Trademark TopicsSM
Dos and Don'ts of
Brand Management
Internet, Technology, Trademark & Advertising Alerts
To keep our innovative clients apprised of the legal developments that can affect them most, attorneys in the firm’s Internet, Technology & E-Commerce and Advertising, Marketing & Trademark groups post the latest legal cases and alerts.
How Not To Be a Literary Agent
May 14, 2013, Posted by Paul Thomas
On May 3, 2013, Harper Lee, author of the renowned novel “To Kill a Mockingbird,” filed a lawsuit against her literary agent in federal court in New York. It must be acknowledged at the outset that the agent’s side of the story has not yet been heard because, as of now, only the complaint has been filed in the lawsuit. However, the allegations, if true, are egregious, and the narrative of the complaint presents a cautionary tale for literary agents on how not to behave in representing a client, any client, let alone one like Harper Lee, who is as universally venerated as she is famous.
Click here for article.
Star Trek: Into Darkness: VIP Opening Night Comp Ticket Giveaway
May 1, 2013
SOLD OUT
Do We Need a License to Look?
May 1, 2013, Posted by Paul Thomas
It is common knowledge that when we access the internet, our computers, as part of their basic system functionality, make copies of the webpages we access. As soon as we type in a web address, the internet routers and proxy servers create copies of the webpage we want to look at, and then our computers download a copy for us to look at on our monitors, and our computers cache another copy on their hard drives. In short, copies occur at several stages in the most ordinary and everyday uses of our computers. This raises an uncomfortable copyright issue: because even looking at a webpage involves making copies, and the right of reproduction is a fundamental part of an author’s copyright, do we need a license to look at materials online? Common sense tells us that if an author, artist, photographer or filmmaker posts a copyrighted work on a website, the whole point of posting it where people can access it and look at it is to allow people to do just that, so an implied license should exist to cover our ordinary online activities. However, that is just a theory, and not everyone agrees. As recently as 1999, a federal court in Utah said that “when a person browses a website, a copy of the [site] is made in the computer’s random access memory, and in making a copy, even a temporary one, the person who browsed infringed the copyright.” Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc., 53 USPQ2d 1425 (D. Utah 1999). If such an opinion were widely followed, it could shut down the internet communications on which billions of people rely every day, so it is probably a good thing that more courts have not iterated the same analysis. Yet it is still an uncomfortably unresolved issue, and it is a result of developments in information technology over the last thirty years, as observed by Professor Nimmer, the noted copyright scholar: “The idea that reading a digital text entails a potential copyright violation shifts policy” and that shift should occur because of a “policy choice rather than because new technology technically triggers concepts” unknown to the pre-digital world. Information Law, §4.08 (2001).
On April 17, 2013, the Supreme Court of the United Kingdom took a step that may help resolve this issue on an international basis. The Public Relations Consultants Association Ltd. v. The Newspaper Licensing Agency Ltd. case questioned whether customers of an online news service that prepares personally customized news reports based on the customer’s keyword preferences needed a license merely to view the summarized reports online. The issue became more acute in the context of infringing works: are you an infringer if you read an article that has been posted without the authority of the copyright owner, just because the act of reading involves the automatic creation of copies? The Court said “it has never been an infringement, either in English or EU law, for a person merely to view or read an infringing article.” And, on the broader issue of whether simply looking at a web page would be an infringement if the act is performed without a license, the Court said “this seems an unacceptable result, which would make infringers of many millions of ordinary users of the Internet.” Reassuring statements which, it may be hoped, will help create the shift in legal policy that Professor Nimmer suggested twelve years ago.
Copyright Fair Use Decision Doesn’t Seem Terribly Fair
April 30, 2013, Posted by John Pickerill
In a recent case, the 2d Circuit appears to have largely set aside the traditional elements of “fair use” in lieu of a pure test of transformativeness. “Transformative” has become the buzz-word in fair use cases, and this court appears to have decided that another artist’s work is fair game as long as it is sufficiently transformed, regardless of any socially valuable purpose or intent. I can’t help but feel like this is a defeat for the art world. Historically, the purpose of the fair use doctrine is to balance the right of an artist to control his or her work against socially beneficial subsequent uses, like commentary, parody, news reporting, education, etc. However, I just don’t see the social value in this case. Richard Prince appropriated Patrick Cariou’s photographs of Jamaican Rastafarians and incorporated them into a series of paintings and collages, without authorization and without any licensing fees. How is that “fair?” Granted, we want a robust artistic marketplace in which artists are inspired to build upon the works of others, but I don’t think this goal requires use of Cariou’s actual images. Prince could have taken his own photos of Rastafarians for use in his collages, rather than use Cariou’s actual work. To me, it seems like Prince is just taking a shortcut to creativity, which shouldn’t be the purpose of the “fair use” doctrine.
(Prince Collage)
Certification Revoked for Two Electronic Health Record (EHR.) Providers. Contract Protections and Defenses for Customers
April 29, 2013, Posted by Steve Helland*
The Department of Health and Human Services announced April 25 that two EHR providers, EHRMagic-Ambulatory and EHRMagic-Inpatient, have had their certifications under the Office of the National Coordinator for Health IT (ONC HIT) programs revoked.
As a result, hospitals, clinics and other providers using either of these EHR products will no longer be able to meet “Meaningful Use” requirements.
The full HHS News Release is at: http://www.hhs.gov/news/press/2013pres/04/20130425a.html.
Contingency Planning at the Contracting Stage. If you represent a hospital, clinic, or other entity, your contract with an EHR provider should include contract provisions protecting against the following major contingencies:
- Decertification under ONC HIT / HITECH ACT.
- Major change in the regulatory / legal landscape, specifically including EHR certification, “meaningful use,” and also privacy and security requirements.
- Merger, acquisition, or similar event involving your EHR vendor.
- Discontinuation of your specific EHR product, or discontinuation of support.
- Bankruptcy of vendor.
- Change in your own business, such as merger or sale, as well as expansion or contraction.
- Future price protection.
* Steve Helland has represented over 40 hospitals, clinics and systems around the country in their relationships with EHR and other sophisticated Health IT providers. He also represents hospitals and clinics in disputes with EHR providers.
Can Tweets Improve Liquidity?
April 26, 2013, Posted by Public Companies Group
A Stanford Business School study suggests that tweeting investor information may improve market liquidity, particularly for smaller company stocks. In light of this and SEC guidance that social media releases can satisfy Regulation FD, Twitter may become an effective way for public companies to share information with investors. The study considered companies tweeting information linking to a more detailed press release over 40 times per month. The impact was most noticeable among smaller and lesser-known companies more likely to benefit from an increase in visibility. Read the Stanford study and the SEC’s guidance on social media.
New Clarity in the First Sale Doctrine
April 9, 2013, Posted by Paul Thomas
Two aspects of the U.S. Supreme Court’s recent ruling in the Kirtsaeng v. John Wiley & Sons, Inc. copyright case are immediately remarkable. First, the Court ruled 6-3, a clear majority, in favor of petitioner Kirtsaeng and the argument that the First Sale doctrine applies to copyrighted goods purchased overseas and then imported into the United States, even though similar facts and issues split the Court 4-4 (Kagan recused) three years ago in the Costco v. Omega case (see my articles on this case here). Second, the case stands as one of the few limitations imposed on the scope of copyright in this new century, which started with the Court’s approving the constitutionality of the Sonny Bono Copyright Term Extension Act in 2003.
Click here for article.
SEC Says Social Media Releases Can Satisfy Regulation FD
April 8, 2013, Posted by John Houston
On April 2, 2013, the SEC confirmed that public companies may use social media, such as Facebook and Twitter, and other emerging means of communication in much the same way that they use their own websites to announce key information in compliance with Regulation FD. The key is whether investors have been notified about the social media accounts ahead of time.
Click here for article.
Checklist for Corporate Directors: Data Privacy and Security Oversight
March 28, 2013, Posted by Steve Helland
You can’t do it all in a field as robust and evolving as data privacy and security. The purpose of this checklist is to describe the core oversight duties of those in the board room and the C-suite, as of spring 2013. As such, this checklist is focused primarily on setting values and priorities, and the assignment of roles, structure, and process.
Please note: (1) there is no one-size-fits all, so consider the unique circumstances of your organization; (2) although much has been written about privacy and security generally, law and scholarship specifically regarding the duties of the board and senior management regarding privacy and security issues is significantly less developed.
This article and checklist are adapted from Steve Helland’s presentation “Data Privacy & Security for In-House Counsel” given at the Minnesota State Bar Association conference held on March 21, 2013.
Messin’ with Sasquatch Via Fake Online Coupons
March 28, 2013, Posted by John Pickerill
The below article is a good reminder not to blindly download online offers from questionable sources and to definitely think twice before actually paying for coupons online. Also, don’t blame a company like Jack Link’s if an online coupon isn’t honored at retail. They’re the only party that has no control over it. Go get ‘em Jack Link’s! Hopefully, they bring Sasquatch to court.
Click here for article.
Click here for Jack Link’s Sasquatch Commercials.
ICANN Establishes Trademark Clearinghouse to Provide Enforcement Services to Mark Owners before New Wave of Generic TLDs Arrives
March 19, 2013, Posted by Paul Thomas
The Internet Corporation of Assigned Names and Numbers (ICANN), which is the non-profit organization that, with the input and advice of more than one hundred national governments, oversees the international domain name system, will soon introduce many new generic top-level domains (gTLDs). While <.com> remains the most popular and well known among the current gTLDs, many new gTLDs will become available this year. Some of the new names will indeed be generic names for industries, products, or activities (such as <.cooking>, <.beauty>, and <.hotel>), some will be geographical place names (such as <.madrid>) and some will be corporate names or brand names (such as <.mattel> and <.maserati>).
To read more, click here.
Crown Royal Sues Over Ad Implying It Is “Poison”
February 15, 2013, Posted by Laura Myers
Do you recognize Crown Royal whiskey by the purple bag it’s sold in? According to the lawsuit Diageo North America, Inc. recently filed, the bag is “an iconic, distinctive, and famous purple bag.” Indeed, the design of Crown Royal’s purple, gold-trimmed bag is a federally registered trademark.
To read more, click here.
Join the Super Bowl Ad Meter Panel!
January 23, 2013, Posted by John Pickerill
Instead of the countless stories about the Harbaugh brothers or Ray Lewis’ “passion,” you should be focusing on what’s really important this Super Bowl® Sunday- the advertising. For the first time, you can sign up to be on the USA Today® Ad Meter Panel and judge the Super Bowl® ads for yourself (see link below). As advertising attorneys, we consider the Super Bowl® the unofficial holiday for the advertising industry, so we’re already counting down to next weekend. Unfortunately, my enjoyment of the ads has been skewed by my job. I tend to think things like “how much did it cost to license that music?” or “how did they ever get that past the network censors?” But, the commercial breaks are still usually more fun than the game itself, so join the Panel and enjoy the ads! Also, go Ravens. (I don’t want that whiny Jim Harbaugh to get a ring before his big brother does.)
FTC Announces Updates to Children’s Online Privacy and Protection Act Rule
December 19, 2012, Posted by Ann Ladd
After two years of debate, and just days after issuing the results of its second survey on kids’ apps*, the FTC published its final ruling on amendments to the Children’s Online Privacy and Protection Act Rule (COPPA Rule) on December 19, 2012.
The amendments:
- require sites and apps that are directed at kids to seek permission from parents to collect a child’s photographs, videos and geolocational information;
- extend the COPPA Rule to cover persistent identifiers that can recognize users over time and across different websites or online services, such as IP addresses and mobile device IDs; and
- close a potential “loophole” that had allowed kid-directed apps and websites to allow third-party plug-ins such as Facebook and Twitter to collect personal information about children without a parental notice. Operators of those plug-ins now will have to seek parental consent if the “actual knowledge that they are collecting information through a child-directed website or online service,” and any site that is directed to children that integrates outside services, such as plug-ins, that collect personal information also will be defined as operators and must comply with the Rule. Note that the expanded definition of ‘operators’ does not extend the COPPA Rule to platforms such as Google Play or the App Store, if the platform merely offers the public access to the child-directed apps, rather than integrating them into the platform itself.
While the amendments also try to strengthen data security protections by requiring that covered website operators and online service providers take reasonable steps to release children’s personal information only to companies that are capable of keeping it secure and confidential, and requiring that covered website operators adopt reasonable procedures for data retention and deletion, most of the “pain” of complying with the updated COPPA Rule will probably be felt by operators of apps, who now will have to interpret the COPPA Rule as it applies to the hundreds or thousands of sites from which their apps may be linked.
The amendments go into effect on July 1, 2013.
For more information, read the FTC overview (http://www.ftc.gov/opa/2012/12/coppa.shtm), the full text of the amendments (http://www.ftc.gov/os/2012/12/121219copparulefrn.pdf), and the results of the second survey on kids’ apps (http://www.ftc.gov/opa/2012/12/kidsapp.shtm).
*Some of the key findings from the survey:
- Almost 60 percent of the apps surveyed transmit data to the app developer or to an advertising network or analytics company.
- Many contain advertising and links to interactive features, including shopping features.
- Only 20 percent of apps disclose any information about the app’s privacy practices.
Tobacco Companies Ordered to Run Corrective Advertising for Blowing Smoke About the Hazards of Smoking
November 30, 2012, Posted by John Pickerill
A federal judge recently ordered the relatively unusual penalty of corrective advertising in connection with a 1999 Justice Department case accusing members of the tobacco industry of racketeering under the Racketeer Influenced and Corrupt Organizations (RICO) Act. The tobacco companies will soon be required to publish statements stating a court found them guilty of lying about smoking hazards and disclosing a litany of health risks associated with tobacco use. RICO was originally enacted to target organized crime and provide a mechanism for trying leaders of a crime syndicate for acts they ordered other people to do. Remedies for RICO violations include measures to prevent future transgressions, and the Justice Department was successful in arguing that corrective advertising would have such a deterring effect in this case. I think it requires a unique set of facts for RICO to apply in a false advertising case, but it will be interesting to see if government agencies turn to RICO as a standard enforcement tool against unscrupulous advertisers.
Check out the court order here.
Coming soon to a country near you: Canada’s e-mail marketing regulations. Initial guidelines leave unanswered questions
November 21, 2012, Posted by Hiep Pham and Asmah Tareen
U.S. companies that send marketing e-mails to customers in Canada, have been long awaiting further news and guidance about Canada’s Anti-Spam Legislation (CASL), which was passed in December of 2010 but has not yet gone into effect. The timing of enforcement has been delayed several times over the past few years. It is currently anticipated that Industry Canada, the national department of industry, will prepare final regulations to be put into effect, after a notice and comment period, in early 2013.
CASL, which is broader and more restrictive than its U.S. counterpart CAN-SPAM, has left business owners wondering if and how to modify their marketing practices in order to comply with Canada’s new regulations. While CAN-SPAM focuses on commercial emails, CASL broadly covers a variety of commercial electronic messages (CEMs) including text messages and messages sent over social media. Perhaps most notably, CASL require recipients of CEMs to “opt in” either expressly or impliedly before a business can send messages to them, something not required by CAN-SPAM.
Last month, the Canadian Radio-television and Telecommunications Commission (CRTC) finally provided some initial guidelines on obtaining express consent. Highlights include the following:
- Consent generally requires an affirmative action by the recipient, like typing an email address into a field or checking a box to receive emails. Express consent cannot be obtained through opt-out consent mechanisms. Any option to check a “receive emails” box should not be checked by default.
- Requests for consent cannot be bundled with requests for consent to general terms and conditions of use or sale.
- Once express consent is received, confirmation of this receipt should be sent to the user.
- An unsubscribe mechanism must be quick and easy to use. Acceptable methods include a link in an email leading to a webpage where the user can unsubscribe, or in the case of an SMS message, the user should have the choice between replying with the word “STOP” or “Unsubscribe” and clicking on a link leading to a webpage where the user can unsubscribe.
- Separate consent must be obtained for each regulated act. For example, a user must be able to give consent for installation of a computer program while refusing to grant consent for receiving CEMs.
While the guidelines provide direction on how to obtain express consent from recipients, they do not give much insight into how the law will view implied consent. CASL recognizes implied consent by consumers who have existing business relationships with a company if have purchased from the company in the past two years or have sent an inquiry to the company.
Compliance with the opt-in provisions of CASL would conceivably require companies to audit their marketing lists to determine which customers qualify as existing customers (i.e. have given implied consent) and which customers must be contacted in order to obtain their express consent before further marketing e-mails can be sent to them.
Sentence Diagramming before the U.S. Supreme Court
October 30, 2012, Posted by Paul Thomas
Yesterday the U.S. Supreme Court heard oral arguments in the closely watched copyright case of Supap Kirtsaeng v. John Wiley & Sons, Inc. The case concerns an interpretive conflict between two principles codified in the Copyright Act. One is the First Sale doctrine, which holds that once a copyright owner has made a lawful sale of a particular copy of a copyrighted work, the owner’s rights are exhausted and the owner can no longer control what happens to that particular copy, which can then be resold, leased, given as a gift, or even destroyed without risk of copyright infringement liability (Section 109(a)). The other is the Importation Ban principle, which holds that importing into the U.S., without permission of the copyright owner, copies of copyrighted works obtained overseas constitutes copyright infringement (Section 602(a)). The case arose when Supap Kirtsaeng, a Thai student pursuing a doctorate in California, asked family and friends in Thailand to purchase copies of foreign edition textbooks published by Wiley Asia and ship them to Kirtsaeng in California, so that Kirtsaeng could then sell those copies on eBay to U.S. customers. Wiley sued Kirtsaeng for copyright infringement under the §602(a) Importation Ban, and Kirtsaeng invoked the §109(a) First Sale doctrine as a defense.
The heart of the dispute is the interpretation of a phrase that occurs in §109(a) and says that the First Sale principle applies to copies “lawfully made under this title.” For Wiley, the key language is “under this title,” which Wiley glosses as “pursuant to Title 17” in reference to the Copyright Act, and so, for Wiley, the whole phrase applies only to goods made in the United States and restricts the First Sale principle in accordance with U.S. borders. For Kirtsaeng, the key language is “lawfully made,” which Kirtsaeng glosses as “made with the authority of the copyright owner,” so that the whole phrase can be interpreted to allow for manufacture anywhere in the world so long as the manufacturing is made with the authority of the copyright owner and in accordance with Title 17. If the Supreme Court adopts Kirtsaeng’s interpretation, Kirtsaeng has no liability, and if the Court adopts Wiley’s interpretation, Kirtsaeng is an infringer.
Counsel for Kirtsaeng began his argument by telling the Court that “Our definition is the more consistent with the English language,” which was not an argument that Kirtsaeng made in his briefs but which sounded the parsing tone of some of the argument on both sides. Returning to this point in the four minutes he allotted for rebuttal, he said the following:
“Justice Kagan asked a question about essentially sentence diagramming. Our view is that ‘under this title’ modifies ‘lawfully.’ You use the U.S. metric of U.S. law to figure out whether it’s lawful. The government’s and Wiley’s position is that ‘under this title’ modifies both ‘made’ and ‘lawfully.’ At least the way I learned grammar, you can’t use the same phrase to modify both terms.”
Although they would have risked being escorted out of chambers by Secret Service agents, any grammarians in the gallery might have been tempted to shout “Why not?” at this declaration of Kirtsaeng’s counsel, which was offered without any citation to authority. In my experience, the centuries-old pliancy of the supple hodge-podge of Anglo-Saxon, French, Latin, and Greek which we call English imposes no such inflexible restriction on the applicability of adverbs. H.W. Fowler, the grammarian’s grammarian, makes no mention of any such rule in A Dictionary of Modern English Usage (first published in 1944), and, in the context of linking verbs (which Fowler hilariously terms “copulative verbs”) he suggests that multiple modification by an adverb of both parts of a compound verb is entirely permissible: “it is a delusion to suppose that the insertion of an adverb between the two parts is a solecism, or even, like the splitting of the infinitive, a practice to be regarded as abnormal” (p. 449).
Unless a better authority than H.W. Fowler comes forward to support Kirtsaeng’s argument that there’s no double-dipping for adverbs, then it appears that, at least on the level of English grammar, both Wiley’s and Kirtsaeng’s interpretations stand up, and so the Supreme Court will have to look for other grounds on which to sort out this apparent collision of provisions in the Copyright Act.
Lime Wire’s Infringement File
October 11, 2012, Posted by Lora M. Friedemann
One thoughtless email can make or break a case. Six major television and film studios recently moved for summary judgment in a copyright infringement case against Lime Wire, LLC, a file-sharing service provider. The studios contend that Lime Wire induced users to illegally download copyrighted software. Lime Wire did not help its cause by maintaining a file called “Knowledge of Infringement.” If Lime Wire somehow survives summary judgment, the file will be Exhibit 1 at trial.
For more information click here.
Political False Advertising: A Self-Preserved License to Lie
October 11, 2012, Posted by John Pickerill
I’ve always found it remarkable that false advertising principles don’t apply to political advertising. With the election approaching, we’re now constantly being bombarded with political messages that are either misleading or flat-out false. It’s interesting, and awfully telling, that the people in charge of making our laws have essentially preserved their own right to lie. These are the same politicians who believe Americans need to be protected from their own stupidity when it comes to buying cereal or the size of soft drinks. However, they have no qualms about misleading the public, and hiding behind the 1st Amendment, to get elected. You’d think we’d demand more from our government leaders than we do from our soft drink companies and toilet paper manufacturers. As we head into the heart of the election season, remember, trust, but verify.
For more information click here.
Caveat for Copyright Holders: Don’t Sit on your Claims
October 11, 2012, Posted by Ted Koshiol
Copyright owners face many challenges in this digital age, not the least of which is the ease with which creative works like music and movies are illegally distributed over the internet. Merely tracking down individual copyright violators can be time consuming and expensive, to say nothing of the costs and uncertainty associated with litigating against those individuals.
Over the last several years, an increasingly popular enforcement tactic has been the use of ‘mass joinder’ suits. Without going to court, copyright owners (or their attorneys) can go to Internet Service Providers (ISPs) to get the Internet Protocol (IP) addresses of computer users that have illegally downloaded or streamed a particular copyrighted work through various Peer-to-Peer file-sharing websites. Typically, the copyright owner then files a single lawsuit against hundreds or thousands of anonymous “John Doe” defendants, accusing each of copyright infringement. Once the lawsuit is initiated, the copyright owner can use the court’s subpoena power to get the names of the individuals associated with the IP addresses.
For more information click here.
Vegas Nightclub, Manhattan Celebrity Hot Spot…Small Family-Owned Restaurant in Maine?
October 11, 2012, Posted by Laura Myers
Which of these three isn’t like the other? According to Tao Licensing, LLC, the company that runs the Asian-themed restaurants/nightclubs in Las Vegas and New York, they are all the same…or at least likely to be confused by the average consumer. Unlike the trendy celebrity hangouts of TAO Las Vegas or TAO New York, the family-run Tao restaurant in Brunswick, Maine seats about 40 people with a bar that seats only six. Contrast that with TAO New York that has 12,000 square feet and seats 300 people on three separate levels and TAO Las Vegas with more than 60,000 square feet including a beach area complete with a Jacuzzi and a wading pool. Despite these differences, last week, Tao Licensing filed a federal lawsuit accusing the Maine restaurant of trademark infringement and dilution, unfair competition and cybersquatting. Is Tao Licensing simply protecting its mark or is this another case of trademark bullying? It will be interesting to see if “Tao Maine” uses social media to combat Tao Licensing’s allegations like similarly-situated companies have done in recent years. For more information, see the article below.
For more information click here.
Is the Google Library Project Half Way Out of the Woods?
October 8, 2012, Posted by Paul Thomas
On Thursday, October 4, 2012, the Association of American Publishers announced that it had reached a settlement with Google, Inc. in regard to their seven-year-old copyright dispute over the Google Library Project, under which Google planned to scan and make available to the public every book ever published in digital form. The precise terms of the deal have not yet been made public, but Google has backed away from the “opt-out” model that contributed to derailing its proposed settlement in 2011, and, instead, Google has agreed to an “opt-in” model: going forward, publishers will have to negotiate and execute discrete and individual deals with Google for scanning their complete catalogs of book publications.
Settling with the AAP may mean that Google is half way home, but the more difficult litigant in the seven-year-old dispute, the Author’s Guild, is still proceeding with its class action lawsuit against Google. When the Author’s Guild tried to settle with Google in 2008, hundreds of its members who are individual members of the class, stridently objected, and some, like the eminent Ursula K. Le Guin, even resigned from the Guild (see my earlier article: “A Day in Court for the Google Books Settlement.” Further, the settlement was eventually rejected by the presiding U.S. District Court Judge, Denny Chin. Although some commentators have been hopeful that the opt-in model will appeal to members of the Authors Guild, it is difficult to see how the opt-in model will solve the problem of the many orphaned works (i.e., works still protected by copyright but whose authors are deceased and whose heirs or successors in interest are unknown) that Google wants to digitize: for orphaned works, there is nobody around to opt-in. One of the main reasons why Judge Chin did not approve the earlier settlement was the potential for Google to have a near monopoly over the millions of older, out-of print books that constitute a large portion of the orphaned works. So, even though, like the Jarndyce case in Bleak House, it has already been going on for seven years, the Authors Guild’s class action suit against will continue.
Proposed Legislation for the Protection for Fashion Design Could be The Right Fit
October 3, 2012, Posted by Asmah Tareen
The fashion industry has long complained about the fact that, unlike European law, U.S. intellectual property law does not offer protection for those who create unique fashion design. Certainly, the prospect for profiting from one’s efforts in creating unique fashion has become grimmer in the age of technology when a designer’s new collection can be immediately photographed, copied and mass produced in China for distribution in strip malls in Minnesota before the designer has even had an opportunity to sell her originals in New York City and Milan.
To read more, click here.
NLRB Finds Costco’s Policy Prohibiting Defamation Unlawful
September 28, 2012, Posted by Norah Olson Bluvshtein
Just when we thought the National Labor Relations Board (“NLRB”) had been noticeably quiet on the social media front, it came out with a ruling that has brought our attention back to the issue of “troublesome” employee policy language.
For more information click here.
‘Big Data’ Drives Hiring Decisions
September 21, 2012, Posted by Steve Helland
Harnessing the predictive power of ‘Big Data’ can help companies make better hiring decisions. At least that’s what the applicable technology vendors such as Evolv claim. An interesting article in the Wall Street Journal describes the trend, technology, and some legal risks.
My take:
- Big Data can deliver amazing results. And this is just the beginning.
- As Big Data influences more significant decisions such as whether to hire, there will be greater legal scrutiny on the methods, validity, and unintended consequences such as a disproportionate negative impact on minority groups.
- If you are a potential customer, push the vendor to demonstrate the scientific validity of their methods generally and as specifically applied to your environment. Don’t accept just a few colorful anecdotes.
- If you are a potential customer, require the vendor to stand behind their product and indemnify your business for legal claims based on the technology and methods.
Congratulations!
September 20, 2012
Congratulations to our colleague Asmah Tareen whose article on the Louboutin trademark dispute was published by the magazine Rebellious.
For more information click here.
Confusion Logs May Not Hold Water at Trial
September 11, 2012, Posted by Laura Myers
The Eighth Circuit recently held that an internal “log” of instances of confusion was inadmissible double hearsay. In The First National Bank in Sioux Falls v. First National Bank South Dakota, Nos. 11-1568/1683 (8th Cir. May 25, 2012), the First National Bank South Dakota (South Dakota) appealed from the District of South Dakota’s entry of a permanent injunction against it as a remedy for trademark infringement and unfair competition claims brought by The First National Bank in Sioux Falls (Sioux Falls). One of the issues raised on appeal was whether a “confusion log” compiled by Sioux Falls employees should have been admitted into evidence.
For more information click here.
These Shoes Were Made for Trademarking
September 6, 2012, Posted by Asmah Tareen and Paul Thomas
Yesterday the Second Circuit struck a compromise between Louboutin and Yves Saint Laurent in the closely watched case of fashion houses dueling over red-soled high-heeled shoes. The Court held that a single color (in this case, Louboutin’s signature shade of “China Red” glossy lacquer on the soles of women’s high fashion shoes) may indeed serve as a legally protected trademark in the fashion industry. However, the Court also limited the scope of Louboutin’s trademark rights to shoes in which the red sole contrasts with the color of the “upper” (the remainder of the shoe). The Court thereby affirmed the District Court’s denial for a preliminary injunction against YSL’s marketing of monochrome red shoes with red soles. This analysis and decision recognizes the distinctiveness of the Louboutin red outsole, while allowing YSL and other manufacturers to produce monochrome red shoes with red uppers and outsoles without infringing Louboutin’s trademark rights. Thus the ruling also accords with a fundamental policy of trademark law that trademark rights must not be so extensive that they exclude competition within an industry.
The Court made a useful and extensive review of the test for “aesthetic functionality” of trademark design features in trademark law, as articulated by the U.S. Supreme Court in its 1995 Qualitex Co. v. Jacobson Products Co., Inc., opinion, on which both the Second Circuit and the District Court relied (see the earlier practice alert on this case: “Seeing Red,” posted on January 27, 2012). Under this test, a design feature, like a color, cannot serve as a mark or part of a mark if (a) it is essential to the use or purpose of the product, (b) it affects the cost or quality of the product, or (c) it hinders competition. The Second Circuit reversed the District Court’s application of this test in ruling that Louboutin’s red outsoles could not serve as a mark because the red soles are aesthetically functional because it was based not on a detailed factual analysis as required under Qualitex but rather on an odd theory (which the Second Circuit derided as having no authoritative support) that “there is something unique about the fashion world that militates against extending trademark protection to a single color.” The fashion industry has long argued that U.S. law should offer intellectual property protection of fashion design. Citing Qualitex, the Second Circuit said “the Supreme Court specifically forebade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industrial context” and that “the District Court created just such a rule.”
Although it discussed aesthetic functionality at length, the Court did not apply the aesthetic functionality test in making its compromise ruling; instead, the Court analyzed the facts of Louboutin’s uses of its red outsoles to determine that Louboutin’s color mark, when it contrasted with the color of the remainder of the shoe, had acquired “secondary meaning” as a distinctive symbol that identifies the brand. However, the color mark had not acquired distinctiveness on products on which the uppers of the shoes were also red.
Does this mean fashion houses will start claiming exclusive trademark rights to single colors? Will Dolce & Gabbana stop others from selling black framed sunglasses? Unlikely. The case certainly raised concerns of other “color claimers” like Tiffany & Co. wanting to protect its trademarked “Tiffany blue” packaging and supporting Louboutin’s legal case by submitting an amicus brief. However, as Tiffany’s website notes, “Over time, Tiffany’s devoted clientele came to associate the vibrant blue box with this special relationship and the highest standards of excellence.” (emphasis added). As both Tiffany and Louboutin can attest, getting a color to achieve secondary meaning as a distinctive symbol in the public mind is not achieved quickly or cheaply. As the Court’s analysis points out, Louboutin has been selling red-soled shoes for 20 years and invested significantly in building the brand that has become widely recognizable.
Such brand-building and maintenance takes time and care, both on the macro-marketing level and on the micro-level of an individual pair of shoes, which is why Louboutin’s website provides advice for the care and maintenance of the red lacquer outsoles. Louboutin’s mark is, after all, meant to be worn, and the gritty world under a woman’s feet can be hard on trademarks.
The Joy of Unoriginal Thinking
August 24, 2012, Posted by Paul Thomas
Last week the Second Circuit reaffirmed the old copyright doctrine that brilliance, originality, and a high level of creativity are not prerequisites for copyrightability, and at the same time it clarified a misinterpretation of the Architectural Works Copyright Protection Act (“AWCPA”). The opinion is Scholz Design, Inc. v. Sard Custom Homes, LLC.
In the 1980s, Scholz Design created blueprint architectural drawings for three homes and, after registering the copyrights in the blueprints, subsequently licensed the drawings to Sard Custom Homes for construction. After the license expired, Sard apparently posted the drawings on the Internet, and in 2010, Scholz sued Sard for copyright infringement. Sard raised two arguments in a motion to dismiss the complaint: first, that the drawings were not copyrightable because they were created before AWCPA was enacted in 1990, and, second, that the drawings were not copyrightable because “they contain insufficient detail from which a building could be constructed.” The district court agreed with Sard’s arguments and said that “copyright protection extends to the component images of architectural designs to the extent that those images allow a copier to construct the protected design” and because “the copied images do not fulfill the intrinsic function of an architectural plan … the act of copying them does not violate any right protected by a copyright for architectural technical drawings.” Based on that reasoning, the district court granted Sard’s motion to dismiss.
Scholz Design appealed the ruling, and rightly so, for the Second Circuit rejected the district court’s reasoning and reversed the ruling. “Copyright protection of a pictorial work, whether depicting a house, or a flower, or a donkey, or an abstract design,” said the Court, “does not depend on any degree of detail.” Grounding this statement in law, the Court reaffirmed the 1991 opinion of the U.S. Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co. that “To qualify for copyright protection, a work must be original – that is, it must be independently created by the author and possess at least some minimal degree of creativity.” The Feist opinion further emphasizes that the hurdle of creativity an author must leap is not high: “The requisite level of creativity is extremely low; even a slight amount will suffice.” So much for brilliance: it may help your work win praise with the critics, but it is not a precondition for copyrightability.
The Court went on to emphasize that the fact that the drawings in this case are blueprints has no significance to the outcome: “The rights Scholz claims in this suit derive from the general copyright law, and not from the AWCPA, which has no relevance to the suit … Scholz is not alleging infringement under the AWCPA, but under the preexisting protection of the Copyright Act for pictorial works.”
Then, even though the case did not involve the AWCPA, the Court provided helpful elucidation of that 1990 Act: “The AWCPA did affect the copyright protection that … has long extended to architectural plans, drawings, and blueprints … the AWCPA extended copyright protection to physical buildings.” This means that “prior to the passage of the AWCPA, courts had held that use of copyrighted architectural plans to construct a building would not constitute infringement, but then as now, copying those plans would.” So, after the passage of the AWCA, which protected buildings as three-dimensional copyrighted works, analogous to the copyright protection granted to sculptures, the owner of blueprints possesses copyright protection for the blueprints as pictorial works and for the building built from the blueprints under the AWCPA.
So the Second Circuit has bestowed happiness in two ways in this opinion: it clarifies some muddled thinking about the applicability of the AWCPA, and it reassures us that (with respect for poets like William Blake and Samuel Taylor Coleridge) we do not need to be visionary and original writers to achieve copyrightability for our writings.
A Social Bookmarking Service Passes Judicial Scrutiny under the Copyright Act, or Does it?
August 10, 2012, Posted by Paul Thomas
On August 2, 2012, the Seventh Circuit Court of Appeals, in an opinion written by Judge Richard Posner, vacated a federal district court’s granting of a preliminary injunction against myVidster for infringing the copyright in videos owned by Flava Works, Inc. The opinion is Flava Works, Inc. v. Marques Rondale Gunter, dba myVidster.com (7th Cir. 2012).
MyVidster (www.myvidster.com) describes itself as “a social video bookmarking service” that allows its visitors to “collect, share and search” videos and also “explore video collections from other users.” A “bookmark” consists of a thumbnail still image from the video, which, when clicked on, opens a sub-page on myVidster’s site and triggers an embedded web address, and coded instructions for displaying the video. According to the Court, “by clicking on the page, other visitors to myVidster can now view the video – but on the server that hosts the video, not on myVidster’s website; the bookmarked video is not posted on myVidster’s website.” Posner distinguished this process from that of YouTube: “It’s like YouTube, except that YouTube hosts the videos it provides access to and myVidster … does not.”
Flava provides videos for a fee but allows subscribers to permanently download the videos they pay for and store them on their computers for “personal, noncommercial” use only. Flava sued myVidster for copyright infringement because users of Flava’s site were providing bookmarks on myVidster to videos behind Flava’s “pay wall.” The Court said that the infringer is not myVidster; rather, “the infringer is the customer of Flava who copied Flava’s copyrighted video by uploading it to the Internet” and “there is no evidence that myVidster is encouraging them, which would make it a contributory infringer.”
Aside from its support for the non-infringement of hyperlinking, even if such hyperlinks take an internet user to infringing content, which other courts have supported as well (perhaps most notably, the Central District of California in the 2000 Ticketmaster Corp v. Tickets.com Inc. case), the opinion has two highly interesting aspects, both of which it passes over lightly and without substantive analysis.
The first concerns the Digital Millennium Copyright Act (“DMCA”). Posner points out that by enacting the DMCA, Congress tried to prevent an online service provider, such as a social bookmarking service, from having to be “a policeman of copyright law” by providing a safe harbor from copyright infringement liability when “referring or linking users to an online location containing infringing material” if it complies with the DMCA’s conditions, which include disabling infringing content upon receiving a takedown notice from a copyright owner. Flava argued that myVidster did not comply with the DMCA because it failed to act on Flava’s takedown notices. Apparently, that argument had no traction with the Court: Posner simply said “this is irrelevant unless myVidster is contributing to infringement; a noninfringer doesn’t need a safe harbor.” Posner says, in effect, that the DMCA is inapplicable. He does not say why, even though the case clearly involves “referring or linking users to an online location containing infringing material,” and even though myVidster posts a copyright statement on its site in which it proclaims its commitment to DMCA compliance.
The second concerns myVidster’s practice of “framing.” Many parties and courts have questioned the legality this practice, which occurs when a website provides a link to content on another website or server and, when the link is clicked upon, the content appears on the website providing the link and framed by that website’s bordering graphics and advertising (see, as a notable example, the complaint in The Washington Post Co. v. Total News, Inc. (S.D.N.Y. 1997)). Posner describes this framing when describing a myVidster user’s experience: “He’s watching [the video] through a frame that myVidster has put around it, containing ads…. He may think, therefore, that he’s seeing the video on myVidster’s website [,b]ut actually the video is being transmitted directly from the server on which the video is stored to the viewer’s computer.” Posner provides no further comment on this framing practice, either on its potential for consumer deception (even though he acknowledges that in his description), or on the fact that the act of downloading the video from the hosting server to the user’s computer, creates, within the frame, a copy on the user’s computer (albeit a temporary download file), which perhaps does have significance in a copyright infringement analysis.
The silence of the Seventh Circuit on these two salient aspects of this case raises the question whether Flava will write a writ of certiorari to the U.S. Supreme Court.
Balancing the Good and the Good when Public Policies Conflict
August 2, 2012, Posted by Paul Thomas
In certain contexts, such as when an entity vested with state authority – in this case, the University of Alabama – tries to enforce trademark rights against an artist who portrays the trademark in an expressive work of art, the enforcement attempt raises a constitutional issue under the First Amendment.
In 1979, a painter named Daniel A. Moore started painting works of art depicting famous historic highlight moments from Alabama football games. Moore’s paintings featured realistic representations of Alabama’s uniforms, including the helmets and logos of the Crimson Tide. Moore sold, licensed, and reproduced his paintings on mugs and calendars for many years, and for at least nine years Moore marketed some of his products under formal licenses from the University. In 2002, however, the University informed Moore that he would need a license to depict Alabama’s football uniforms because the uniforms constitute trademarks of the University. Moore refused to subscribe to a license agreement based on the argument that he was not making trademark use of the uniforms; rather, he was portraying the uniforms as part of historic events. When the parties could not resolve their impasse, the University sued Moore in 2005. Neither party was pleased with the rulings of the federal district court, so both appealed to the Eleventh Circuit, which issued an opinion last month: Univ. of Alabama Board of Trustees v. New Life Art Inc.
The Eleventh Circuit performed its analysis partly with reliance on a cornerstone case for balancing the Lanham Trademark Act with the First Amendment: a 1989 decision from the Second Circuit called Rogers v. Grimaldi. The Second Circuit formulated a balancing test and asserted that “We believe that in general the [Lanham Act] should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” The Eleventh Circuit said “we have no hesitation in joining our sister circuits” which have applied the Rogers test by interpreting “the Lanham Act narrowly when deciding whether an artistically expressive work infringes at trademark.” The Court went on to find that Moore’s paintings were entitled to full protection under the First Amendment because Moore’s use of the University’s trademarks served “to memorialize and enhance a particular play or event in the University’s football history,” and, therefore, the interest in Moore’s free expression so outweighed the minimal risk of consumer confusion in regard to whether the use of the University’s trademarks had been authorized that no violation of the Lanham Act had occurred.
Let the Games Begin!
July 27, 2012, Posted by John Pickerill
With the Olympic Opening Ceremonies kicking off tonight, much of the country is caught up in Olympic fever. This is a good time to remind business owners and marketers to be extremely careful in planning any promotion around the Games. The U.S. and International Olympic Committees are the biggest bullies on the block, and their rights exceed the scope of protection generally afforded trademark owners. In the U.S., the Ted Stevens Olympic and Amateur Sports Act is a federal statute that, among other things, prohibits any unauthorized uses of the most popular terms that can be associated with the Olympics, not just unauthorized uses that violate the USOC’s trademark rights. As a result, make sure to tread lightly in aligning your business with the excitement of the Olympic Games. And, if the arrogance and heavy-handedness of the USOC starts to undermine your enthusiasm for the Olympics, switch over to a baseball game. The Twins can use all the support they can get.
For more information click here.
E-book Pricing Models: the Conspiracy Controversy Continues
July 25, 2012, Posted by Paul Thomas
On July 23, 2012, the Department of Justice issued a response to more than 850 public comments it received from publishing industry participants, author’s groups, and individuals in regard to its proposed settlement with Hachette Book Group, HarperCollins, and Simon & Schuster, which the DOJ had sued in April of this year, along with Apple, Macmillan, and Penguin, for violating anti-trust laws by colluding to fix e-book prices.
The DOJ’s complaint, filed on April 11, 2012, resulted from an investigation that the DOJ initiated in May of 2010 upon its observation that when Apple launched its iBookstore in April of 2010, “virtually overnight the retail prices of many bestselling and newly released e-books published in this country jumped 30 to 50 percent – affecting millions of consumers” (from the DOJ’s Response of July 23, 2012). The DOJ asserts that Apple and the five publishers had a common objective: to end Amazon’s aggressive sales of e-books at the below-cost-of-production price of $9.99, which had allowed Amazon to accelerate the sale of its Kindle products and acquire a large share of the e-book market in 2009-2010. Amazon had set the $9.99 price point under the then-current wholesale e-book pricing model, which allowed Amazon to set its own e-book prices so long as Amazon sold publisher’s traditional print editions at prices set by the publishers. According to the DOJ, Apple and the five publishers agreed to adopt an “agency” sales model under which Apple would, for a 30% agent’s sales commission, agree to sell e-books at whatever prices the publishers set, so long as the publishers (under an allegedly collusive “most-favored-nations” clause) agreed to refrain from offering better e-book pricing to other retailers. The most-favored-nations clause, asserts the DOJ, “was designed to protect Apple from having to compete on price at all, while still maintaining its margin,” and was designed to allow Apple to operate “with the assurance” that the five publishers “would raise retail e-book prices at all other e-book retailers” to comply with the allegedly collusive clause.
The Tunney Act requires the DOJ to solicit public comments before entering into settlement agreements with defendants Hachette Book Group, HarperCollins, and Simon & Schuster. In its introduction to its July 23, 2012 Response, the DOJ said it received “868 comments from individuals, publishers, booksellers, and even from Apple,” which the DOJ describes as “a key conspirator in the underlying price-fixing scheme.” The DOJ characterized the favorable comments as being supportive of “the government’s efforts to end the conspiracy that cost e-book purchasers millions of dollars, and to restore competition to the e-book market.” The negative comments, says the DOJ, “were submitted by those who have an interest in seeing consumers pay more for e-books, and hobbling retailers that might want to sell e-books at lower prices.” Some of the negative comments defended the efforts of the publishers to end Amazon’s dominance of the market, to which the DOJ responded that the federal anti-trust laws “were enacted to protect competition, not competitors.”
The tone of the Response implies the DOJ’s intention to go forward with its settlement with Hachette Book Group, HarperCollins, and Simon & Schuster, in a consent judgment designed to end collusion, restore competition which had been suppressed by the collusion, and ensure compliance with anti-trust laws. In the meantime, the publishing industry will continue to monitor the progress of the suit against the remaining defendants and the wide-ranging consequences the suit will have on future e-book pricing models.
“Nigeria” Scam Emails: Preposterous By Design
June 21, 2012, Posted by Steve Helland
Most financial-scam emails seem so obvious it is hard to believe that anyone still falls for them.
In a brilliant research paper, Cormac Herley of Microsoft persuasively argues that this obviousness is by design and to the advantage of the scammer:
“Far-fetched tales of West African riches strike most as comical…. By sending an email that repels all but the most gullible the scammer gets the most promising marks to self-select.”
To read the full research paper, click here.
You’ve Got to Admire POM Wonderful
June 21, 2012, Posted by John Pickerill
POM Wonderful has been fighting with government regulators for years about the legitimacy of various advertising claims it likes to make regarding the health benefits of POM Wonderful pomegranate juice. Every time POM is told they don’t have enough research to support a current health-based claim, they tend to craft a somewhat similar claim that almost invariably lands them right back in hot water.
Now, POM is essentially thumbing its nose at the FTC in new ads which feature statements made by a judge in an administrative court proceeding about the health benefits of pomegranate juice- without disclosing the fact that the court found POM could not substantiate the specific health claims being challenged by the FTC in that proceeding (see below link). While I admire POM’s moxie, I question the strategy of openly courting trouble with the FTC.
At my local grocery store, POM pomegranate juice is currently on sale for about $18 for a 48 oz. bottle. I suppose you would need to tout some fairly impressive health benefits to support that purchase price, but I would think the amount of money these legal battles siphon away from the bottom line could go toward making the product more financially accessible. Regardless, it’s a fun brand to watch from an advertising law standpoint.
For more information click here.
The Big Reveal!
June 14, 2012, Posted by Caroline G. Chicoine
Well, after over a one month delay, the Internet Corporation for Assigned Names and Numbers (ICANN) has finally published the list of those who have filed applications to operate new generic top level domain names (gTLDs), such as .yoga.
For more information click here.
Gucci Designs Famous Trademarks?
June 12, 2012, Posted by Lora M. Friedemann
A federal judge in Manhattan recently awarded Gucci $4.7 million on its trademark claims against Guess. The luxury brand prevailed on infringement and dilution claims, but received only a fraction of the damages it was seeking.
To read more about the court’s dilution analysis, click here.
Social Media Watchdog: Overselling “Green” Benefits Leads to Trouble
May 18, 2012, Posted by John Pickerill
Social media is becoming more effective than the FTC, your local AG or even the NAD in policing advertising issues. Despite the fact the cold cereal brand Kashi technically did nothing wrong under government standards, it appears consumers feel duped by the fact Kashi cereal is not as “natural” as claimed in its advertising. These consumers are now voting with their feet and their computers, as news of Kashi’s minor “unnatural” ingredient spreads across the internet. This serves as a good reminder about the perils of advertising in the social media age. It truly is a battle for hearts and minds on the internet, so being right or wrong under the law makes no difference. You have to stay on the right side of the social media mob.
For more information click here.
Turmoil and Stock Plunge at Allscripts: Lessons for All EHR Customers
April 30, 2012, Posted by Steve Helland
On April 27, 2012 the Wall Street Journal and other news sources reported major departures within Electronic Health Record (EHR) vendor Allscripts’ board and top management. Share prices dropped 36% that single day.
Given the dynamic nature of the Health IT industry, along with potential for significant consolidation in the number of EHR vendors, all entities in the market for an EHR vendor should consider the following items:
- Financial Due Diligence. Ask the potential vendor probing questions about their financial health and long term plans. And perform your own research.
- Source Code Escrow. Include in your contract with the vendor a provision that will release the source code to you in the event the vendor goes out of business or halts operations and support, so that you have greater ability to continue to function on your own.
- Warranty of Continued Support for 5-7 Years. Request a representation and warranty that the vendor will continue to support the software for 5-7 years. Include a provision that the vendor will provide at least 12-18 months notice of any discontinuation of support.
- Migration to Successor Product at No Cost. In the event a vendor discontinues a particular software system or brand, particularly if there has been a merger or a purchase of the vendor, there will usually be a successor product. Negotiate a provision that, in such a case, you will have the option to receive an equivalent license to the successor-software at no cost to you, and ideally a substantial discount on training and implementation.
Tweeting from the Courtroom: The Jury is Still Out
April 30, 2012, Posted by Asmah Tareen
Last week, media outlets flocked to a Chicago courthouse and fans tuned in to follow the criminal trial of the man accused of killing the mother, brother and nephew of Oscar-winner and singing sensation, Jennifer Hudson. Journalists and news junkies alike expressed disappointment over the decision of presiding Judge Charles Burns to ban the use of Twitter from inside the courtroom. While journalists are being allowed to bring in cell phones and send out periodic e-mails from the courtroom, the Judge has drawn the line at tweeting, citing that tapping out tweets may be distracting to jurors and witnesses. Moreover, opponents of courtroom tweeting have often argued that tweeting and real-time blogging of trials through social media sites can affect the integrity of the judicial process, particularly if witnesses and jurors are able to view the tweets and postings during the course of the trial.
Twitter supporters logically counter that witnesses and jurors can be instructed to refrain from accessing Twitter feeds just as they are restricted from otherwise following news about an ongoing trial. They further argue that Twitter is no more distracting than other typing or even good ol’ fashioned note-taking. It seems that the line between typing tweets and typing e-mails is an arbitrary one to draw. Even the ACLU has chimed in to express concern about restrictions on the use of the new tools of the day for disseminating the news.
At the heart of the issue may be the much older debate about whether and how trials should be made viewable to the larger public. It used to be the case that courtroom sketch artists were the only providers of nearly real-time visual snapshots from the inner workings of courtroom proceedings. While federal courts, under the Federal Rules of Criminal Procedure, still generally prohibit the taking of photographs and the broadcasting of judicial proceedings, state courts (where the majority of criminal trials are held) are increasingly lifting age-old bans on TV cameras in the courtrooms. Many judges view this as a way to make judicial proceedings – particularly in high profile cases that will be closely scrutinized -- more accessible and transparent.
Does Twitter -- with its direct and immediate dissemination of sound bytes of up to 140-characters -- make judicial proceedings more accessible or transparent to the public? Trials can be complex affairs. If journalists use the tool of tweets to break down the complex nuances into digestible bits for the public, then yes. But unfortunately, tweets often disseminate “breaking news” about celebrities breaking into tears in the courtroom. These broadcasts only give the public sensationalized images without the greater context or understanding of the larger judicial process. Are these little micro-broadcasts making the judicial system more accessible and transparent? Or has the constant dissemination of thousands of skewed micro-bytes made it more important than ever to allow the public the full view of judicial proceedings via live TV broadcasting? The jury is still out.
Cloud Computing Is Changing the Face of Business
April 25, 2012, Posted by Emily Duke
Cloud computing is changing the face of business, and expanding computing possibilities for organizations of all sorts and sizes. As with any new paradigm, there are some “kinks” to work through as organizations give up control and rely on vendors to manage tasks that were heretofore managed in-house. The U.S. Department of Commerce and National Institute of Standards and Technology recently issued guidelines for maintaining security and privacy in public cloud computing to help organizations (including the Federal Government) assess and find an appropriate balance between improved/expanded operations and adequate safety/controls. The report is available at http://csrc.nist.gov/publications/nistpubs/800-144/SP800-144.pdf (Guidelines on Security and Privacy in Public Cloud Computing, Special Publication 800-144). The report gives an overview of cloud computing and the security and privacy issues implicated by the increasing use of “the cloud.” It details threats, technology risks, and safeguards that organizations can take when using public cloud environments.
ICANN postpones publication of the list of newly applied for gTLDs originally scheduled for April 30, 2012
April 24, 2012, Posted by Caroline Chicoine
If you had not already lost faith in ICANN's ability to run the domain name system, don't expect to find religion after recent events at ICANN. Twelve days have passed since ICANN's TLD Application System (TAS) went down and all we know is that ICANN will provide an update on the timing of the reopening no later than this Friday, April 27, 2012. Funny, because the registry agreement that ICANN requires all new gTLD applicants to sign requires them to use "commercially reasonable efforts to restore the critical functions of the registry within 24 hours after the termination of an extraordinary event beyond the control of the Registry Operator and restore full system functionality within a maximum of 48 hours following such event, depending on the type of critical function involved." I guess a different set of rules apply when ICANN is responsible for the failure.
While ICANN tried to have us all believe it would have this mess cleaned up quickly (as of April 15, 2012, it was still keeping its April 30, 2012 target date to publish the applied-for new gTLDs), given it has committed to keeping TAS open at least five business days upon its reopening, it looks like the announcement identifying the list of applicants will not be until sometime in early May.
You can get all the latest information on the status of this outage at the TAS Interruption Update page.
The Uncertain Legacy of Costco v. Omega: When is a Sale a First Sale?
April 18, 2012, Posted by Paul Thomas
On December 13, 2010, the United States Supreme Court issued a split decision, with no opinion or explanation, in the Costco v. Omega copyright case: it went 4-4 because Justice Kagan, who had filed an amicus brief in the case while she was the U.S. Solicitor General, recused herself from the proceeding. The uncertainty that resulted from the split decision has already come back to knock on the door of the Supreme Court: the Justices granted the Petition for Certiorari in Supap Kirtsaeng v. John Wiley & Sons on April 16, 2012, an appeal from the Second Circuit’s ruling in favor of John Wiley & Sons.
Both cases concern the scope of the First Sale principle: once a copyright owner has made a lawful sale of a particular copyrighted work, the owner’s rights are exhausted, and the owner can no longer control what happens to that particular copy, which can then be resold, leased, or given as a gift without risk of copyright infringement liability. The retail market for used books, CDs, and DVDs is based on the legitimacy of this principle.
Both cases have similar facts. In the Omega watch dispute, Costco was obtaining authentic Omega watches through unauthorized foreign sales channels (i.e., the “gray market”) and then reselling them in its U.S. stores at discounted prices without Omega’s consent. When Omega sued Costco for copyright infringement, Costco claimed the First Sale principle as a defense. In the new case, which involves Wiley’s foreign edition textbooks, Supap Kirtsaeng, a Thailand national pursuing a doctoral degree in California, obtained foreign edition textbooks published by Wiley Asia through friends and family in Thailand and sold those copies at a profit through eBay’s online service to U.S. purchasers. Wiley sued Kirtsaeng for copyright infringement, and, like Costco, Kirtsaeng has invoked the First Sale doctrine as a defense.
The First Sale principle is codified in Section 109(a) of the Copyright Act, which defines it as applying to copies “lawfully made under this title” (i.e., under Title 15, the Copyright Act). In Costco v. Omega, Omega argued that the key language is “under this title” and that the whole phrase means made in the United States, where the U.S. Copyright Act applies. Costco argued that the key language is “lawfully made” and that the phrase means made with the authority of the copyright owner, and therefore lawful regardless of whether the making occurs in the United States or in a foreign jurisdiction. Under Omega’s interpretation, Costco’s First Sale defense fails because the First Sale principle only applies when copyrighted goods are manufactured in the United States, or when they are manufactured abroad but first sold in the United States with the authority of the copyright owner. Under Costco’s interpretation, the First Sale principle applies to copyrighted goods made anywhere in the world so long as such copies are made with the authority of the copyright owner.
The arguments in Kirtsaeng v. Wiley are likely to follow the same paths, but the advantage of precedent will lie with Wiley. The split decision in Costco v. Omega constituted a de facto affirmation of the Ninth Circuit’s 2008 ruling for Omega and against Costco’s expansive interpretation of the First Sale principle. Further, the Second Circuit has in essence agreed with the Ninth Circuit and has already ruled in favor of Wiley by holding that the First Sale principle does not apply to copies manufactured outside of the United States. Nevertheless, the 4-4 split in Costco v. Omega means that the scope of the First Sale principle is still uncertain in states outside of those two Circuits, so we must wait and see if this new case will bring clarity and national uniformity to this area of copyright law.
Is Trayvon Martin™ a Trademark?
March 30, 2012, Posted by John Pickerill
Whenever a social movement rallies around specific terms like TEA PARTY or OCCUPY WALL STREET, someone invariably files trademark applications in hopes of gaining exclusive rights to use the terms. However, the Trademark Office does not just provide a monopoly over a phrase to the first person who files an application. It can be difficult to establish these terms as registrable trademarks- and even more difficult to enforce them.
Trayvon Martin’s mother recently filed federal trademark applications for I AM TRAYVON and JUSTICE FOR TRAYVON (see below). In order to finalize these registrations, she will have to show evidence that these phrases are actually functioning in the marketplace as source-indicating trademarks. The Trademark Office can be quick to refuse these types of applications if the evidence submitted to prove trademark use is merely a shirt or a coffee cup with the phrase emblazoned on the front. This type of evidence tends to be considered “ornamental” in nature rather than an actual trademark indicating the source of the product.
The basic philosophy behind trademark protection is to allow consumers to make informed purchase decisions. If people love MOUNTAIN DEW® pop, they have a right to rely on the mark MOUNTAIN DEW® in the future as an indication that the product originates from the same manufacturer and tastes substantially the same as the product they’ve loved in the past.
If consumers will not believe that the use of the phrase I AM TRAYVON on products indicates that it emanates from a specific source (such as his mother), then the phrase probably isn’t functioning as a trademark and the Trademark Office is likely to refuse registration. In these situations, there are certain tricks of the trade a creative trademark attorney can use to produce evidence the Trademark Office will accept, but the strength of the mark will always be somewhat questionable.
Furthermore, if the owner of the registration is not prepared to enforce the mark, then the registration has limited value. The Trademark Office is not in the business of policing the marketplace or making sure that nobody is infringing a registered mark. As a result, it is likely to be extremely difficult and extremely expensive to try to prevent opportunists from making and selling their own JUSTICE FOR TRAYVON shirts, regardless of a trademark registration. As an added kicker, those opportunists might be within their rights to sell the shirts anyway.
As a result, trademark prospecting on social causes doesn’t guarantee financial success. Domain name registrations and lottery tickets probably give you better odds.
For more information click here.
For the Yankees, Trademark Law Plays Back-up to Copyright Law
March 22, 2012, Posted by Paul Thomas
On March 20, 2012, the New York Yankees filed a brief arguing for the Second Circuit Court of Appeals to uphold a ruling dismissing the claims regarding ownership of the common law copyright in the Yankees “Top Hat Logo,” which were filed by Tanit Buday, the niece of Kenneth Timur, who was commissioned in 1936 by Jacob Ruppert, then-owner of the Yankees, to design the Logo after Ruppert had discussed the matter with Timur’s sister Stella, who was Ruppert’s manicurist. Common law copyright no longer exists because it was abrogated and its protections were preempted by the federal Copyright Act of 1976. Before the 1976 Act went into effect (in 1978), common law copyright existed under state laws as protection for unpublished works because the federal Copyright Act of 1909 protected only published works that complied with the Act’s formalities. One of those formalities was that if a copyrightable work was published without formal notice of copyright, it lost all copyright protection. One of the arguments made by the Yankees to persuade the Court that Buday has no copyright ownership interest in the Logo is precisely that: once the Logo was published by being placed on uniforms without being attended by notice of copyright (no felt patches depicting a “©” were sewn onto those old woolen uniforms!), the common law copyright interest in the Logo was extinguished. Emphasizing this point, the Yankees’ brief contains the following curious sentence: “Therefore, the Yankees’ publication of the Logo without notice put the Logo in the public domain.” Does that sentence mean the Yankees are saying that anyone can use the Logo for any purpose? The answer to that is, crisply, “No.” The facts found by the District Court favor the view that the Yankees owned the copyright in the Logo as a commissioned work made for hire under the 1909 Act, but the Yankees’ ownership of the Logo as an intellectual property asset did not end when the copyright was extinguished through publication without notice. The reason is that the Yankees were not primarily concerned with using the Logo as a copyrightable work of art; rather, they wanted to use the Logo as a brand, and so trademark law picked up right where copyright law left off. Just at the instant when the common law copyright was expiring, the Yankees began using the Logo as a trademark to identify their professional baseball-related services and goods, and trademark ownership rights, protectable under both federal and state law, arise from such use in commerce. In the seventy-five years that the Yankees have used the Top Hat Logo, it has become one of the most famous brands in the world. Whether or not the Second Circuit will find that any of Ms. Buday’s claims have merit remains to be seen, but the Yankees’ ownership of the Top Hat Logo, based on trademark law, appears as solid as Derek Jeter’s fielding.
New Report on Social Media Provides No Bright Line Tests for Employee Conduct or Employer Policies
March 14, 2012, Co-authored by Teresa Thompson and Norah Olson Bluvshtein
Disciplining and terminating employees for “bad behavior” in social media continues to be a hot topic of discussion for all employers. As many of you know, these so-called “Facebook firing” cases have drawn the attention of the National Labor Relations Board (NLRB), which views social media sites as an open venue for employees to engage in activity protected by the National Labor Relations Act (NLRA).
To read more, click here.
Does the E-book Pricing Model Violate Antitrust Laws?
March 14, 2012, Posted by Paul Thomas
Twenty-eight summers ago, when we went to see Ghostbusters and watched the languidly flirtatious Janine Melnitz (Annie Potts) ask Dr. Egon Spengler (Harold Ramis) whether he likes to read in his spare time, we heard Spengler declare, with hilarious pencil-neck macho, that “print is dead.” Spengler was wrong for 1984, but will he be right for 2012? Fearful echoes of those words have been heard from several quarters over the past four days since, on March 8, 2012, the U.S. Department of Justice issued warnings to Apple and five major publishers – Simon & Schuster, Hachette Book Group, Penguin Group, Macmillan, and HarperCollins – that the DOJ was making plans to sue them for violating antitrust laws by allegedly colluding to fix prices for the sale of e-books so that people will not wholly abandon the hardcover and paperbound editions in favor of low-cost e-books. This recent development traces its roots to 2009 when the dominant model in e-book publishing was a wholesale model that allowed retailers to negotiate deals for selling publisher’s print editions while setting their own prices for e-books. Amazon used the model to make deals to sell print editions at the publisher’s high retail cover prices, but Amazon started selling e-books at $9.99 – in fact at a loss – in hopes of boosting sales for its Kindle e-readers while acquiring more of the e-book market share. The strategy worked, at least until Apple introduced the iPad in 2010. Apple was able to lure several major publishers away from Amazon with an “agency” sales model, so called because Apple did not want to set e-book prices itself, but rather, like an agent, Apple wanted a 30% commission on whatever e-book prices publishers wanted to set. Apple’s strategy worked too, which means that Amazon’s nearly 90% e-book market share has declined over the past two years, and, throughout the online market, the prices of e-books have gone up. Some industry participants, such as the Author’s Guild, have supported Apple’s agency model as fostering competition, but the DOJ may be troubled by the “most favored nations” clauses in Apple’s agency agreements, which prohibits publishers from allowing other retailers to discount e-book prices and may be interpreted as anti-competitive under law. While it may be that e-book prices will go down in the short term if the DOJ makes good on its threat to file suit, the long term consequences of the DOJ action are not yet possible to predict. The only thing that appears to be certain is that, at whatever price, overall e-book sales will continue to exceed the sales of traditional print media. Nevertheless I, for one, hope that in 2012 and for many years to come we will still value Egon Spengler’s declaration for the humor of Harold Ramis’s tone and delivery rather than for the truth of what Spengler asserts.
The Art of Words and the Words of Art
March 6, 2012, Posted by Paul Thomas
The Andy Warhol Foundation has filed an amicus brief in the Cariou v. Prince case, which is pending before the Second Circuit and concerns a dispute over whether appropriation artist Richard Prince’s uses of Patrick Cariou’s Yes Rasta photographs in Prince’s Canal Zone paintings constitute a fair use under Copyright law, which would excuse Prince’s having used the photographs without licensing them. (See my 2/8/2012 Practice Alert, “If it Transforms, is it Transformative?” for background on this case.) As Warhol was perhaps the most famous appropriation artist of the twentieth century, it was perhaps predictable that his Foundation filed its brief on behalf of Richard Prince. On the most intensely debated issue in the case, whether Prince’s use of the photographs are “transformative” (i.e., do Prince’s Canal Zone paintings use Cariou’s preexisting photographs in a way that creates new expression, new meaning, or a new message that is separate and distinct from Cariou’s?) the Foundation urges the court to refrain from adopting a “radically narrowed fair use standard that would protect little more than overt comment and criticism” and the Foundation asserts that the answer to the transformative test question “is plainly yes.” It is amusing to compare the language that the Foundation employs to describe Prince’s use of photographs as being transformative with Cariou’s language describing that use as non-transformative. Cariou states that “Prince tore 35 pages out of his first copy of Yes Rasta, drew on them, affixed the pages to a plywood board, and exhibited this work ….” By contrast, the Foundation states that Prince removed the photographs from Cariou’s “‘classic’ portraiture” and placed them in a “post-apocalyptic world” where Prince “added substantial new expression through his composition, presentation, juxtaposition, alteration, exaggeration of scale, and application of color and dramatic brushwork.” It does not take a princess-and-the-pea sensitivity to perceive the sarcasm in the phrase “exhibited this work” in Cariou’s brief, and it is equally difficult to refrain from smiling at the flurry of abstract four and five syllable terms of art criticism in the Foundation’s brief. What the Second Circuit will think of these descriptions is uncertain, but the appeal battle will be uphill for Richard Prince, since the federal district court ruled that his use of the Yes Rasta photographs was not a fair use. It is also uncertain whether the Foundation’s amicus brief will help Prince because while the Foundation asserts that Prince’s work “is highly expressive and conveys loads of new meaning,” the Foundation is less assertive when it comes to defining exactly what those “loads of new meaning” consist of: “The fact that meaning is difficult to verbalize, label, categorize or explain does not mean Prince’s work is not transformative;” instead, “it simply reflects the fact that the meaning of visual art does not always translate neatly into written words.” Rather than finding a load of meaning in that clever argument, the Second Circuit may find a load of something else.
The New Social Media Sensation is Running Into an Old Friend
March 6, 2012, Posted by John Pickerill
Whenever a new social media platform gets hot, I find myself looking for the hidden legal traps that might cool it off. In the case of Pinterest, the legal risk might as well have been pinned to my forehead. Taking images from other sources and posting them on Pinterest without authorization is fairly blatant copyright infringement. Maybe there are fair use or public domain defenses in some cases or the owners of certain images won’t have an incentive to sue, but I’m guessing we’ll start seeing some claims soon. Social media enthusiasts should always take note when the lawyers (like the one in the below link) start running for the exits.
For more information click here.
Well, There Goes My Beer Money
February 29, 2012, Posted by Paul Thomas
Many people have commented on the astonishing monetary penalties that have been imposed on individuals, some of whom have been students, found by courts to have infringed music copyrights by making unauthorized downloads of digital music files and sharing such files with their friends. Now one such person has petitioned the U.S. Supreme Court to review the constitutionality of the judicial process that has resulted in such high statutory damage awards which are, if not impossible, egregiously and extremely burdensome for young adults to pay. Joel Tenenbaum was a college student when the Recording Industry Association of America (“RIAA”) filed suit against him for copyright infringement for his sharing of 30 popular songs by means of filesharing software. Section 504(c) of the Copyright Act allows courts to impose a statutory damage amount between $750 and $150,000 per infringing act in cases of willful infringement. At the close of evidence in Tenenbaum’s trial, the judge instructed the jury to determine an amount between those parameters. The jury imposed $22,500 on Tenenbaum for each of the 30 songs, for a total penalty of $675,000. The judge, finding this amount to be unconstitutionally excessive, reduced the penalty to $67,500. When RIAA appealed the damages issue, the First Circuit reinstated the jury’s damages award and said that the trial judge should not have reached the issue of the constitutionality of the award. Not willing to accept the First Circuit’s decision, Tenenbaum filed his petition for writ of certiorari with the Supreme Court on February 13, 2012. The petition raises interesting questions. Does Section 504(c) require a court, before imposing a damages amount, to distinguish between an individual whose infringement is non-commercial and a corporate entity whose infringement was made for commercial purposes? Can a statutory damage amount be determined without any connection to the amount of actual damages caused by the infringement? And, should juries or judges be determining the amounts of statutory damage awards in copyright infringement cases? If the Court is willing to hear the case, it may provide helpful clarity in regard to future application of Section 504(c), and it may make Tenenbaum’s post-graduate financial burdens a little easier to bear. The case is number 11-1019 in the U.S. Supreme Court, Tenenbaum v. Sony BMG Music Entertainment et al.
No Restraining Order Against Uncle for Posting Family Photos with “Mean, Disrespectful Comments” on Facebook
February 22, 2012, Posted by Carrie Rosenberry
The Minnesota Court of Appeals recently refused to grant a harassment restraining order against a person’s relative who was posting family photos and mean commentary on Facebook. Aaron Olson petitioned for a restraining order against his uncle Randall LaBrie based on photos that LaBrie posted to his Facebook page of Olson as a child, including one in front of a Christmas tree. While Olson claimed the comments posted with the photos were “veiled threats against his life and safety,” the court found them to be mean and disrespectful but not within the statutory definition of harassment.
In Minnesota a court may grant a harassment restraining order against a person that is reasonably believed to have engaged in conduct that has “a substantial adverse effect on the safety, security, or privacy of another.” Here, the court held that “[c]omments that are mean and disrespectful, coupled with innocuous family photos, do not affect a person’s safety, security or privacy – and certainly not substantially so.”
Olson v. LaBrie, 2012 WL 426585 (Minn. App. Ct. Feb. 13, 2012)
For a copy of the decision, click here.
Do Wolves in E-books E-howl?
February 22, 2012, Posted by Paul Thomas
On February 16, 2012, Open Road Integrated Media, Inc. filed its answer to HarperCollins Publishers suit for copyright infringement regarding Open Road’s having published an e-book version of the 1973 Newberry Medal winning novel entitled Julie and the Wolves by Jean Craighead George (see my January 31, 2012 Practice Alert below for more on this case). Open Road denies that any of its activities have violated HarperCollins’ contract rights with George, denies that HarperCollins licensed the right to publish George’s novel in e-book form, denies that HarperCollins spent substantial funds promoting George’s novel, and denies that HarperCollins “ever intended to publish Julie of the Wolves as an e-book.” Open Road further asserts, as a defense, that its activities “were expressly authorized by a valid, written agreement with Ms. George, who retained e-book publication rights under the [contract with HarperCollins].” George has publicly supported Open Road in a statement reported in the Wall Street Journal on the day the answer was filed: “when I signed that contract in 1971, eBooks did not exist, so I could not have granted those rights.” George went on to say “I am with Open Road all the way.” Apparently, George has requested to join the lawsuit. While it is difficult to predict whether the parties will settle the suit at this early stage or proceed through discovery, the central issue still seems to be how the U.S. District Court for the Southern District of New York will interpret the language from the twentieth paragraph of HarperCollins 1971 contract with George: that paragraph delineates HarperCollins’ right to distribute George’s novel “through computer, computer-stored, mechanical or other electronic means now known or hereafter invented.” George and Open Road have asserted that commercialized e-books did not exist in 1971, but does the phrase “electronic means now known or hereafter invented,” as written and understood in 1971, embrace a future four decades later in which e-books have become a dominant revenue generating medium in the publishing industry?
How Google Maximizes Value of Big Data: Saying No to Privacy-By-Design
February 22, 2012, Posted by Steve Helland
Google’s recent Privacy Policy edits underscore some old news: Google makes lots of money by aggressively data-mining and monetizing all kinds of personal information. And although Google holds itself out as a good “corporate citizen” in a host of ways, it pushes the limits when it comes to privacy. As former Hamline Law Dean Jon Garon wrote in his blog: “[Google] does not wish to provide privacy and will make private transactions increasingly difficult…. [Google’s] approach is the opposite of the FTC privacy-by-design initiative.”
Click here to read the rest of Prof. Garon’s excellent post.
Michael Jordan Isn’t Getting the Calls Like He Used To
February 20, 2012, Posted by John Pickerill
A federal judge in Illinois determined that a grocery store ad congratulating Jordan on his induction into the Basketball Hall of Fame didn’t constitute “commercial speech,” making the use of Jordan’s name and number “no harm, no foul” from a trademark standpoint. I bet Jordan misses the good old days when referees were handing him titles. Somewhere, John Stockton, Karl Malone and the rest of the Utah Jazz are enjoying this court decision.
For more information click here.
A DMCA Compliance Paint-by-Numbers
February 14, 2012, Posted by Paul Thomas
The Ninth Circuit’s recent affirmation of the Federal District Court’s grant of summary judgment in UMG Recordings, Inc. v. Veoh Networks, Inc. can serve as a guide to online service providers (“OSPs”) seeking protection of the “safe harbor” provisions of the Digital Millennium Copyright Act (“DMCA”). If an OSP complies with the DMCA’s provision 512(c), the OSP can be insulated from copyright infringement liability that otherwise might ordinarily arise due to the infringing activities of customers who use the OSP’s services. Veoh operates a video sharing website, and UMG, a large music publishing company which owns both Motown and Def Jam, sued Veoh for direct and contributory copyright infringement because some of Veoh’s users were making unauthorized downloads of UMG’s music. Veoh, however, had been diligent in achieving its DMCA compliance, and so it filed a motion for summary judgment to get the District Court to declare that Veoh had found shelter from liability in the DMCA’s safe harbor, and it was successful, because the granting of the motion was affirmed by the Ninth Circuit. Other OSP’s who want to ensure their own DMCA compliance should look at the Ninth Circuit’s opinion closely.
If it transforms, is it transformative?
February 8, 2012, Posted by Paul Thomas
Appropriation artists deliberately borrow images (sometimes famous images, such as Andy Warhol’s uses of Campbell Soup labels) which have a known setting and recontextualize them in new works of art. Two years ago, a copyright infringement dispute arose between a photographer named Patrick Cariou and an appropriation artist name Richard Prince when Prince used photographs from Cariou’s book Yes Rasta in a series of collage-like works called the Canal Zone paintings (sample images can be found by searching online). Prince argued unsuccessfully in the federal district court that his use of the photographs is a fair use under copyright law: the fair use doctrine is a defense to a charge of copyright infringement that allows persons to make use, under certain conditions, of portions of copyrighted works without the permission of the copyright owner because the use is “fair.” Courts evaluate whether or not a certain use is fair on a case-by-case basis under a four factor test, one of which involves an examination of the purpose of the use. As part of that examination, courts look to see whether the use of the copyrighted work is “transformative.” This term has caused some analytical confusion because one of the exclusive rights enjoyed by a copyright owner is the right to prepare a derivative work of art by modifying an original work of art so that the original is “transformed,” which is the term used in the relevant section of the Copyright Act. However, just because a new work transforms an original, which makes the new work a derivative of the original, that does not necessarily mean the new work is “transformative” in a sense that meets the standard of fair use, especially if the derivative “transformed” work has been created without permission of the copyright owner. Traditionally, courts have found uses to be transformative, and consequently fair, if the new work has been created for purposes like literary criticism, cultural commentary, news reporting, teaching, scholarship, or research. Whether Prince’s art is transformative of Cariou’s photographs is one of the strongly contested issues in the Cariou v. Prince case, partly because Prince said, somewhat notoriously of the first Canal Zone, that he was trying to create “a balls-out, great, unbelievably looking great painting that had to do with a kind of rock-and-roll painting on the radical side, and on a conservative side something to do with Cézanne’s bathers.” This statement has been read by Cariou and by some friends of the bench who have filed amicus briefs in support of Cariou as a declaration that Prince was not trying to engage in any substantive cultural commentary in creating the Canal Zone paintings. Because it may be true that painters are not always the most articulate critics of their own works, the Second Circuit, where the case now stands on appeal, may not give as much weight to the implications of Prince’s assertion as Cariou would like. However, it is too early to tell where this case will go, but the art world is watching it closely, and, whatever the Second Circuit decides, this case may be the next copyright case to be petitioned to the U.S. Supreme Court.
SOPA & PIPA: Dead but not Forgotten
February 3, 2012, Posted by John Pickerill
I’m not usually a fan of government intervention in most circumstances, but I found the online industry’s response to the SOPA and PIPA acts a little over-the-top. Neither Act was close to being finalized or passed, so the industry appeared to be blindly protesting any type of government regulation rather than a specific regulatory framework. If the companies who are opposed to legislation really want to prevent government action, they should help find a solution to online piracy. Industry self-regulation is usually the only way to hold-off the feds. However, with the track record of many of these companies of encouraging any type of online behavior that will make them money (I’m looking at you Google and Facebook), I’m guessing some form of government regulation in this area is inevitable.
For more information click here.
And as imagination bodies forth the forms of things unknown … in 1971 …
January 31, 2012, Posted by Paul Thomas
HarperCollins Publishers has filed suit for copyright infringement against Open Road Integrated Media for reproducing and distributing an e-book version of the 1973 Newberry Medal winning novel entitled Julie and the Wolves by Jean Craighead George. While the case has just begun and Open Road has not yet even filed an answer to the complaint, the early commentary is focusing on the language of HarperCollins’s 1971 contract with George. The rights conveyed in the first paragraph concern publication “in book form,” and HarperCollins asserts in its complaint that “this grant is itself encompassing of the right to publish [George’s novel] as an e-book.” Viewed under the Second Circuit’s 2002 ruling in Random House, Inc. v. Rosetta Books LLC, which happens to be binding precedent in the U.S. District Court for the Southern District of New York where HarperCollins filed its suit, that assertion might be sitting on shaky ground, because the Second Circuit found that the language in Random House’s contracts with William Styron and Kurt Vonnegut which gave Random House the right to “print, publish and sell the work[s] in book form” did not include the right to publish in e-book format. However, HarperCollins’s contract with George contains language that was not included in the Random House agreements with Styron and Vonnegut: the twentieth paragraph allows HarperCollins to publish and distribute George’s novel “through computer, computer-stored, mechanical or other electronic means now known or hereafter invented.” Appearing in a contract executed in 1971 and long before e-books had been commercialized, the interpretation of the phrase “electronic means now known or hereafter invented” and determining whether the phrase embraces the e-book formats of today will likely be at the center of the case. That phrase carries signal importance for many more parties than HarperCollins and George because the “forms of things unknown” concept captured in that phrase appears in almost the exact words in almost every publishing agreement that has been executed over the last four decades. It is therefore an understatement to say that the publishing industry will be watching this case closely.
Seeing Red
January 27, 2012, Posted by Paul Thomas
The case of the red-soled high-heeled shoes was back in court this week, as Christian Louboutin and Yves Saint Laurent argued on January 24, 2012 before the Second Circuit Court of Appeals over whether Louboutin can be the only shoe producer that can use a shade of red called “China red” on the lacquered soles of women’s shoes. The case began in 2011 when Louboutin challenged Yves Saint Laurent over several products that, in Louboutin’s view, infringed its 2008 federal trade mark and trade dress registration for its lacquered red sole. In August of 2011, the U.S. District Court for the Southern District of New York denied Louboutin’s request for a preliminary injunction based partly on a finding that colors carry an aesthetic function in fashion, and, therefore, it is not appropriate to grant exclusive rights in a color to a single entity operating in the fashion industry. The U.S. District Court opinion was based partly upon Qualitex Co. v. Jacobson Products Co., Inc., a 1995 U.S. Supreme Court opinion in which the Court stated that a product feature is functional and cannot serve as a trademark if it is essential to the purpose of the product or affects the cost or quality of the product, and so, while the Court found no reason why colors could not serve as trademarks in some contexts, it restricted the ability of colors to serve as trademarks under the functionality test (514 U.S. 159 (1995)). Under this analysis, Owens-Corning has been able to maintain its exclusive right to make pink fiberglass insulation because the pink is non-functional, but whether Louboutin will be able to stop Yves Saint Laurent from making red-soled high-heeled shoes for women is now in the hands of the Second Circuit.
U.S.T.R. Identifies Worst Of The Offshore Online Pirates And Counterfeiters
December 27, 2011, Posted by Dean Karau
While the U.S. House of Representatives continues to consider the Stop Online Piracy Act (SOPA), which would authorize new tools to crack down on piracy and counterfeiting on foreign websites, this week the Office of the U.S. Trade Representative released a new report identifying the most notorious online pirates and counterfeiters based outside the U.S.
According to the report, “Globally copyright piracy on a commercial scale and trademark counterfeiting continue to thrive, in part because of the presence of marketplaces that deal in goods and services that infringe intellectual property rights.” The U.S.T.R. not only listed the most aggregious sites, but also gave credit to previously-listed sites which have cleaned up their act.
For a copy of the report, click here.
Government Mandate: No More Loud Commercials
December 19, 2011, Posted by John Pickerill
It currently requires some skill to simultaneously work the channel and volume controls on a tv remote to harmonize multi-channel viewing into a seamless visual and aural experience. Soon, the FCC will manage the volume controls for you. The government agency has adopted an order to put an end to loud tv spots. No more turning down the volume during commercial breaks and jacking it back up for the regular programming. While I have to admit loud commercials can be annoying, I find it a little disturbing that volume levels are now controlled by the government. It’s easy enough for consumers to turn the channel or boycott the advertiser if a spot goes too far, plus you’d think the government would have better things to do. Most importantly, it takes a lot of the skill out of channel surfing.
For more information click here.
Social Media Accounts are Property: Make Sure You Own Them
December 15, 2011, Posted by Steve Helland
It is increasingly reckless for companies to let employees conduct marketing and other business through social media (e.g., Facebook, Google+, LinkedIn, Twitter) using individual accounts held in their own names. Three recent cases demonstrate why:
- When a marketing employee was out on an extended medical leave, the employer accessed her Facebook and Twitter accounts to send marketing messages to clients and prospects. The employee sued the company under the “Computer Fraud and Abuse Act” for illegally accessing her personal accounts without permission. Maremount v. Susan Fredman Design Group.
- A former employee refused to turn over control of a Twitter account used in business. The court held that social media accounts may constitute a form of property that is protectable by the employer. Phonedog v. Kravitz.
- A departing employee and her former employer disagreed as to who “owned” a LinkedIn account. TEKsystems v. Horizontal Integration.
In addition to these cases, ownership and control of social media accounts is increasingly becoming an issue in mergers & acquisitions (M&A) due diligence and company valuation for high-tech businesses.
The legal solution: Make it clear that the company owns the social media accounts used to conduct business, and that company business should be done only with these company-owned accounts. Here are some ways to accomplish that:
- Include an additional clause on social media account ownership in the company’s legal agreements with its employees.
- Instruct employees to create new social media accounts for conducting business. The company should have a copy of the account login and password. If possible, the user profile should indicate that this is a company-owned account. The company account should be used for business-only and not any personal / family / social messaging.
- Adopt a policy in the employee handbook and provide a brief training to reinforce the messages above.
Behavioral Ad Industry Hopes Self-Regulation Will Deter Government Intervention
December 2, 2011, Posted by John Pickerill
Online advertisers are trying to head off Congressional action by voluntarily regulating online data collection. The ad industry in general has a good track record when it comes to self-regulation, so hopefully, these efforts will provide consumers with some level of comfort and transparency regarding the tracking of their online data. Also, I hope this self-policing placates politicians and prevents the aggressive legislation of behavioral advertising, because I kind of like when the computer magically knows what products I want to buy.
For more information click here.
“LEGO Group, the company that my brother and I love, is trying to take this site away from us…”
November 28, 2011, Posted by Dean Karau
Brothers Gavin (age 15) and Grayson (age 11) run a website for the fun of being able to show the world their Lego® creations. They even post a disclaimer on their site, located at http://legoworkshop.com:
We are NOT affiliated in any way with LEGO. All LEGO marks are trademarks of the LEGO Group.
That didn’t stop LEGO Juris A/S, owner of the Lego brand, from trying wrest the boys’ site away from them.
For more details, click on TRADEMARK TOPICS.SM
Free Speech Trumps FDA Graphic Tobacco Warnings
November 14, 2011, Posted by John Pickerill
Recently, Congress and the FDA have been working to implement new tobacco warning labels on cigarette packaging and advertising. According to the proposed FDA rules, the new warnings must cover the top half of the front and back of cigarette packs and 20 percent of printed advertisements must contain color graphics depicting the health consequences of smoking, including diseased lungs, dead bodies and rotting teeth. Big tobacco challenged the warnings as an unconstitutional violation of free speech, because the companies are being forced to “engage in anti-smoking advocacy” on behalf of the government. To survive constitutional scrutiny, any restraints on freedom of speech (including forcing a company to advocate a government position) must be “narrowly tailored” to a compelling government interest. In this case, the court appears to believe the interest in deterring smoking is legitimate, but the specific warnings being mandated are far from narrow. Stay tuned. The Obama Administration doesn’t take defeat well, so we probably haven’t seen the last of this issue. For the time-being, it’s good to know the First Amendment is still alive and kicking in this age of political correctness.
For more information click here.
Copyright Trolls Beware!
November 4, 2011, Posted by John Pickerill
This recent decision should make copyright trolls and all intellectual property bullies think carefully before choosing their next round of patsies. Borrowing a page from the dubious but successful practice of patent trolls, opportunistic companies have been acquiring copyrights for the sole purpose of suing for infringement. However, patent and copyright principles are different, so it’s not surprising that courts would shut-down this practice as it applies to copyrights. These types of predatory lawsuits undermine the copyright law incentive structure which attempts to balance the rights of the original artist against socially advantageous uses of those existing works by others. Patent law really doesn’t include this same “social utility” component, so the practice of patent trolling doesn’t run afoul of the underlying purpose of patent protection. (Although, it’s still pretty lame.) Hopefully, this recent decision will make all intellectual property trolls think twice before looking for their next easy score.
For more information click here.
A Cautionary Tale About Telling The Truth At The USPTO
November 1, 2011, Posted by Dean Karau
Filing a trademark application when you know entity A has priority in a confusingly similar mark can render your subsequently-issued trademark registration unenforceable, even against entity B’s use of a confusingly similar mark and over whom you have priority of use.
For more details, click on TRADEMARK TOPICS.SM
Occupying Wall Street – Or Joining It?
October 27, 2011, Posted by Dean Karau
As Liza Minelli sang in Cabaret, money makes the world go ‘round, so it’s not surprising that it didn’t take long for someone to see the branding possibilities in this new grassroot movement.
For more details, click on TRADEMARK TOPICS.SM
Making More Money Than You Or I, And Not Even Alive to Enjoy It: The Top-Earning Dead Celebrities in 2011
October 26, 2011, Posted by Dean Karau
Maybe you can’t take it with you, but you can sure keep it rolling in. In honor of the upcoming Mexican holiday, Day of the Dead, check out Forbe.com’s The Top-Earning Dead Celebrities for 2011.
For more details, click on TRADEMARK TOPICS.SM
Coca Cola May Sue You For Using The Word “AND”
(Just kidding)
October 26, 2011, Posted by Dean Karau
Coca Cola has its tongue firmly planted in its cheek (this time) about an over-the-top claim of trademark rights.
For more details, click on TRADEMARK TOPICS.SM
The CAR FRESHENER Folks May Sue You For Photos Like This
(Not Kidding)
October 26, 2011, Posted by Dean Karau
Watch out when taking the pic of your family on vacation. If you include your air freshener, you can get sued. Ludicrous?
For more details, click on TRADEMARK TOPICS.SM
Selling An Intentionally Fake Item - Copyright Infringement?
October 26, 2011, Posted by Dean Karau
In traditional Chinese funeral rites, family members often purchase paper replicas of money, a house, cattle, a car, and other items, and then burn them as a symbolic means of ensuring that spirit of the deceased has lots of good things in the afterlife. There are Chinese businesses which make and sell such replicas for funerals.
Fook On Sing Funeral Supplies, in Manhattan’s Chinatown section known as Funeral Row, is one such business. When a man in street clothes asked about purchasing obviously cardboard handbags with print designs that vaguely resembled those of Louis Vuitton, Gucci and others, the store clerk said “$20,” after which the undercover cop said, “you’re under arrest for criminal copyright infringement.”
Supposedly, the arrestee’s wife, pointing to a cardboard bag while holding a real Coach bag given to her as a gift from her husband, said, “If he gave me that bag, I’d beat him to death.”
For more information from a New York Times story, click here.
Twittad To Transfer Tweet To Twitter
October 26, 2011, Posted by Dean Karau
For more details, click on TRADEMARK TOPICS.SM
Fairview and Stanford Agree: Vendors Are the Weak-Link for Data Security Breaches
October 18, 2011, Posted by Steve Helland
In response to a $20million suit for the improper release of health information regarding 20,000 Stanford Hospital emergency room patients, Stanford pointed the finger at its outside vendor Multi-Specialty Collection Services, LLC. Apparently, a subcontractor of Multi-Specialty posted the patient data on a student homework / tutoring website with the hope of getting “homework” help creating a graph from the raw data.
Closer to home, Fairview Health Services laid blame at the foot of its vendor Accretive Health for a patient data breach resulting from theft of a laptop containing unencrypted data.
Practice Tips: (1) Ensure contracts with vendors include data security provisions, and (2) Encrypt that data!
For more information click here.
Flabby Buns and False Advertising
October 7, 2011, Posted by John Pickerill
A pair of shoes really can’t cure cellulite and tighten up your butt? I always thought it seemed far-fetched that Reebok’s Easy Tone tennis shoes would actually build more muscle tone than regular shoes, but I assumed Reebok must have solid scientific proof in order to make such amazing product claims in the competitive shoe industry. Unfortunately for Reebok, the FTC decided not to rely on assumptions. Reebok just settled with the FTC, creating a $25 million fund for consumers to seek redress for purchasing Easy Tones based on improperly substantiated advertising. The FTC determined the testing behind Reebok’s claims was flawed, and Reebok was not able to convince them otherwise. I guess it’s back to eating right and working out. Bummer!
For more information click here.
The Use of Social Media in Corporate Communications
October 6, 2011, Posted by Andrew Nick
The prevalence of social media has made its usage an integral component of the customer and investor relations strategies of many companies. As companies continue to expand their social media presence, employees who engage in online communications on behalf of their employers will need to be well-versed in the securities law concerns that apply to their activities.
For more information click here.
Big Data is Valuable Asset, But Borders Destroys Value With Excessive Privacy Policy
October 6, 2011, Posted by Steve Helland
Robust, big data about consumer behavior and consumer purchasing is becoming an increasingly valuable asset and competitive advantage for companies that do it right. The case of now-bankrupt Borders is a warning and lesson in how to destroy that value.
Like many large retailers, Borders collected massive amounts of consumer purchasing data. Now that Borders is in bankruptcy, is seeking to sell or otherwise monetize this data asset.
The FTC, however, has stepped in to either prohibit or severely limit the sale or other use of Borders’ consumer data due to the restrictive Privacy Policy Borders posted. The Privacy Policy read in part: “We will only disclose your email address or other personal information to third parties if you expressly consent to such disclosure.”
U.S. Privacy law does not require such a strict Privacy Policy. And if Borders had drafted its Privacy Policy differently -- in a manner that was less strict but still within industry norms and applicable law -- the outcome here would look very different.
For more information click here.
Legal Implications of Amateur’s Super Bowl Ad
September 28, 2011, Posted by John Pickerill
Have you ever wanted a job in advertising? If you win this year’s Doritos® Super Bowl® ad contest by creating the best Doritos® commercial, an advertising gig can be yours.
Just remember to consider advertising legal issues before submitting your ad concept. A few years ago, the winning submission included a Magic 8 Ball®, but the amateur ad men didn’t secure the rights to use it. The ad, as aired, ended up being a bit of a disconnect—they had to use a snow globe instead of the Magic 8 Ball® but still referenced Magic 8 Ball® terms.
Click here to read about Doritos® Super Bowl® ad contest.
Click here to view the Magic 8 Ball® ad.
Stay Up-To-Date on ICANN’s New gTLD Program!
September 26, 2011, Posted by Caroline Chicoine
ICANN has launched a new “micro-site” as the online home to get all the information you need about its new Generic Top-Level Domain Name Program.
The site can be found at http://newgtlds.icann.org/.
Brand Owners - Don’t Forget to Get Your Blocking Registrations in .XXX
September 26, 2011, Posted by Caroline Chicoine
ICM Registry has opened up its Sunrise period (called Sunrise B) which is open to brand owners outside the global adult entertainment industry who wish to permanently block domain names based on their trademarks. In order to permanently block a .XXX domain name, your trademark registration must be registered prior to September 1, 2011 (i.e., by August 31, 2011) and the trademark must be an exact match of the requested domain name. Sunrise B closes October 28, 2011 so make sure to get your registrations in before then.
Further details about Sunrise B can be found at the registry’s website at http://www.icmregistry.com/launch/sunrise-b/.
ICANN to Provide Briefing on Its Policy Work
September 26, 2011, Posted by Caroline Chicoine
Can’t make it to ICANN’s next meeting in Dakar? No worries! The ICANN Policy Staff is providing a briefing to summarize the policy issues currently on its plate in areas such as the Uniform Dispute Resolution Policy Issue Report, Post-Expiration Domain Name Recovery and Whois. The briefing will take place on Thursday, October 13 at either 7:00am or 2:00pm Central time.
To receive call-in details, send an email to the GNSO Secretariat at gnso.secretariat@gnso.icann.org.
UDRP Reform?
September 26, 2011, Posted by Caroline Chicoine
The Governmental Advisory Council of ICANN has sent a letter to ICANN expressing concern regarding moving forward with any review or revisions to the UDRP at this time, and recommends ICANN postpone any such review until after the new gTLD rollout. The GNSO is expected to decide whether to move forward with such a review at its next teleconference meeting on October 6, 2011. Stay tuned!
For a copy of the letter, go to http://gnso.icann.org/correspondence/ and click on Letter from Heather Dryden to Stephane van Gelder.
First FTC Data Privacy Case Against iPhone / iPad App Developer
September 21, 2011, Posted by Steve Helland
iPhone / iPad App developer W3 Innovations agreed to pay $50,000 to the FTC. The payment is to settle a claim brought by the Federal Trade Commission (FTC) that W3's Apps were directed towards children and collected personal and individual information from the children without parental consent as required by COPPA. This case is a good reminder that data protection laws also apply to Apps, and not just traditional websites.
For more information click here.
Time to Stop Collecting Fax Numbers?
September 6, 2011, Posted by Steve Helland
A federal court in California awarded $4.3 million in damages against a business that sent around 8,500 faxes (that’s around $500 per fax) without authorization under the TCPA. Takeaway: Consider whether it is even worth it to collect and store fax numbers, given how easy it is to violate the Junk Fax Law and get sued. Also, be aware that if you in-fact sent the fax without consent, liability is a virtual slam-dunk.
For more information click here.
Financial Industry and Social Media
September 6, 2011, Posted by Steve Helland
FINRA (Financial Industry Regulatory Authority) issued requirements on use of Social Media by covered entities. These include (1) recordkeeping, (2) supervision, and (3) developing policies and training.
For more information click here.
Business Software Alliance (BSA) / Microsoft Software Audits
September 6, 2011, Posted by Steve Helland
A representative for the BSA (Business Software Alliance) confirmed recently that Microsoft is now refusing to validate product keys for consumers, making it even more difficult to determine whether software is deemed “legitimate.” Greater transparency and sunshine from the BSA and Microsoft would be welcome here. The link above is to an article on how to avoid an audit from the BSA.
For more information click here.
Law Firms Fall Prey to Nigerian Scam
September 6, 2011, Posted by Steve Helland
Q. Who falls for those ridiculous Nigerian scams?
A. Big law firms in Pennsylvania, Alabama and Canada — hit for $31 million.
For more information click here.