jul 2009 08:38:04 -0600

I still turn to newspapers, whether on paper or on the Internet for my primary source of news, but it is no secret that newspapers are fighting for their lives -- not unlike Bruce Willis in pretty much any Die Hard movie. Newspapers, rallying around AP, blame Google for their troubles. Mike Masnick of techdirt, points to the staggering amounts of debt that the newspapers took on and there are probably a dozen other ailments giving newspapers the blues.

Many have suggested cures for the newspapers' ailments, including, as R. David Donoghue of the Chicago IP Law blog points out, the esteemed Judge Posner who hails from the Seventh Circuit in Chicago. Judge Posner wrote in the Becker-Posner blog that we should ban online access to articles and bar anyone from paraphrasing or linking to a newspaper article without the newspaper's consent. Otherwise, Judge Posner argues, free-loaders will run newspapers out of business.

The commentary in response to Judge Posner's proposal focuses on skepticism that the proposal is workable, that he has become too sentimental for printed newspapers and that he is out of touch with social media. But, what troubles me about the proposal is it appears to venture awfully close to allowing newspapers to copyright facts.

The proposal to bar online access to copyrighted material without the copyright holder's consent is something the WSJ and a few other newspapers do already. For example, to get full access to the WSJ's article about the AP creating an association to license and monitor who is republishing newspaper articles, you would need to subscribe to the WSJ.

Judge Posner's second suggestion, i.e. bar linking to or paraphrasing news articles, potentially could have greater implications. Currently, copyright allows all of us to repeat facts found in books, newspapers and on the Internet if we do not copy the way those facts were repeated. Copyright will protect how historical facts are expressed and not the facts themselves.

To be fair, Judge Posner proposes a ban on paraphrasing newspaper articles or linking to the article. He doesn't propose that newspapers should be able to copyright facts, but if nobody can paraphrase the article or link to it, does it effectively do the same thing? Is there an argument that repeating a key fact or facts in an article is paraphrasing the article? It strikes me that from a copyright perspective, Judge Posner's proposal has even wider implications than just for newspapers.

With that said, count me among the people who still subscribe to a printed newspaper and wouldn't mind having it stick around for a little longer. If only the newspapers could create a real-life Early Edition where the hero received the Chicago Sun-Times the day before the news actually occurred:

[Discussing the mysterious newspaper]
Gary Hobson: Where is it coming from?
Marissa Clark: The hallway.
Gary Hobson: That's not what I meant.
Marissa Clark: Maybe it comes from God.
Gary Hobson: Yeah, God's a cosmic paperboy.

Would You Like An OBAMA Cigar? We Think The USPTO Will Say: "No You Can't."

Dave Rein — Tue, 23 Jun 2009 09:30:17 -0600

Co-author: Branden Gregory (more on him later)

We admit that we love trademarks enough that we can pass time away with our feet propped up while running random searches on the USPTO's database of trademark applications. Sure this time might be better spent working off a few more stubborn winter pounds, but that might have meant missing a few gems.

During Barack Obama's campaign for President, there were a few applications to register various OBAMA related trademarks which were presumably filed by his supporters and his opponents. Later, more commercial-oriented applications appeared: OBAMA bottled water, cigars and other products that we're sure we can't live without. The applications just keep coming. And not just here in the U.S. The IPKAT reported that trademark applications in Europe to register OBAMA marks have appeared in several European countries.

But, did any of these applicants really think the USPTO would register these marks? The USPTO is not going to allow registration of President Obama's name without the President's consent. Not only will the President politely decline to consent to Obama soft drinks, but we are also willing to bet it will be nearly impossible to get past Obama's personal secretary, Katie Johnson. As for these marks, in the words of Heid Klum, the host of Project Runway, "You are out!"

As for those marks which "merely" propose using "OBAMA" as a term of the mark, they are not likely to get much further as the USPTO will probably construe the marks as consisting primarily of a surname. In the eyes of the USPTO, this is a "no no." We were surprised to learn that the Obama name is relatively unusual in the U.S., but it won't be perceived as unusual any longer. We can't come up with another meaning for "OBAMA" other than as a surname: it does not signify a geographical area, have a secondary meaning or translate from Swahili into something other than the President's surname (we'll admit to being a bit rusty on our Swahili).

So why did attorneys agree to file these applications? It strikes one of us as fairly straight forward that the USPTO won't register the marks, but were we missing something? Brief interlude . . . one of the best things about summer is that one of us gets to hang around some fantastic summer associates including Branden Gregory who graciously agreed to hit the books and find a way to convince the USPTO to register these marks. Although fully inspired with the "Yes We Can" slogan, his conclusion was that we are not going to be seeing Obama energy drinks anytime soon.

Then what was the good-faith basis for filing the applications to register Obama marks? Did the attorneys tell their clients that perhaps they might get lucky and catch one of the trademark attorneys in a mischievous mood? That wouldn't be kosher so that can't be it. Anyone have any thoughts? Anyone? Bueller? . . . Bueller?

We Are Now On Twitter!

Dave Rein — Mon, 22 Jun 2009 08:23:11 -0600

For those of you who read the last post closely, yes it is true. Owners, Borrowers & Thieves 2.0 has jumped into Twitter and you can now access the posts through Twitter by following me @daverein.

Because these are uncharted waters for me, I am hoping that the Twitter veterans among you will lend a guiding hand until the Twitter for Dummies book is released next month!

A $1.92 Million Win For The Music Industry. Now What?

Dave Rein — Thu, 18 Jun 2009 20:00:27 -0600

As I read Ben Sheffner's tweets about the Capital v. Thomas case with interest, I was struck by how quickly the jury issued its decision to award the record companies $1.92 million -- about $1.7 million more than the original jury awarded. I instantly thought of this picture as I think both Ms. Thomas and her attorney are going to need plenty of this and some lucky lottery tickets.

From the music industry's perspective, this was an important win. The stunning size of the verdict and the swiftness with which the jury came back with the award should please those who were tasked with the aggressive campaign against copyright infringement.

I agree with Sheffner that the judge will likely slash the jury's award, but it shouldn't come to that. As I mentioned in a previous post, winning the case is only the first step for the music industry. It has won the case and now it needs to win the public relations battle by not overreaching.

The music industry has every incentive to keep the decision from spinning into a public relations circus like what happened in the Pirate Bay case. It appears that Thomas and her attorney want to quietly put an end to this case so the record companies now have the opportunity to win the public relations battle. They can do so by not insisting on a settlement that results in financial ruin for Thomas, but instead reaches a confidential settlement that Thomas can live with.

Settlement will not undermine its message that although the Pirates of the Caribbean would have considered the copyright code to be more like "guidelines" than actual rules, the music industry politely and firmly begs to differ. "Welcome aboard the Black Pearl", Ms. Thomas.

The Music Industry Will Need To Win More Than Just The Legal Arguments In Capital v. Thomas

Dave Rein — Mon, 15 Jun 2009 09:31:41 -0600

They do things differently in Sweden. If there was an RSS feed for all the political news happening in Sweden, I think I would subscribe. I remember in college hearing that Donald Duck beat out several political parties in the Swedish elections. You know it is time to give it up and run for the dog catcher position when you lose to Donald Duck.

The independent streak seems to continue today. For most of us, the only way last week's European Union parliamentary elections were going to catch our attention was if another Donald Duck episode occurred. Sure enough, the voters in Sweden obliged.

In a reaction to the landmark file-sharing case (i.e. sharing of music, movies and books) popularly known by the file-sharing site's name, the Pirate Bay, the voters elected a member of Sweden's Pirate Party to the European Parliament. For those who are not up to speed with the Pirate Bay case, take a look at the the Wall Street Journal post for background or just know that Sweden's tolerant view on copyright infringement changed when a court announced that the Pirate Bay defendants were liable to the record companies to the tune of $3.6 million. Apparently, the Swedish voters were not pleased with the court's decision and voted in protest for the Pirate Party.

But, don't just file this under: "Funny Things That Happen In Sweden." Of the thousands of copyright litigation cases that the music industry filed here in the U.S., only one ever made it to trial. And that case returned to the courtroom this week.

The case is Capital v. Thomas and involves six record companies suing Jammie Thomas for allegedly using a peer-to-peer network to share and download music. To learn the details of the case, I recommend reading Ben Sheffner's posts. He has been blogging extensively about the case and is covering each blow-by-blow during the trial.

I don't predict that the outcome of the trial will launch new political parties in the U.S. who send representatives to Washington D.C. under a pirate flag. But, managing the public's perception of the case will be important. The voters who sent the Pirate Party to Parliament were largely 18-24 year olds -- an important demographic for the music industry and a group that will soon move on to positions where they will make policy decisions on copyright issues for years to come.

Right or wrong, the music industry needs to not only win the Thomas case, but also the public relations battle as well. If it does, the music industry will be able to quote one of our favorite pirates, Captain Jack Sparrow, who said: "I think we’ve all arrived at a very special place. Spiritually, ecumenically, grammatically." "Savvy?"

The Supreme Court May Decide Whether Registration Is Required To File A Copyright Lawsuit

Dave Rein — Thu, 11 Jun 2009 09:29:13 -0600

We at the Owners, Borrowers & Thieves 2.0 are big enough to admit to our mistakes when, after an exhaustive search, we can't find anyone else to blame. Not finding anyone to blame other than the sheer height of the stack labeled: "Interesting Things I May Never Have Time To Read", I'll have to confess that if you were interested in the post about the Dr. Jekyll and Mr. Hyde approach that the courts have taken on the issue of copyright registration, there is even more to the story.

The issue of whether you need to register your copyright before filing a lawsuit may very well have floated up to the Supreme Court after all. In March, the Supreme Court accepted certiorari in Reed Elsevier v. Muchnick which might resolve the copyright registration issue. Then again, it might not.

Shourin Sen., who writes the Exclusive Rights blog, has an great post walking through the case. For those who think these issues sound like a good substitute for a sleep aide, another commentator says oh contraire -- these issues are "sexy"!

I'm not ready to say that the issue is "sexy". At the same time, while none of the briefs filed in the case will find their way into your local bookstore, they do make for an interesting read. I was especially absorbed in the United States' brief filed three days ago which takes a nuanced approach to the issue.

For those who don't care to immerse themselves in reading the briefs, the take away is that even though the Petition for Certiorari focused on a couple of narrow issues, the Court ultimately asked the parties to brief a broader issue: "Does 17 U.S.C. § 411(a) restrict the subject matter jurisdiction of the federal courts over copyright infringement actions?"

So, although the Court could still avoid ruling on the issue directly, it is looking more and more hopeful that we will get that long-awaited guidance from the Supreme Court after all!

More Chaos On Whether Registration Is Required To File A Copyright Infringement Case

Dave Rein — Mon, 01 Jun 2009 13:15:37 -0600

Forum shopping in not just for patent and securities attorneys although their shopping habits have a greater tendency to get picked up by the Wall Street Journal law bloggers. Even in the copyright world, crossing state lines to a different circuit or district court can mean the difference between winning and losing.

The Copyright Act requires authors to register their works with the Copyright office before filing a lawsuit. Does this requirement mean that the copyright owner has to wait until the Copyright Office actually issues a registration or is it enough that the owner applied for the copyright registration? Even though the language of 17 U.S.C. § 411(a) uses the same words in New York as it does in Texas, the courts are horribly split on this issue. It is not getting any better.

The recent district court decision in Minnesota, Tri-Marketing, Inc. v. Mainstream Marketing Services, Inc., highlights that the split is not just among the circuit courts. With the new decision, the Eighth Circuit now has:

two Minnesota district courts reaching opposite conclusions;
dicta from an Eighth Circuit court decision suggesting one conclusion; and
a district court in Nebraska saying that suggestion is a bunch of baloney.

Don't blame this mess on the drinking water in the Eighth Circuit. The D.C. courts have reached opposite conclusions as have district courts in New York and elsewhere. It appears that the district courts are running in random directions in those circuits which have not weighed in yet. The recent decision from Minnesota just reminded me how much we need the circuit courts to take these cases. It may take the Supreme Court to straighten this out, but it will take more circuit courts accusing the others of an inability to read English to get the Supreme Court's attention.

Is this stuff that only a law professor could love? Hardly. Consider the example of an architect who learns that plans which show promise of launching his career suddenly appeared on the Internet or a photographer who discovers her images will be used in a political campaign without her permission and against her own wishes. The common thread in both is that each will want an immediate injunction to shut down the infringer.

In a circuit or district court that requires registration first, the court won't issue an injunction based on copyright infringement -- at least not until you file for an expedited registration to try and jump in front of the incredible backlog at the Copyright Office. Yet, cross a state line and the outcome may be entirely different. The court may or may not grant the injunction, but at least the court will listen to you. All this leads to forum shopping and races to the courthouse -- which just increases the cost of litigation that is already too expensive for many.

The American Bar Association has been studying the issue and may try to get Congress to clarify the law rather than waiting for the process to slowly play its way through the courts. Then again, it may not. What do you think? Is this a "who cares" issue? If it is worth our attention, what is the solution?