The case involves the Leader Technologies, Inc. (Leader) product Leader2Leader, which is a social networking application with features similar to Facebook, like metadata tags associated with individual users and contexts and “boards” similar to the Facebook “wall.” The problem is, the Leader2Leader internet program was publicly used and on sale prior to December 10, 2002, one year before the date of filing, thus invoking the on-sale bar. The broad claims were thus invalid, because Leader’s own use of the claimed subject matter acted as prior art against the asserted patent priority date.

The claims covered the “underlying engine” of the Leader2Leader program. Id. at *4 (quotations omitted). Leader first conceived of the invention in 1999, which it subsequently developed. Once developed, and unsure of commercial viability, the inventors offered the product for sale and demonstrated it in 2002, attempting to earn money from their developing program to fund further development.

Thus, the inventors were faced with a Catch-22 situation. Had the inventors immediately sought to patent their idea for a search engine application, they might have asserted overbroad claims unsupported by actual development of the product; or, they could have waited until the device was commercially viable and sought to patent it at that time. They chose the latter, and they chose poorly: the fully developed product was demonstrated and made available for sale before the filing date of the patent for the invention, thus barring its patentability. This is valuable lesson to those start-up companies thinking of developing and/or patenting their programming products.

Using the substantial evidence standard of review to examine the jury’s finding of offer-for-sale and public demonstration, the Federal Circuit found that it could not overturn the jury’s finding of offer-for-sale which invalidated the issued patent. Id. at *2. Additionally, the Federal Circuit found that the district court did not abuse its discretion in denying Leader’s motion for a new trial.

As an aside, it is fascinating that, because the issue in this case did not come down to one of claim construction, but rather a jury verdict on point-of-sale and public demonstration, the Federal Circuit gave a high level of deference to the lower court rulings (as required by the current precedent). Had the case hinged on the claim construction of a Markman hearing before the district court judge, the outcome could have been substantially different, thus highlighting the incongruous nature of de novo review of fact-intensive claim construction hearings.

Ultimately, the ruling is obviously a huge sigh of relief for Mark Zuckerberg, the inventor of Facebook, who has been dogged by legal troubles from the very start – a topic most famously explored in the fictionalized movie The Social Network. For Facebook, the ruling is one less competitor’s intellectual property to worry about, and one less obstructive tree in a crowded patent thicket, thus breathing a modicum of clarity into the social network patent arena.

The opinion is Leader Technologies, Inc. v. Facebook, Inc., No. 2011-1366 (May 8, 2012), available at http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1366.pdf.

The music industry made headlines for going after copyright infringers who used peer to peer software to download protected music, but lately the adult film industry has been successful in their own variation of these now infamous suits.  Pornography companies have been suing “John Doe” defendants, who they know have contact with a given federal jurisdiction based on geolocating the Defendants’ IP address.  They have attempted to join defendants who participate in the same swarm, alleging that their action constitutes a conspiracy.  The copyright holder then requests the defendants’ identity from their Internet Service Provider.  If applied to an individual defendant, a judge will likely grant the order requiring the Internet Service Provider to divulge the defendant’s identity; the problem lies in the joinder of defendants.

While generally a single defendant’s copyright infringement doesn’t inflict great harm on a copyright owner, and even given statutory damages, a given suit’s award won’t usually amount to what is needed to cover the cost of litigation in federal court.  Litigation unto itself is not financially viable, so copyright holders devised a strategy where by alleging a conspiracy between all members of a peer to peer swarm, they would be able to compel discovery of thousands of infringers.  Then, rather than going through expensive litigation costs, they would approach pirates with settlement deals making it clear that if they did not settle they were going to make the infringer’s taste in adult movies well-known.

The adult movie industry had been having great success with this model, I am sure in part because of the extra embarrassment a suit over illegally downloading pornography would cause.  However, a few district judges have put a wrench in this practice by actually applying conspiracy law.  Federal Judges Holderman and Manning of the Northern District of Illinois and Federal Magistrate Judge Spero, of the Northern District of California, spent some time analyzing file sharing in light of federal conspiracy law, before concluding that individuals in the same swarm were not co-conspirators and therefore each claim had to be severed.

Each judge found that defendants’ downloading the same file did not amount to the defendants “acting in concert.  “Users” computers communicate with each other during a “swarm,” however individual infringers do not communicate or coordinate let alone engage in the same transaction or occurrence.  Further, the plaintiffs did not even allege that the defendants participated in the same swam, in effect their pleading amounted to a contention that the defendants’ similar tastes in adult materials rendered them co-conspirators.  For this reason the plaintiff’s claims had to be severed and each case brought separately.

While this doesn’t prevent copyright holders from filing individual suits, it all but guarantees an end to en-masse infringement litigation.  While this may weaken the value of some copyrights, preventing permissive joinder does serve fundamental fairness and justice.  Given the lack of relatedness between parties and likely diversity of circumstances, it would be difficult for courts to conduct a case or for defendants to defend themselves.

image attributed to "herzogbr" on flickr

The New York Times recently ran a profile of Hyman Strachman, a 92-year-old World War II veteran who has spent the past eight years copying DVDs and sending them to American soldiers serving in Iraq and Afghanistan. Strachman – or “Big Hy,” as he is known to the troops – buys bootleg copies of current releases and makes dozens of copies, which he sends to chaplains for circulation (chaplains travel widely and don’t sell the disks, making them excellent channels for distribution). Over the past eight years, Strachman estimates he has sent out more than 300,000 movies, which the Times estimates cost him over $30,000.

A more sympathetic poster-child for bootlegging you couldn’t find. Strachman, who bears an uncanny resemblance to the main character in the movie Up, began copying movies as a hobby after the death of his wife, and says that the thank you notes he receives from soldiers give him a feeling of camaraderie he hasn’t felt since his time in the service. “I can think of no one more deserving than you, and no one who understands what this flag stands for and means to our veterans,” reads one note, accompanying a flag from a combat mission in Afghanistan.

But the fact that Strachman’s situation is exceptional and heartwarming glosses over the MPAA’s main problem, which is that people just don’t care about movie piracy. It is particularly rampant among military personnel, whose inability to acquire content through legal downloading or streaming drives a thriving download culture, but even among Americans living domestically piracy is common. Nearly 50% of adults, and 70% of adults under thirty, have bought, copied, or downloaded content without authorization. Support for penalties beyond warnings and fines under $100 is low, including for many of the MPAA’s favored solutions such as high fines, government blocking of infringing materials, and surveillance of internet use. Hyman Strachman may be planning to stop his distribution system with the withdrawal of U.S. forces from Afghanistan, but less charitably-minded copyright infringers will continue.

Image Attributed to Flickr User Jameyhopkins

It’s that time of year again.  As a law student, the month before exams begin is a time filled with reading casebooks, outlining, and heading to your professor’s office hours for the first time this semester.  Spring exams have been particularly torturous for me because as I’m cracking my books to begin prepping for finals, my friends out West are prepping for a magnificent musical merriment known as Coachella.

Coachella is an annual weekend music festival featuring artists from a variety of musical genres.  The festival takes place in Indio, California and notable performers include Jay-Z, Radiohead, Kanye West, and the Black Keys, along with newer artists such as Dawes and AWOLNATION.

This year’s Coachella is bigger and better than ever.  With record breaking attendance and arrests up from previous years, the good people who bring us Coachella have their hands full.

Fellow blogger, Brandon Marsh, recently reported on Tupac Shakur’s hologram performance, which stunned Coachella goers earlier this month.  The performance implicated a host of intellectual property laws, including copyright and the right of publicity.  But the legal woes are not over for Coachella just yet.  It’s time to act on some trademark concerns. 

Attorneys on behalf of the Coachella Music Festival LLC (“CMF”) are worried about unauthorized sale of merchandise that features Coachella’s logos.  The merchandise is being sold near the festival sites and has garnered a lot of attention.  The counterfeit goods include hats, T-shirts, and jerseys that all bear the name of Coachella with some goods containing the names of this year’s headliners like Dr. Dre and Snoop Dog.  CMF claims that the merchandise “is likely to injure the reputation of the festival and its artists.”

Federal trademark law states that the standard for trademark infringement “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person.” 15 USC §1125. It seems that this is a clear-cut case of trademark infringement.  The accused vendors are selling merchandise close to the festival’s venue.  Many purchasers of the merchandise are likely to be confused whether or not the goods are in fact Coachella approved or not.

On April 20th, CMF attorneys asked U.S. District Judge Audrey B. Collins to grant a preliminary injunction on the sale of the unauthorized merchandise. CMF requested the injunction along with a seizure order for the counterfeit merchandise.  The seizure order would permit state and local police authorities to seize and impound any counterfeit merchandise.

On Friday, April 21st Judge Collins granted the preliminary injunction and seizure order and directed police to “seize and impound any and all unauthorized merchandise bearing any or all of the festival’s and/or the artists’ trademarks.”

Image Attributed to 4mm Games

Music giant EMI filed a lawsuit in New York federal court in late March alleging substantial damages from the unlicensed use of songs in Def Jam’s new video game, Def Jam Rapstar.  According to The Hollywood Reporter, EMI notified the gamemakers about EMI’s rights to the songs and the publisher’s need to account for royalties, but the warnings went unanswered.

Def Jam Rapstar was produced by 4mm Games and Terminal Reality, both of whom are named as co-defendants in the lawsuit.  The format of the game is akin to that of hit games Guitar Hero and Rock Band, where players simulate musical performance of their favorite rock n’ roll songs using guitars, drums, and microphones that operate as consoles.  In Def Jam’s game, the player acts as an MC and raps along to his favorite hip-hop and rap hits – much like karaoke.

EMI claims that the makers of the game failed to obtain the requisite rights on the songs featured in the game.  Songs involved in the suit include those performed by Kanye West, DMX, Lil Wayne and others.  EMI is asserting only part-ownership in most of the allegedly infringed compositions and sound recordings.  However, the complaint lists 54 songs that were infringed, and EMI wants $150,000 in damages for each work infringed.  Further, owning a part of a work may entitle the plaintiff to full statutory damages, which would bring the total claim to more than $8 million.  The plaintiffs are also claiming net profits from the game, and damages from the distribution, display and public performance of the songs without EMI’s authorization.

The plaintiff’s claims regarding unlicensed use of the sound recording or composition of songs will likely constitute a relatively typical copyright infringement suit in which the court will look to the permission given to utilize either entire songs or samples of songs.  However, the plaintiff’s claims regarding the use of performance and display of songs are more similar to infringement in a karaoke context.

EMI will likely follow the example set by Sony/ATV in January of this year in its lawsuit against KTS Karaoke, a CD and DVD manufacturing giant.  According to Sony, “[p]ursuant to typical synchronization and product licenses, karaoke companies are required to pay fixing fees and/or administration fees, advances against future royalties, and account and pay royalties based upon the total number of units manufactured, usually on a quarterly basis. The customary rates for physical synchronization licenses are fairly standardized; the rates for product and other licenses vary considerably.”  According to KTS, Sony/ATV has engaged “in copyright misuse by seeking to secure multiple license fees from the same allegedly infringing work by suing each link of the distribution chain, by demanding license fees for licensed goods and by attempting to obtain more than one statutory damage award for the continuing infringement (i.e., downstream distributions of the infringing work) of a SINGLE WORK.”

Although it is unclear whether the songs used in Rapstar are covers or original versions, the court will probably apply the same legal analysis regarding claims of copyright misuse and licensing deficiencies. According to Billboard, the company which produces Def Jam Rapstar forgot to file the appropriate paperwork, failing to obtain the requisite musical rights on songs featured in the game. As such, the formal and transactional aspect of the case may be clear cut, but if the court determines that it will hand down a decision with implications for the karaoke industry, or a decision that includes an exemplary statutory damages award, the battle could get loud.

A prior court ruling in China presented Apple with potentially enormous fines that hinged on the outcome of future litigation. Fast-forwarding to today, the Chinese court is urging the two parties to settle their differences by mediating the dispute. The Chinese court is certainly aware of the water Apple draws from its wells, and this move is most likely an attempt to avoid the economic and political effects that an unfavorable ruling against Apple may incite.

It has been suggested that the law favors Proview in this situation, but a lawyer for Proview recently expressed his view that the case would likely settle out of court. This sentiment is undermined by Apple’s litigious reputation and its release of a large collection of documents earlier this year supporting its position.

So what is likely to happen? Apple appears to firmly believe that it is correct in this situation, but is also aware that the law favors Proview. I feel that if Steve Jobs were around he would throw good money in after bad, fighting tooth and nail for a victory. That isn’t necessarily the best strategy though. It may be a lot easier, cheaper, and safer to simply settle, rather than risking an enormous fine and losing the trademark rights altogether.

The plaintiff, GEMA, is a German equivalent of ASCAP that represents more than 60,000 artists.  They have been in conflict with YouTube since 2009 when they sought to charge fees for the use of their music which YouTube claimed were impractical.  GEMA sued YouTube on the basis of twelve songs, and the Hamburg court found that YouTube had failed to meet its duty to combat copyright infringement and ordered YouTube to remove any videos that include those seven songs and install a filter that would prevent users from uploading those songs in the future.

GEMA is quite clear that it is not really interested in punishing YouTube, but rather wants to use this court case and the threat of future cases as a tool at the negotiating table.  GEMA wants YouTube to pay a fee for use of the works that’s based on the number of views each video receives and the advertising revenue generated, while YouTube feels that such a model is too burdensome and wants a fixed price arrangement.

I tend to be leery of people using the threat of a lawsuit as a tool because it prevents laws from attaining their intended purpose.  However, this may be a case where YouTube and its parent Google “hold the key to the jailhouse door,” as they might just have to behave in good faith at the negotiating table.  On the other hand, perhaps this is a case of GEMA ruthlessly extorting YouTube for cash they don’t deserve.  As I’m obviously not privy to the financial details of YouTube or GEMA, I can’t tell you which side is being reasonable here.

Image attributed to Flickr user bettyx1138

Last January, the Swedish government officially recognized a religion called Kopimism (a play on the words “copy me”). The central tenant of this religion is that the copying and dissemination of information is holy and “a strong expression of acceptance and Kopimistic faith.” This includes anything protected under copyright, trademark or patent law.

Sound like a good idea to you? Well you might be able to take advantage of it sooner than you think: Kopimism already has chapters in eighteen different countries, including one right here in the US that is currently in the process of gaining federal recognition.

Now I may be jumping the gun a little bit here – Kopimism is hardly what one could call a mainstream religion: as of April 23rd, it only had 5,622 “likes” on Facebook. But it isn’t hard to imagine an idea like this taking root and spreading fast. Given how popular illegal file sharing has remained despite all attempts to curtail it, you could be forgiven for thinking it is already well-established dogma. In this context, would a potential Kopimist file-sharer and copyright infringer be able to raise a First Amendment defense under the free exercise clause when the RIAA and MPAA lawyers come to pay a visit?

Any free exercise of religion claim made under the First Amendment must answer two central questions: (1) does the claim involve a person’s sincerely held religious beliefs? And (2) does prohibiting that conduct place a substantial burden on the individual’s ability to act on that belief? (WISCONSIN v. YODER, 406 U.S. 205 (1972))

As far as the sincerity of a Kopimist’s beliefs, it is easy to imagine that someone motivated enough to join a Swedish church would be able to convince a jury of the sincerity of his beliefs. If that fails, all they would need to show their devotion is to display their cache of downloads to the court.

Converts may have a harder time showing that US copyright law places a substantial burden on their beliefs. There are a million ways for people to copy information – sharing copyrighted music and movies isn’t the only one. A court could easily hold that sitting at home and hitting ctrl+C, ctrl+V (the Kopimist mantra) for hours or copying the Great Gatsby freehand is a perfectly satisfactory way of practicing Kopimism without running afoul of US law.

In general, it is hard to picture a case like this in any US court. While file-sharing falls short of polygamy or human sacrifice, the free exercise clause is not a get-out-of-jail-free card. Still, considering the relative strength of the protection that the First Amendment provides and the litigiousness of our larger intellectual property rights-holders, it might not be beyond the pale to see this issue before a federal judge in the near future.

The high end designer claims Guess’s actions were calculated. However, Guess rejects any bad intent on its part. Guess’s lawyer also argues that there is no proof of actual confusion and that Gucci has failed to prove through its surveys that consumers would be confused of the source of the designs. Gucci is seeking damages totaling $120 million.

The judge must find a “likelihood of confusion” for Gucci to be successful on its trademark infringement claim. The Ninth Circuit developed an eight-factor test that involves weighing the different factors to determine whether consumer confusion exists. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The strength of the mark, proximity of the goods, and similarity of the marks are three of the more important factors when determining if a trademark causes consumer confusion, but courts also consider evidence of actual confusion, marketing channels used, sophistication of the products, defendant’s intent, and likelihood of expansion of the product lines.

The judge will most likely find the marks and designs to be similar and that they appear on similar goods, such as apparel and accessories. Even though they appear on similar goods, Gucci produces more high-end luxurious goods than Guess. As a result, consumers of both products will most likely exercise care when making purchases and will be able to discern which product is Gucci’s and which product is Guess’s. Whether enough evidence exists to prove Guess acted with bad intent when it used the similar designs will also play a part in the weighing of the factors. What way do you think the judge will rule?

Applications and position descriptions are below. Please email ipbrief@wcl.american.edu with all questions and completed applications.  Thank you for your interest!

Applications are due April 22, 2012 at 5pm.

According to this, “a tavola!” in Italian means “dinner’s ready” or “come and eat.” “Tavola” means “table.” It is unclear which word or set of words – “tavola” or “a tavola” – is the basis for Coppola’s trademark. The websites of Coppola’s restaurant sell a service “a tavola,” where customers do not order from a menu but where waiters bring diverse dishes to the table. Coppola’s complaint, however, states that the family has a trademark over the use, in their restaurant business, of “tavola,” which, let’s not forget, means “table” and is used extensively in the food business.

Now, filing a trademark over “tavola” in the restaurant business is bold. Having obtained a trademark over such a generic, descriptive word is aberrant. A trademark infringement lawsuit over the use of “table” in Italian, for an Italian restaurant is as nonsensical as it can get, but is only the foreseeable result of granting a trademark over such a word in the business of providing food to a table of customers. In the words of Coppola’s Chief Executive:

The Francis Ford Coppola Winery has created a unique dining experience which has been named “A Tavola”. Customers travel far and wide to dine at the restaurant located at the Francis Ford Coppola Winery, for A Tavola. At these occasions, there is no menu, only an opportunity to be part of an interactive and entertaining experience. We knew of no other A Tavola restaurant, so it was natural that we took steps to protect the name by obtaining a federal trademark registration in the United States Patent and Trademark Office. When we learned that a neighboring restaurant had subsequently applied for a “TAVOLA” trademark registration for a restaurant, we became concerned.

Coppola’s claim did spark many articles and comments, of which many are outraged that the Coppola family could sue a tiny restaurant over the use of such a generic term, especially in the restaurant business. Well, Coppola’s claim is not too good for his public image, but Coppola’s complaint is also inconsistent. Coppola’s complaint states that customers might be at risk of confusing Tavola Italian Restaurant with the movie director’s restaurants in San Francisco and Sonoma County. Indeed, Coppola is a movie director. Now the trademark on “a tavola” services is unrelated to Coppola – the movie director. His trademark relates to a distinguishable way of serving food, not to his name. Where “a tavola” refers to a traditional Italian way of offering food to guests or customers, thus calling into question the basis for a trademark, Coppola’s capacity as a former movie director does not matter and should by no means be brought up. If Coppola had a trademark on his name, then any restaurant names making a reference to Coppola could be infringing on the movie director’s trademark. This is not the case here.

Image Attributed to Flickr User cliff1066

Apparently the conspiracy theories are true: Tupac is alive and well. At least that is what a crowd of nearly 100,000 music fans believed after a 3-D hologram of Tupac Shakur gave a public performance at the Coachella Music Festival in California this past weekend. Besides evoking images of the Star Trek universe, Coachella’s holographic performance is rife with intellectual property issues, especially with respect to copyright and the right of publicity.

The epic performance resulted from the collaboration of Digital Domain Productions and AV Concepts. Digital Domain Productions, a Hollywood CGI company founded by James Cameron, created the Tupac hologram. AV Concepts, a full service audio-visual and staging support company, produced hologram Tupac’s performance. While staging the Tupac hologram was no small feat, the production boiled down to a multi-layered 2-D rendering of Tupac projected onto a 30×13 foot Mylar screen. The most astounding part of Tupac’s performance was best conveyed by Nick Smith, president of AV Concepts, when he said, “You can take their likenesses and voice and . . . take people that haven’t done concerts before or perform music they haven’t sung and digitally recreate it.” This means that a hologram production company can take a hologram of Tupac and make him rap a Kanye West song, or even an entirely new song. Given that power, the importance of copyright and the right of publicity are paramount in controlling how holograms are used.

Copyright laws provide copyright owners with the exclusive right over public performance, which gives the owner discretion over who can perform their music in public. The public performance rights to songs performed in concert are actually licensed out from the composers and record companies that comprise the American Society of Composers, Authors and Publishers (ASCAP). It seems likely that whoever owns the copyright in “Hail Mary” and “2 of Amerikaz Most Wanted” licensed out the songs to AV Concepts to create the new Tupac performance. In this case, AV Concepts likely owns the rights to the hologram, but paid the record company to use Tupac’s songs. Since the hologram was based on a 2-D image, AV Concepts likely had to pay a copyright holder to use the image of the deceased rapper. However, a question remains about who owns the holographic performance. Moreover, who would own the rights to a public performance of a hologram Tupac rapping an entirely new song?

The right of publicity is also implicated in the recent Coachella performance. The right of publicity generally gives a famous individual the right to control the commercial use of her name, image, likeness, or any other unquestionable aspects of her identity. Right of publicity laws vary from state to state, but usually provide protection through death for a set period of time. Tupac’s likeness is fiercely guarded by his mother, Afeni Shakur, who created Amaru Entertainment to handle her son’s image. AV Concepts got permission from Afeni Shakur to use Tupac’s likeness for the hologram. However, it will be interesting to see whether companies in the future will seek to get permission to use holographic images of celebrities. Courts have held that the use of impersonators and images that evoke the likeness of celebrities violate their right of publicity when used for commercial purposes. Given these rulings, it seems likely that any hologram production company seeking to make a hologram of a famous person would have to get permission first.

As holographic technology progresses, it won’t be long before other deceased artists start performing again or living musicians decide to a host concert in one location and broadcast holograms of the performance all over the world. Who wouldn’t want to see Nirvana perform again with a hologram Kurt Cobain front and center, or take in the experience of Whitney Houston hitting a high note in all its glory? And imagine how quickly a fully rendered Beatles hologram tour would sell out. It just might be a brave new world for the music industry and for intellectual property laws.

Image Courtesy of TJ Johnson

What was once a nice partnership has definitely soured; Motorola Mobility and Microsoft have gone to the courts. Initially, both companies were working together on the development of Windows Mobile until Motorola left and chose the Android OS because Windows Mobile was “slow to evolve.” Since then, both companies have been wrapped up in litigation, presenting some interesting strategies.

In the rising recent battle between Microsoft and Motorola Mobility, each is throwing mud as fast as it can and getting creative about how they are doing it. Motorola Mobility owns industry standard patents on video compression and WiFi. Microsoft and Motorola entered into an agreement to license industry standard patents at a reasonable royalty rate. What is a reasonable rate for a piece of technology that is an industry required standard?  Motorola Mobility feels that a reasonable royalty rate is 2.25% of the retail product’s price, which could total to around $4 billion a year based on existing sales.  Microsoft claims that Motorola Mobility failed to license the video compression and WiFi patents on fair terms, and has brought them to court.

The dispute continued to expand when Motorola Mobility sought to block the sales of Xbox and Windows 7, their only option in the German court system. In Germany, there are no proportional monetary damages for patents, only injunctions stopping the sales and importing of products. In return, Microsoft has requested a ban on importation of Motorola phones into the U.S. that run the Android operating system. Currently, Microsoft’s European distribution center is located in Germany, meaning that a ban in the German courts could stop Microsoft from selling across all of Europe. Microsoft is so concerned by the idea of the courts banning sales in Germany that it is moving its entire distribution center to the Netherlands.

In an interesting strategy, Microsoft has requested a temporary restraining order and preliminary injunction in Seattle based on the contract dispute over patent licensing . Microsoft won the preliminary injunction and restraining order which prevents the German court from ruling on the validity of Motorola Mobility’s patents until the dispute is resolved. It remains unclear what the effects will be, but at the least, it has given Microsoft the time to move its distribution center allowing uninterrupted sales to the rest of Europe should Germany ban the sales of Microsoft’s Xbox and Windows 7 in Germany.

Commentators have noted that the Court’s decision seems to conflate obviousness analysis and § 101 challenges (“The Court has spliced together disparate, essentially contrary opinions into a legal virus, a self-validating meme that cannot be defeated by logic or example”), misconstrues the vital nature of the pharmacokinetic relationship of drug interactions, and signals the likelihood of many years of ongoing subject-matter challenges to a plethora of existing prior art.  Patently-O has had an excellent five-part series of criticisms of the decision titled Punishing Prometheus, which have expertly captured the mood of the patent litigation and examination bar—in large part, a frustrated mood, it would seem.

Then the Federal Circuit issued its opinion in In re Cyclopenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, Monday, April 16, 2012, reversing the lower court’s finding of obviousness of the pharmacokinetic relationship between the amount of drug administered and the body’s response.  By coming a little less than a month after Prometheus was decided, Cyclopenzaprine signals a willingness on the part of at least Judges Newman, O’Malley, and Reyna to continue to defend the non-obviousness—and by implicit extension, the subject-matter patentability—of complex pharmaceuticals that target the release rate, rate of diffusion, and rate of dispersal in the human body.

Compare the two sets of claims in the two cases:

A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8×10⁸ red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject; and

wherein the level of 6-thioguanine greater than about 400 pmol per 8×10⁸ red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

And the second, in relevant part:

A method of relieving muscle spasms in a patient in need thereof comprising:

[a] administering a pharmaceutical dosage form of a skeletal muscle relaxant comprising a population of extended release beads . . .

[wherein A] maximum blood plasma concentration (Cmax) within the range of about 80% to 125% of about 20 ng/mL of cyclobenzaprine HCl and an AUC0–168 within the range of about 80% to 125% of about 740 ng·hr/mL and a Tmax within the range of 80% to 125% of about 7 hours following oral administration.

Notice I did not cite to which claim was from which case.  What are the obvious differences between the two?  Moreover, which would you say includes more extra-solution activity?

(The Cyclopenzaprine application is found here.)  In the Prometheus decision, the court focused on the obviousness of the “administering” step and argued that the mathematical relationship between the levels of thioguanine was an abstract idea merely coupled with any doctor administering and determining.  Here, in Cyclopenzaprine, the method likewise is a simple method of “administering” what is admittedly a very complex, and, the court indicated, non-obvious level of cyclobenaprine in a time-release capsule.

Time-release capsules are omnipresent in the pharmaceutical literature.  Yet by not even mentioning Prometheus, and by reversing the lower court’s ruling of invalidity based on the obviousness of those pharmacokinetic relationships, the panel seems to implicitly be saying that those relationships are non-obvious, and by extension, I would argue, non-abstract and deserving of patentability.

While the paradigm under which the panel reversed the lower court was different (obviousness as opposed to § 101 subject-matter eligibility), by not even questioning the § 101 validity of the claims, the panel seems to conclude that the claims, which even lack an explicit “determining” step, merit patentability solely based on the complicated time-released (and admittedly, mathematical) relationship discovered by the patentees.  Thus, the Federal Circuit has fired its first counter-shot against Prometheus, one in what will be a long line of cases limiting the scope and reach of the Prometheus decision.  As I have argued often in the past, the Supreme Court should be moving away from § 101 challenges and increasing certainty, not decreasing it.  Most of the Federal Circuit had been trying to move away from § 101 controversy with the Classen, Myriad, and Ultramercial cases.  It now appears that the Supreme Court has reopened that can of worms, but hopefully, the Federal Circuit can contain it.

I close by repeating my favorite quote on the subject:

“Few have questioned the wisdom of [§ 101 subject matter challenges], despite the metaphysical gauntlets it has visited upon the learned members of the courts, and the sometimes eccentric results of its application.”

* See Ass’n for Molecular Pathology v. U.S. Patent & Trademark Office (Myriad), 653 F.3d 1329, 99 U.S.P.Q.2d (BNA) 1398 (Fed. Cir. 2011), cert. granted, judgment vacated, and remanded sub nom. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., No. 11-725, 2012 WL 986819 (U.S. Mar. 26, 2012) (remanding to the Federal Circuit for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012)).

Image Attributed to Enoch Lau

Fashion law has been defined as the “specialized area of law that deals with intellectual property (copyright and trademark law, including brand licensing), domestic and international business transactions, textiles, merchandising, employment and labor concerns, and customs (import/export issues).”  This area of law is rapidly growing, and is very near and dear to my heart.  The chance to practice in this area of law was a major reason I decided to attend law school.

In the last few years, fashion law has garnered much attention in the law community.   In 2010, Fordham University’s School of Law launched its Fashion Law Institute, where students can merge their passion for fashion with their academic desire to study law. Howard University School of Law’s Intellectual Property Students’ Association recently hosted its first annual Fashion Law Week here in Washington, DC.  Numerous blogs have been dedicated to this specialized field of law.  This area of law is ripe with intellectual property issues, including trademark, copyright, and even patent infringement cases.  And in an ironic turn of events, one law school, which has dedicated its resources to discussing the intellectual property issues surrounding the emerging field, found itself in the middle of a fashion law clash.

This year, the University of Pennsylvania Law School’s Intellectual Property Group focused their annual symposium on fashion law.  In order to gain attention for their event the UPenn student group created a poster, which is a takeoff of the iconic Louis Vuitton Toile Monogram.  The poster uses similar colors to the recognized brown and tan monogram, but replaces the original letters “LV” with “TM,” standing for trademark.  Also, the flower in the famous monogram is replaced with the © symbol for copyright.  Quite clever, if you ask me. 

However, Louis Vuitton (“LV”) is particularly sensitive about their trademarked Toile Monogram. The French fashion house has been in a number of disputes over their trademark recently, including suing Warner Brothers over featuring a knock-off handbag in the movie “The Hangover Part II.”  After catching wind of UPenn’s symposium poster, Louis Vuitton continued their litigious streak and sent University of Pennsylvania’s Dean Michael Fitts a cease and desist letter.  The letter claimed trademark infringement and dilution, but failed to mention which statutes in particular the University of Pennsylvania violated.  Further, Michael Pantalony, Director of Civil Enforcement at Louis Vuitton, asserted that people will be confused by the poster and could believe that Louis Vuitton was sponsoring the event.  The letter demanded that the law school take steps to change the poster.

However, Louis Vuitton didn’t scare the Ivy League school.  The University of Pennsylvania wrote its own response letter to Mr.Pantalony contending that the student group did not infringe on LV’s trademark and emphasized that the actions taken by the student group are protected under the federal trademark statute.  The response letter claimed that UPenn did not dilute Louis Vuitton’s trademark and cited 15 U.S.C. 1125(c)(3)(c), which excludes any noncommercial use of a mark.  UPenn further asserts that the poster is fair use under 15 U.S.C. 1125(c)(3)(A) and a parody under 15 U.S.C. 1125(c)(3)(A)(ii).  UPenn supported this argument by citing to a case that the fashion house might have some familiarity with.  The response letter cited Louis Vuitton Malletier v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), a case where the luxury brand failed to win on either the trademark infringement or trademark dilution charge against a dog toy manufacturer.

The response letter further asserted that there was no violation of 15 U.S.C. 1125(a) because there is no likelihood of confusion.  Louis Vuitton could not be confused as to have sponsored the event or to have been associated with the student group’s symposium.

However, the IP rights of these luxury brands are many times their most important asset, and if their brand is being diluted, their rights should be protected.  One can make the case that the company is just protecting its legitimate trademark; while some argue that Louis Vuitton is acting as a trademark bully.   In any event, Louis Vuitton could build a little goodwill with this audience in particular.  After all, they are the future lawyers who are interested in these issues and perhaps would like to advocate on the behalf of luxury brands such as Louis Vuitton one day.

The beauty of Trademarkia lies in its searching platform, which bootstraps itself onto the USPTO trademark database. Anybody who has every used the USPTO site knows that it can be extremely cumbersome – the design looks like a 12-year old’s Geocities site from 1995, information is hard to find, and beginners need to read an instruction manual just to figure out what all the terms and codes mean. Trademarkia brings the USPTO’s website into the modern world by creating an attractive and easy to use interface that makes searching for trademarks a breeze, and the price of $159 + government fees is very competitive.

So is it possible to really make the trademark application process as easy as getting a web domain? Maybe. Trademarkia’s basic $159 registration package covers just that – the registration. Filers will be refunded if there is a direct conflict with the mark they are attempting to register, but this service doesn’t provide users with any additional legal guidance. For $499, users can have an attorney discuss strategy with them and fully manage their case; however, this still only applies to the registration process.

The Trademarkia registration service only searches through the USPTO database of federally pending and registered marks, which misses state registrations, common law references, and domain names – all of which may be used by a third party to establish a legal claim to the mark Trademarkia users are attempting to register. For an additional $699, Trademarkia provides a professional US trademark search that covers the federal register plus common law uses of marks, and then provides users with a detailed report of the results (by comparison, Thomson offers searches for around $670 and Legal Zoom has comprehensive searches for $299-499).

In total, if users want the kind of full-service trademark registration needed to ensure the strongest rights possible and reduce the likelihood that they will infringe other marks, it will costs around $1200 + government fees. Is this revolutionary? No. The services being offered cost more than LegalZoom, but probably less than the same service at a “BigLaw” firm. Does it streamline the application process, making obtaining a trademark as easy as a web domain? Maybe. The user interface at Trademarkia is pretty fantastic, and it certainly helps to demystify the process for applicants without legal backgrounds; however, I think the bare-bones $159 service runs the risk of oversimplification by turning a process conferring national legal rights on words, symbols, etc., into a registration mill.

Image attributed to flickr user zioWoody

Audio and video recordings featuring music and artistic performances; high resolution music downloadable from the internet; high resolutions discs featuring music and video of music and artistic performances; pre-recorded digital media containing audio and video recordings featuring music and artistic performances for storage and playback

Online and retail store services featuring music and artistic performances, high resolution music downloadable from the internet, high resolutions discs featuring music and video, and pre-recorded digital media featuring audio and video recordings for storage and playback

The description gives the impression that Young is looking to get into the digital content recording and distribution business. This suggestion is further supported by comments made by Young at the D: Dive Into Media conference earlier this year when he explained that he wants to “rescue the art form that I’ve been practicing for the past 50 years.” He went on to describe the problems with the digital music industry as largely stemming from the poor quality of modern audio files and music playing equipment. Of particular note was the fact that he did not criticize piracy online, instead describing it as “the new radio” responsible for “how music gets around.”

This is an unusual position for someone whose income is primarily based on music sales. But Neil Young is an unusual person even as rock stars go. This is a guy, after all, that got sued by his record label for “not sounding enough like himself.” He eventually split with the label, and almost twenty years later released the rejected live recordings coupled with user videos scrounged from YouTube (they hadn’t personally filmed many of the performances). Oh, and somewhere in there he got labeled the “Godfather of Grunge.”

Young’s current efforts are notable because they represent another artist’s attempt to respond to the challenges of online piracy through innovation rather than exclusive reliance on strict enforcement of copyright law. A few months ago fellow blogger Ashlee Hodge discussed a similar effort by Louis C.K. who released a full-length comedy album for $5 that was free of digital rights management but included a direct appeal by Louis C.K. on the download website encouraging the honest purchase of the low-priced album. Efforts like this are on the other side of the spectrum from industry efforts to aggressively control copyright enforcement through means such as collaboration between ISPs and the media industry. By taking steps to develop a new “studio quality” format and encouraging the creation of media players that can support it Neil is looking to promote improvements on existing technology. Whether he can actually drive this type of technological jump remains to be seen but he clearly believes that he can, and is moving full-bore to achieve it according to a press release related to the publication of his memoirs.

There are risks to trying to create and promote a new digital content format and distribution system, the most obvious of which is that it could simply fail and be a colossal waste of time and money. Even assuming it is successful, there is the very real risk that the new technology will immediately become a target for online piracy and just improve the quality of pirated material at the personal expense of Young and his collaborators.

Neil Young has made his fortune, and it is possible that these risks just aren’t that intimidating to him. I prefer to think, however, that it is illustrative of his desire to appeal to fans by creating a better product, reasonably priced, that will help strengthen the bond between artist and consumer. These types of experiments are important to fighting piracy because they are more likely to change user expectations than public service ads and download-site crackdowns. The public response to strengthening enforcement efforts has been extremely negative, as evidenced by the recent SOPA protests. Over the long term, the solution to the piracy challenge will require more than just heavier enforcement. Attitudes within the user community towards content producers and the products they create will need to change. Artist efforts to be more directly involved in the distribution side of their creations may help encourage this change. Young’s efforts put him at the forefront of this effort. Regardless of the outcome of his endeavor, I respect and support Neil Young’s efforts to experiment with and push the envelope of digital technology and I hope he has the same success with it that he’s had throughout his turbulent musical career.

Image attributed to Francesco Negri at http://www.passengerseat.eu/photodiary

Partially vacating a federal district court’s summary judgment, last week the Fourth Circuit reopened a dispute between foreign language guru Rosetta Stone and Internet giant Google.  Back in 2009, Rosetta Stone filed a trademark infringement complaint against Google, alleging that Google violated Rosetta Stone’s trademarks by selling them to third‑party competitors through Google’s Adwords program.  The argument is that people looking to purchase Rosetta Stone’s product can be misled into buying a knock-off from a third‑party competitor because its purchased, nondescript advertisement seemingly appears at the top of the Google search results.

Met by an adverse ruling for summary judgment, Rosetta Stone’s theories of Google’s liability didn’t make it to trial.  By partially vacating this summary judgment, however, the Fourth Circuit held Rosetta Stone’s claims of direct and contributory trademark infringement, as well as trademark dilution, had enough merit to proceed to trial.  According to the Fourth Circuit, the district court improperly issued the summary judgment when it weighed the material facts and determined that Google would ultimately prevail at trial.  Instead, the district court should have only gauged Rosetta Stone’s legal argument for whether it could prevail.  Because this is a basic procedural standard the district court assuredly didn’t simply misapply, the Fourth Circuit’s holding really means that the district court misunderstood a fundamental part of relevant trademark infringement law.

The district court held Google couldn’t be liable for direct trademark infringement partially because it found Google shielded by trademark law’s “functionality doctrine.”  One of the ways Rosetta Stone’s trademarks were used was by third-party competitors purchasing the right for their advertisements to appear on the search results page whenever someone performed a Google search with those trademarks.  The advertisements’ text didn’t necessarily include Rosetta Stone’s trademarked terms, but the association itself is arguably infringement because it misleads potential customers away from buying Rosetta Stone products from proper sources (note that the misleading includes inducing them to think the third-party competitors are just affiliated with, connected to, or sponsored by Rosetta Stone).  Google argued that creating this association doesn’t amount to trademark infringement because this use of Rosetta Stone’s trademarks operates on the functional underside of a Google search and Google users/customers don’t see it.  The Fourth Circuit held this to be a misunderstanding of trademark law’s functionality doctrine and held it to be unavailable to Google as an affirmative defense.

If anything, the functionality doctrine would only be available as a defense if Google were to argue that Rosetta Stone’s terms aren’t protected by trademark law in the first place.  In Inwood Labs., Inc. v. Ives Labs., Inc., the Supreme Court explained that characteristic features of a product that are essential to its use or that affect its cost or quality are functional, and that the functionality doctrine protects those features under patent but not trademark law.  Applying this to the case at hand, Google could rely on the functionality doctrine to escape direct trademark infringement liability only if it claimed trademark law doesn’t protect Rosetta Stone’s terms because those terms are functional to Rosetta Stone’s product.  It doesn’t matter if the terms are functional to Google’s product; they must be functional to Rosetta Stone’s.

A Google spokesperson is quoted as saying that Google’s use of trademarked terms provides better search results for Google’s users, and that Google should therefore be excused from liability.  This brings up a number of points, the first of which being that it confuses the context.  Google’s on the hook because of selling advertising space associated with Rosetta Stone’s trademarks, not because of how competitors’ products naturally show up in Google search results.  The search results are one thing, but advertised spaces mixed in with the search results are another.  Secondly, the implication that Google wouldn’t be able to operate without being able to use others’ trademarks like this implies a nominative fair use argument.  The problem is that this also wouldn’t be available to Google because it requires Rosetta Stone’s products to not be readily identifiable without the use of the trademarked terms.  Because Rosetta Stone’s products are identifiable with labels like “interactive language-learning computer software,” nominative fair use doesn’t apply.

Vacating the previous summary judgment for Google doesn’t mean the Fourth Circuit necessarily thinks Rosetta Stone will prevail at trial.  If this does continue to trial, though, and if Rosetta Stone does win, it will leave Google liable to many others whose trademarks Google has sold to third-party competitors.  This might turn out to significantly limit Google’s Adwords business, but it’s only traditional trademark protection applied in a new, Internet context.

Critics of the bill claimed the referral would rubber stamp the agreement and serve as nothing more than a parliamentary tactic to delay the final vote on the bill and reduce the effect of the U.S. SOPA/PIPA debates on the European public.  There might be merit in that claim because the process to evaluate the law was expected to take as long as eighteen months, enough time to fade the SOPA/PIPA controversy in the minds of European voters. Theoretically, after such a delay the debate could be recast in a different light and thus improve the chances of success.

As thousands of protesters across Europe and a European Member of Parliament would have it, ACTA will be referred directly to the European Parliament to be voted on in the next few months.  This may be the inglorious end to an international trade harmonization process that began in 2006.  The prospect of IP enforcement on the Internet in some form appeared inevitable in technologically advanced countries when in January 2012 twenty-two countries signed ACTA (with the notable exception of EU heavyweight Germany).  Most of the negotiations were done in secret.

The debate is about the creation of legal liability on the Internet to enforce intellectual property rights (IPR).  On one side is the entertainment industry — not a uniform collection of interests by any stretch of the imagination — while the other side consists largely of Internet Service Providers (ISPs).  ACTA is the latest effort of exasperated IPR holders, including the entertainment industry (which includes the artists we celebrate, to be fair), to retain some value in the artistic creations that the world enjoys and guiltily distributes across the Internet.  The problem of the Internet is that the open structure prevents effective enforcement of IPR because there are so many anonymous users throughout the world uploading and downloading material so quickly that controlling the transfer is technically impossible and enforcing IPR is so expensive that it is economically detrimental.  This problem is also known as “whack-a-mole.”

Unfortunately, with salvo after salvo of legally questionable distribution methods — such as Napster, Aimster, Grokster, Megaupload, The Pirate Bay — the entertainment industry responded by pushing international lawmakers to create some sort of legal framework to address what many rights holders see as theft.  ACTA is one of several versions of a similar legal framework (SOPA, PIPA, and TPP) that have attempted to transfer the enforcement mechanisms that IPR holders enjoy in the physical world to cyberspace. This latest defeat could signal an end to those efforts and force the entertainment industry to innovate new business models of distribution for the Internet (a la Spotify or iTunes).

The enforcement measures attempted to apply legal liability to one of the few chokepoints of the Internet (that could pay) – the ISPs.  Holding the ISPs liable would force them to police the behavior of their users and allow the IPR holders to sue ISPs if their rights were infringed.  Businesses naturally tend to attempt to reduce risk, in this case legal liability, by any means necessary, but cynics point to another benefit to ISPs in keeping the Internet free of regulations such as ACTA.  Many of the business models of the most common ISPs rely on monitoring the behavior of their users and selling advertisements individually targeted to each user as well as selling user information to other businesses. Thus, the more content available to users the more accurate the monitoring of user behavior will be and could subsequently increase the value of the information provided to businesses and advertisers.

Legislatively, the issue is that the ISPs have effectively applied their leverage to inform citizens of the negative effects of enforcement and have successfully defeated attempts to implement the enforcement measures. IPR holders must find a new business model that adjusts their rights to the reality that modern society is dependent on the Internet and the services that ISPs provide.  Undoubtedly, society’s dependence on the Internet will only increase and IPR holders will only face more difficultly in informing voters of their concerns.  After stalled attempts to implement these measures, the entertainment industry should consider negotiating with the ISPs to buy property rights to cultivate business models that distribute protected material fairly.

The party responsible for this threat of legal action is Middle-earth Enterprises, a U.S. company that “owns exclusive worldwide rights to motion picture, merchandising, stage and other rights in certain literary works of J.R.R. Tolkien including The Lord of the Rings and The Hobbit.”  Not surprisingly, months before The Hobbit arrives in movie theaters across the globe, this company is asserting its mark against those who are using their legally-protected mark in a way that may be confusing to consumers.

Many argue that this is a case of trademark bullying, including Ian McKellen who plays Gandalf in the LOTR movies, who described these threats as “unnecessary pettiness.”  Stella Roberts, landlady of “The Hobbit,” stated “I’m taking legal advice but sadly, I have not got the financial resources to fight a multi-million pounds company.”  She continued by saying that the customers and staff didn’t see the harm that the pub was doing, having been in existence for over 20 years.  Roberts further emphasized the lack of bad faith in naming the bar, saying “[i]t has always been a tribute to Tolkien’s work and not a case of us jumping on a commercial bandwagon.”  Further, in speaking to customer confusion, Dave Waidson, bartender at “The Hobbit,” stated that “[t]he suggestion from rights’ holders that customers might get confused and think we are licensed by them is nonsense.”

Support for the pub garnered quick and passionate support.  A Facebook page was started in support of the pub and currently has over 59,000 fans.  Additionally, like Ian McKellen, actor Stephen Fry from the soon to be released The Hobbit movie spoke up for the pub against the “self-defeating bullying” tactics.  Of course, part of the reason Middle-earth Enterprises is threatening litigation is that they risk losing their right to protect their mark if they neglect to “police” against those that are allegedly using the mark illegally.

In being described as an epic battle of the Hobbits versus the Orcs, it now appears that the two opponents will not have to argue the elements of source confusion or dilution because both sides have apparently come to a mutual agreement.  Middle-earth Enterprises has offered to drop the threat for a nominal licensing fee of $100 a year as long as the pub acknowledges they are using Middle-earth Enterprises’ trademarks, and they stop selling infringing articles.  Producer Paul Zaentz stated “I’d be glad to raise a pint with them the next time I’m over.”  Additionally, Ian McKellen and Stephen Fry have offered to pay for the licensing fee.

It seems as if Middle-earth Enterprises realized the possible PR damage that this litigation could cause.  In the end, in the face of problems surrounding trademark bullying, and the defend it or lose it legal requirements within trademark law, this seems to have been resolved favorably for both parties.

One of his competitors is the owner of tebowing.com, a site dedicated to posting pictures of people Tebowing. The other runs tebowinggear.com, where he sells Tebowing t-shirts and stickers. Both applications have been denied based on their “false connection to a living individual.” A search of the USPTO trademark database shows that in addition to the multiple claims for “Tebowing,” there are pending applications for “Tebowmania,” “Supertebowl,” “Tebowl,” “Tebow Nation,” “Tebow Time,” “You’ve Been Tebowized,” “There Is No I in Tebow,” “Winning Is IneviTebow,” and my personal favorite, “Tebow Towel,” which I very much hope is for a Tim Tebow tea towel, and not some athletic product. All of these, except for those filed on behalf of Tebow, are likely to fail for the same reason as the Tebowing applications.

There is also a fight brewing over “Timsanity,” a spin-off of the less forced “Linsanity” that followed Jeremy Lin earlier this year (and which involved its own trademark dispute). Unlike the variations on Tebow’s last name, the popularity of the name Tim may make it more difficult to counter the applications with claims that the term will falsely imply an endorsement by Tebow. However, there is a risk the PTO will deny the applications on the grounds that Timsanity is too similar to Linsanity, risking confusion. Unfortunately, there is no rule that a phrase cannot be trademarked for just being stupid.

Tebow is even in the center of trademark disputes he’s not involved in, as Nike sues Reebok over Tebow gear it claims violates its exclusive licensing deal (Nike was granted an injunction).

This tiff began with a similar but different litigation from 2007.  In First Years, Inc. v. Munchkin, Inc., Learning Curve and a co-plaintiff sued Munchkin for infringement of patents related to their sippy cup designs.  Specific to both party’s designs were “lids that snapped onto the body of the cup.”  The court granted summary judgment motions, which were followed by a stipulation to a consent judgment.

Munchkin then defied Learning Curve’s admonishment and began to produce a version of the sippy cup with a screw top instead of a snap top.  Appellant Learning Curve attempted unsuccessfully to have the district court find Munchkin in contempt for violation of the previous consent judgment. 

Learning Curve got real upset and sued Munchkin in district court for alleged infringement of its 7,185,784 patent.  In a claim construction hearing, the district court concluded that the snap method claimed was not incompatible with the screw-on top method.  Also, the court found that the claim language of “semi-circular arcs of similar radii” includes rims that are in nearly continuous contact.

Applying this language, the lower court held that there was no literal infringement or infringement under the “Doctrine of Equivalents.”  Under literal infringement, all elements of the patent claim must be infringed (see Larami Corp. v. Amron).  The lower court, via evidence using a CT scanner, held that the grooves were not in contact enough to be “nearly continuous.”  Under the doctrine of equivalents, the Graver Tank tripartite “substantiality test” states that a party infringes a patent when its product performs substantially the same function served by a particular claim element, the same way that element serves that function, with the same result obtained by that element.  Here, the lower court found no infringement under the doctrine of equivalents because Munchkin’s sippy cup “did not do so in a substantially same way,” and thus it granted summary judgment in favor of Munchkin.

Learning Curve couldn’t calm down, and subsequent to the district court decision, via Fed. R. Civ. P. 59, moved to alter or amend the direct infringement decision by arguing that there was error in the interpretation of “nearly continuous contact.”  The district court stated that whether there was error concerning “nearly continuous,” the court would have come to the same conclusion because the defendant’s cup did not have “semi-circular arcs of similar radii.”

On appeal, appellant Learning Curve argued that the “disputed claim term needed no construction and that under the plain meaning of that term” there was patent infringement.  Additionally, if the court did accept the lower court’s claim construction, it should have been a factual issue presented to the jury.  The CAFC held that it would not address the potential error in interpreting “nearly continuous” because, as a matter of law, it was clear that “the difference in the radii of the lids and the rims of the accused cups was so great that no reasonable jury could find the radii to be ‘similar.’”  Thus the “accused cups do not satisfy the limitation in claim 1 of the ‘784 patent.”

The appellate court affirmed the district court’s grant of summary judgment . . . and ordered both parties to take a time out (not really).  Munchkin has since pushed the balance towards themselves regarding the coolness prong, having just added a GPS tracker to their lids.

One of the great concerns faced by those who shape intellectual property law is maintaining the balance between protecting and rewarding creativity and fair competition and accidentally stifling it instead.  In trademark law, one of the important tools in preventing the latter is ensuring that trademarks are restricted to apply only in the markets where the associated goods and services are actually sold.  While only one of the factors in a trademark infringement analysis, it means that many entities can hold similar or identical trademarks if the markets are sufficiently distinct.  For example, there are a few dozen trademarks that use the name “Cherokee.”  Given this, why does a music group and a wheelchair overlap?

Well, for one thing, the market analysis is only one factor in determining if a trademark would be infringing.  The relative strength of the association between the mark and the source in the minds of the public is important, too.  The Beatles is one of the most powerfully recognizable marks in existence, and it might be impossible to find a product or service where, on seeing the name “Beatles,” a consumer would not make the association.  Given this, courts are also less likely to assume good faith or grant the benefit of doubt to the junior trademark.  The distinctiveness of the mark is also factor, since “Beatles” is a made-up word, it would be considered arbitrary or fanciful and thus particularly strong.  The judge also made some efforts to link the two markets, pointing out that the energetic, youthful association of the Beatles mark would be particularly useful to a wheelchair company.

While I’m leery of declaring a word essentially off-limits, it’s probably true that you can’t sell anything with the name “Beatle” without leeching off the accumulated goodwill associated with the band.  I’m particularly leery of it coming from a company named “You-Q,” not exactly a wholely original mark itself.  That said, I wish them the best in finding a new mark with which to market their wheelchairs.

image attributed to "oooh.oooh" on flickr

Not satisfied with the methods available to curb copyright infringement online, the media industry (MPAA and RIAA) has formed a coalition with the major ISPs (e.g., Verizon, Comcast, AT&T) to implement a “copyright alert system.”  The gist of it is that if the media industry notifies your ISP that you’re downloading copyright-infringing material, your ISP will send you warnings and eventually throttle and/or cut off your Internet connection.  The coalition is called the Center for Copyright Information (CCI), and it’s drawn some criticism for its lack of consumer representation.

Given that it was formed without consumer advocates, commentators were surprised when the CCI announced who will fill some of its key positions and how the independent American Arbitration Association (AAA) will be in charge of resulting dispute resolution with ISP customers.  The most surprising part regards the consumer-oriented people composing the CCI’s advisory board, but a skeptic would say that the appointments are only lip service because the advisory board doesn’t have any real power with the CCI’s direction.

What gets my attention is the rhetoric that consumers are owed better representation in the CCI than they’re currently receiving.  Of course consumers should advocate and argue for their interests, but why would they be owed representation in a private coalition, regulating a privately operated network?  Advocates like the Electronic Frontier Foundation argue that under-representation leads to the real problem of a lack of due process to consumers when the CCI cuts off their Internet access in the face of a copyright infringement allegation.  If your ISP restricts or cuts off your Internet access, how has it violated your “due process?”  How does it owe you “due process” in the first place?  Your ISP does not owe you Internet access; it sells it to you and is free to stop selling it to you if it so chooses.  It’s not fair if the media industry can cut off your Internet access because of a copyright infringement claim, especially if it’s a claim that wouldn’t hold up in court, but unfairness isn’t necessarily illegal.

I’m not saying that the CCI, as a non-public entity unilaterally making rules, should be able to do what it wants to restrict Internet-subscriber access.  I just think that consumers can’t cry foul at this because the Internet is so important in today’s world that we all have a right to its access.  Instead, I think they should cry foul at how the ISPs participating in the CCI control enough of the market that their cooperative effort amounts to market control.  I don’t know much about antitrust law, but when does this joint effort from the CCI cross a line and become impermissible market control?  If antitrust law is only invoked when market participants exhibit anti-competitive behaviors, it seems like focus should be on how the CCI and its participating ISPs deal with other ISPs that are reluctant to enforce the copyright alert system.  Considering how the CCI’s threat of the copyright alert system only works if the CCI commands enough market power, could it be that the big, participating ISPs are using this to force smaller, non-participating ISPs out of business?

This all goes back to the big question.  Why are the ISPs agreeing to participate in the CCI?  Current laws don’t put a burden on ISPs to help enforce copyright laws, so what’s motivating them to do this?  Another risk the ISPs are taking on is with their public image.  If they send out copyright infringement warnings to their subscribers, and especially if they cut off their subscriber’s access, that will greatly harm the ISPs’ brands.  Maybe some of the confusion comes from how we separate ISPs and the media industry as two different entities.  Maybe we shouldn’t be so quick to distinguish them from one another, what with Comcast having acquired NBC from GE last year.  If that’s the case, then the argument’s all the stronger for a line between the big ISPs and the smaller ISPs, who don’t own media companies.  To me, the CCI smacks of collusion.  Is such a thing even possible?  Yes, it is.

Most recently, The Pirate Bay has announced that it is looking into providing its services via “GPS controlled drones, far-reaching cheap radio equipment and tiny new computers” over international waters.  Historically, this sounds a bit like British Pirate radio in the 1960’s, fictionalized in the movie “Pirate Radio,” where illegal pop-radio stations like Radio Caroline broadcast music from boats sailing in international waters.

Unfortunately for The Pirate Bay, this romanticized vision is not all smooth sailing.  There are many sources of international law that countries can use to combat piracy, including the United Nations Convention on the Law of the Sea (“UNCLOS”) and “universal jurisdiction.”

UNCLOS contains one of the broadest definitions of piracy, consisting of “any illegal acts of violence or detention, or any act of depredation, committed for private ends by the crew or the passengers of a private ship or a private aircraft . . . .”  Under the doctrine of universal jurisdiction, when a ship commits criminal acts, including piracy, a government can exercise jurisdiction over that ship.

Defining piracy, and whether intellectual property infringement falls into this category, is a fundamental element in this analysis.  Under UNCLOS, it could possibly be a “depredation;” within universal jurisdiction, a “criminal act.”  Conversely, the definition of piracy from the International Maritime Bureau limits piracy to “the act of boarding any vessel with an intent to commit theft or any other crime, and with an intent or capacity to use force in furtherance of that act.”

Of course, the U.S. Constitution specifically punishes piracy, giving Congress the power to “define and punish Piracies and Felonies committed on the high Seas . . . .”  Additionally, 18 U.S.C. § 1651 states that “Whoever, on the high seas, commits the crime of piracy as defined by the law of nations, and is afterwards brought into or found in the United States, shall be imprisoned for life.”  U.S. case law has recently been somewhat uncertain in defining piracy.  As a CRS report for Congress states, case law either narrowly defines piracy as “robbery at sea,” or more broadly using UNCLOS’s definition.  A very recent decision discussed the definition of piracy in Inst. of Cetacean Research v. Sea Shepherd Conservation Society, stating:

The court in Said defined “piracy” as “sea robbery,” consistent with its interpretation of the law of nations when Congress enacted § 1651 in 1819. 757 F.Supp.2d at 562. The court nonetheless considered the modern international definition of piracy, finding it “[u]nsettled.” Id. at 563.  In Hasan, by contrast, the court found that § 1651 embraced an evolving view of “piracy as defined by the law of nations.” 747 F.Supp.2d at 623. It found the modern view to be consistent with UNCLOS, which defines piracy as “any illegal acts of violence or detention … committed for private ends” against a ship on the high seas or persons or property aboard it. UNCLOS art. 101, 1833 U.N.T.S. 397.

A secondary issue is the affordability of drone technology.  Drone technology has actually been used outside of governmental contexts quite extensively, from agriculture to archeological purposes.  Additionally, drones are becoming increasingly affordable.  For example, AeroVironment has been developing a drone-type machine expected to cost around $40,000.

If The Pirate Bay’s statement is actually taken at face value, which is highly doubtful, this plan to implement drone technology over international waters seems to also impose significant legal liability.  Admittedly, this application of intellectual property infringement to the definition of piracy is a bit of a stretch.  But if the argument can be made, is providing copyrighted material worth life imprisonment?

When a video containing copyrighted material is posted on YouTube, the website stays free of copyright infringement liability despite infringing posts because of a notice and takedown system established under the Digital Millennium Copyright Act (DMCA). This “safe harbor” provision, § 512(c) of the DMCA, requires that YouTube (1) have no actual knowledge of infringing material, (2) be unaware of facts or circumstances from which the infringing activity is apparent, and (3) upon obtaining that knowledge, expeditiously remove or disable access to the material. This is why a Saturday Night Live bit posted on YouTube may stay alive for a short time following broadcast, but come Monday morning, it’s been replaced with a message stating “this video is no longer available due to a copyright claim by NBC Universal.” A user who has had a video taken down improperly – that is, they have not violated copyright – is required to petition to have the video reposted.

It’s a frustrating situation for all parties involved. Because of the ease of posting a video, users have little incentive to change their ways. Habitual violators will be shut down by YouTube, but exposed to few other consequences. Innocent posters that have material taken down that does not violate copyright are prejudged on whether they have infringed. Copyright holders are forced to spend resources monitoring YouTube and similar sites for materials in violation of copyright. Put in context, a company like Viacom will regularly need to check YouTube to see if the latest Daily Show episode or clip has been posted. YouTube’s position is like that of a 911 operator: they do nothing to prevent illegal activities from occurring but work quickly in reaction to copyright infringement claims by taking down the material expeditiously. This model will stand so long as the DMCA governs in this manner and YouTube users post infringing clips.

The greatest point of contention between some copyright holders and YouTube is § 512(c)(1)(A)(ii) of the DMCA. This provision states that a website like YouTube is not liable for copyright infringement when it is not aware of facts or circumstances from which infringing activity is apparent in the absence of such actual knowledge. Said differently, YouTube is safe when there is no information communicated to the site that would make apparent that there is infringing activity. Enter the Viacom v. YouTube lawsuit. As Jess Robinson wrote in October, Viacom believes that YouTube is liable for infringement for failing to fulfill its duty to remove unlicensed, copyrighted material from its website. Viacom is attempting to establish on appeal to the Court of Appeals for the Second Circuit that YouTube should have known of infringing materials by making reasonable inferences, and therefore that the infringing works should have been identified and removed. The District Court, reinforcing the notice and takedown process, found that “actual knowledge” exists only if YouTube knew of specific and identifiable infringements of particular individual items. A decision from the Second Circuit has yet to be handed down.

As the third most visited website on the planet, YouTube will continue to be a target of copyright complaints as long as copyrighted materials are unlawfully posted. YouTube may need to change protocol regarding its knowledge of infringing posts if the Second Circuit decides in Viacom’s favor. Changes may include adding software to sniff out posts with terms that suggest they infringe on copyrighted materials. Fortunately for the composite of Americans, we will still be able to enjoy the rich mosaic of YouTube, from scholarly lectures to adorable cats doing funny things.

Image Attributed to Flickr User superfluity

Another week, another high profile lawsuit involving two technological heavyweights. This time, Yahoo!, Inc. (Yahoo) has filed a lawsuit against Facebook, Inc. (Facebook) alleging infringement of 10 of its patents.  Yahoo’s patent claims focus on processes that are critical to the functioning of social networking websites, such as adaptive advertisements and privacy tools.  Yahoo’s suit is troubling because of the wide swath it carves out for potential infringers.

Some of Yahoo’s more interesting patents include one for customizable privacy settings and another for customized content feeds, such as Facebook’s newsfeed.  There is no doubt that Facebook utilizes these features on its website, just as countless other social networking websites like Google+ and Twitter do.  However, these patents are strikingly vague and allowing Yahoo to enforce them against Facebook could present a major problem for the rest of the social networking world.  If Yahoo is successful in a suit against Facebook, what will stop them from going after Pinterest or FourSquare?  Regardless of whether observers believe that Yahoo’s patents are too vague to be realistically enforceable, the United States Patent and Trademark Office (USPTO) approved these patents and Yahoo has the right to enforce them against alleged infringers.  Facebook has vowed to fight Yahoo’s lawsuit and it has a couple of options to resolve the suit.

Facebook’s first option in fighting the lawsuit is to claim that Yahoo’s patents are invalid based on obviousness or non-novelty.  The two primary factors the USPTO considers when granting patents are non-obviousness and novelty, both of which are determined by prior art.  If Facebook can find prior art for each of Yahoo’s claims, it can invalidate those patents.  Given the broad scope of the majority of Yahoo’s patents, it seems possible that Facebook will be able to find some prior art that overlaps the claims in Yahoo’s patents.  The second option that Facebook could pursue is to claim that its website processes do not infringe on any of Yahoo’s patent claims.  As part of the non-infringement defense, Facebook would try to utilize patent claim construction — which is where a court construes specific terms within each patent claim — to say that its processes do not infringe Yahoo’s patents.  Some observers believe that since Yahoo’s patents are so broad, Facebook could convince a judge to refuse to enforce them because of their vagueness.  Given the broadness of the patents at issue, it seems possible that Facebook could demonstrate non-infringement for many of the patent claims.  However, Yahoo’s instant messaging patent, which is sufficiently narrow and utilized by Facebook, is likely to cause the social networking giant some trouble if the suit makes it to trial.   Facebook’s last option is to settle the suit, which seems likely given what is at stake for the company during its Initial Public Offering (IPO).

Yahoo’s suit against Facebook differs from other clashes between major tech companies, such as Apple and Samsung’s fierce battle over the “slide to unlock” mechanism, because of Yahoo’s timing and motivation.  Facebook recently issued an IPO where it plans to raise $5 billion.  The final valuation of the IPO has been estimated to be anywhere from $75 to $100 billion.  The last thing Facebook wants hanging over its IPO is a lawsuit because it could affect the IPO’s final valuation.  Yahoo is well experienced with attacking tech giants at their most vulnerable, such as when Yahoo sued Google in 2004 during its IPO.  Based on that suit, Yahoo was able to pressure Google for nearly 3 million shares, which translates to a value of roughly $1.5 billion in today’s money.  With Yahoo’s declining stock value, it makes sense that it would attack Facebook to help boost its assets.  What is troubling about Yahoo’s approach is that the suit appears to be solely for financial gain, essentially making Yahoo a patent troll.  While opinions differ over the legitimacy of Yahoo’s suit, there is no denying that the outcome will have a lasting impact on both companies.  With news that Facebook has bolstered its defenses by acquiring 750 patents from IBM, this clash of the titans may turn into a real spectacle.

The pub is named the Hobbit, and has been trading under that name in Southampton for over 20 years.  Popular with students, the pub has several cocktails named after characters from the fantasy series, and includes a picture of Elijah Wood, best known for playing Frodo Baggins in the movie adaptation of the novels, on its loyalty card.  Recently the pub has been threatened with legal action by lawyers from the Saul Zaentz Company (SZC) (http://www.bbc.co.uk/news/uk-england-hampshire-17396794), who maintain that the pub has infringed upon their copyright and trademarks relating to the production of the motion pictures, including the yet to be released film of the same name as the pub.  Mr. Zaentz said in an interview that the company, which owns the worldwide rights to several of Tolkien’s stories as their brands, needs to defend their trademark rights to prevent others from using them without authorization.  However, he also stated that since the Hobbit is an established business that has been trading under this name for quite some time they would be willing to grant them a license for a small nominal fee in exchange for their acknowledgement that they had infringed upon SZC’s trademark.

While SZC is not exactly taking a hardline, vicious legal strategy in this case, the public opinion blowback has nonetheless been fierce.  A Facebook campaign created by customers and fans of the pub to support the pub during this legal controversy has gained more than 50,000 members, an overwhelming show of support from the community.  It appears that this large response to the legal action may have influenced SZC’s decision to attempt to resolve the dispute amicably by offering to license the pub for a relatively cheap fee of $100 per year.  According to the landlady Stella Mary Roberts in an interview with the BBC, “I think they’ve been scared off, I don’t think they [SZC] were expecting the reaction on Facebook.”  In any case, it does seem unusual that a large media company owning far reaching rights to brands as valuable as those in the Lord of the Rings and the Hobbit would offer to license an alleged infringer so easily and for such a low fee.

Further complicating this public relations issue for SZC is the new development that noted actors Stephen Fry and Sir Ian McKellen, both of whom are set to appear in the upcoming Hobbit films, have offered to show their support for the pub by paying the licensing fees themselves. (http://www.bbc.co.uk/news/uk-england-hampshire-17433036)  The actors have been strong supporters of the pub in this dispute, with Mckellen reportedly describing SZC’s legal action as “unnecessary pettiness,” while Fry described it as “self-defeating bullying.”

This case is an interesting situation in which public relations concerns may end up trumping SZC’s perceived need to protect their own trademark rights.  While SZC is the holder of a strong trademark in their rights to Tolkien’s works and the movies that have followed them, this may be a situation in which harshly enforcing those rights would do them more harm than good when it comes to their brand.  Fry described this action as “bullying”, and whether or not that is a fair description of the situation, what matters is that the public views it in the same way.  The Facebook campaign has garnered so much support because they see a large, wealthy production company bringing action against a small pub in Southern England over an infringement that has allegedly been taking place for the last twenty years without meriting action.  The groundswell of support for the pub has been indicative of the public’s view of this case and the potential damage further legal action could bring to SZC’s trademarks.  As a result, this may be a rare situation in which everyone gets to walk away with what they want.  SZC will get the acknowledgement that the Hobbit has been using their brand to do business, and for a relatively small nominal fee, which they likely won’t have to pay, the Hobbit pub will be able to continue trading under the same name.  While no deal has yet officially been put into place, the scenario seems the most likely under the circumstances.

Mark Tughan claims that although he had known about the show since 2010 (it was first shown in the UK in December 2009), he delayed addressing the problem because he didn’t know that the show would go on to become the widespread and well known phenomenon it is now.  He alleges that there has been actual confusion between the comedy venues and the TV shows; perhaps people assume that the clubs are associated with the show in some way or that they are focused on music instead of comedy.  He is seeking an injunction against Fox which would prevent them from using the name “Glee” in the UK.  Were the injunction to stop the show being broadcast there, it could cost Fox millions of dollars.  The case went to a patent judge, who passed it up to a higher court which will hear the case.

I don’t know the details of UK trademark law and how it differs from US law, but in US, this would be a case of “reverse” confusion, where the party which has used the mark for longer has much less presence and accumulated goodwill than the infringer.  This is called “reverse” confusion because the usual problem addressed by trademark law is when a smaller party “mooches” off a larger, more well-known party by using a similar mark.  The regular confusion factors still apply (strength of the mark, evidence of actual confusion, the similarity of the markets, etc), but the focus is on the conceptual strength of the senior mark (whether it is arbitrary or fanciful) and the commercial strength of the junior mark.  However, the reverse discrimination is somewhat narrowly applied in the US and I don’t know whether it is common in the UK or how it is applied.

Fox is seeking to challenge Comic Enterprise’s ability to trademark “Glee Club” in the first place, which is probably the best option.  They claim that since “Glee Club” is an existing term, the mark has little conceptual strength.  However, Comic Enterprises is not using the mark to refer to actual high school glee clubs, but as a pun with a clearly distinct definition.  That seems to move the mark into the “suggestive” category.   Given the potential cost to Fox versus the benefit to Comic Enterprises, a large settlement would probably be the best solution for both parties.  Let’s face it, while there may be confusion on the part of customers, it’s likely that confusion will only be increasing business for the comedy clubs.

image attributed to "Shawna L. Handke" at http://communitysketchbook.blogspot.com

As reported by Wired and other news outlets, Facebook is planning to assert trademark protection over certain uses of the word “book.”  In clause 5.6 of the United States version of Facebook’s terms of service user agreement, Facebook currently asserts trademark protection over terms like “Facebook,” “face,” “poke,” and “wall.”  In it’s proposed changes to the terms of service (click on the “English tracked changes PDF”), “book” is added to these terms.  The above-linked Wired article discusses instances where Facebook brought trademark claims against other websites like “Teachbook” and “Placebook,” and the article goes on to say that including “book” as a trademark in Facebook’s terms of service will strengthen such trademark claims.

It makes a lot of sense to me that violating Facebook’s terms of service can get you kicked off the website, but how are the privately created terms of service able to impose a civil liability on someone if they use “book” in a way that Facebook deems impermissible?  I think the short answer is that you can indeed be liable to Facebook for trademark infringement if you create a social networking website named “______book,” but the liability arises from the strength of Facebook’s brand and not from violating their terms of service.

An important thing to remember is that trademark protection, if it exists for a mark, only extends to the contexts in which consumers would expect to find that mark.  For example, there is no trademark infringement when there is both “Prince” brand pasta and separately “Prince” brand tennis equipment, because these two brands being in different markets does not bring consumers to confuse them for one another.  So the question here becomes how broadly or narrowly should we define “social networking websites,” the context in which one would expect to find the Facebook brand?  This can get a little tricky considering that many websites not principally about social networking do incorporate some of its features.

Even though Facebook doesn’t have “book” filed as a trademark with the Patent and Trademark Office, actual registration helps but isn’t required to assert trademark protection over a mark.  Instead, one needs to have a brand strong enough to be well known.  Facebook has this in spades.  I poked around a little bit on the Internet, and commentators say that between 7 and 10% of the entire world’s population has Facebook accounts.  When people think of social networking, unless they’re Google+ hopefuls, Facebook is the first thing that comes to mind.

I think a court could easily find trademark infringement for a site named “______book,” because the factors listed in tests like Sleekcraft (e.g., strength of mark, similarity of marks, and degree of caution exercised by customers) are all in favor of Facebook and show there to be a legal likelihood of confusion.  If someone surfing the web finds a site named “_____book,” it’s not a leap to think it’s an offshoot of Facebook, and that the “book” part of the name is a suffix that’s used to identify the brand.  In this way, the website would benefit from the goodwill of Facebook’s brand.  Also, there’s a chance that the site is named as such because it’s a fitting name, but there’s a much bigger chance that it’s named that way to benefit from Facebook’s brand.  That benefit amounts to trademark infringement.

Facebook including “book” in its claimed trademarks isn’t an event in itself.  There’s an argument that including it in its terms of service, and all Facebook users agreeing to the inclusion, increases an awareness of the Facebook brand’s broad scope, but that assumes that people read those terms of service.  Instead, I think Facebook’s inclusion of “book” in its claimed trademarks goes to show the already existing strength of the company’s brand and how far it can extend in the limited context and market it occupies.

Skydive Arizona, Inc., one of the world’s most well-known skydiving centers in Arizona, sued Skyride in 2005 and a district court ruled on the claims in 2009. Skydive Arizona has been operating under the mark, SKYDIVE ARIZONA since 1986. Skydive Arizona has not advertised with or accepted certificates from Skyride.

Skydive Arizona sued Skyride for owning and operating numerous websites specifically referencing Arizona and skydiving, such as PhoniexSkydiving and ScottsdaleSkydiving, even though it did not have operations in Arizona. Skyride also registered numerous domain names referencing and even using Skydive Arizona’s mark, such as skydivearizona.net and arizonaskydive.com. The district court stated Skyride’s actions led customers to believe that Skyride had operations in Arizona and that Skydive Arizona would accept Skyride certificates. Reports existed of Skyride customers buying certificates thinking they could be redeemed at Skydive Arizona. The district court stated that this was “a strategic business decision to represent ownership because they thought it would attract more customers.”

During the 2009 trial, the jury awarded damages of $1 million for false advertising, $2.5 million for trademark infringement, and $600,000 for cybersquatting. It also awarded Skydive Arizona $2.5 million in lost profits. The appeals court upheld these amounts, along with a permanent injunction against Skyride; only rejecting the district court judge’s doubling of the award. The appeals court noted when reversing the actual damage enhancement that “although the District Court may have considered a secondary deterrent rationale when it briefly discussed Skyride’s knowing refusal to cease its infringing acts, we hold that such possible considerations do not overcome the District Court’s apparent intent to punish.”

Was the appeals court correct in reinstating the original damages awarded by the jury?

Thiopurine compounds, when administered, are broken into metabolites by the body. The levels of metabolites are different among patients, which poses problems when thiopurine drugs would be administered in too high or too low quantities and have adverse effects, or no effect at all.

Prometheus was the licensee of two types of patents involving the required dosage of thiopurine drugs in the treatment of autoimmune diseases. Prometheus’s patented methods involved three different steps: one “administering step”; one “determining” step; and one correlation “wherein” test. After administration and determination of the patient’s subsequent levels of metabolites, these levels would be compared to already existing results to conclude the adequate dosage of the thiopurine drugs.

Mayo first adopted Prometheus’s tests before it started implementing its own, using higher levels of metabolites to determine toxicity of the drug. Prometheus sued for patent infringement and Mayo moved to dismiss Prometheus’s case on the ground that Prometheus’s patents were invalid because Prometheus did not do anything more than apply laws of nature. Although it agreed that Mayo’s test would infringe on Prometheus’s patents, the California district court abided by the argument that the patents only recited laws of nature and granted summary judgment to Mayo.

On Prometheus’s appeal, the Court of Appeals for the Federal Circuit concluded that the first two steps involved in Prometheus’s patented methods involved some type of transformation of the human body and therefore satisfied the “machine-or-transformation” test, under which an invention may be qualified for patenting where a “process patent [is] either tied to a particular machine or apparatus or […] operate[s] to change articles or materials to a ‘different state or thing.’” Gottschalk v. Benson, 409 U.S. 63, 71 (1972). The Supreme Court disagreed with the argument and stated that (1) the machine-or-transformation test is not an exclusive test in determining the patentability of a process but a clue, however strong or effective, and (2) Prometheus’s patents did not satisfy the machine-or-transformation test. First, the “administering” step “simply refers to the relevant audience, namely doctors who treat patients with certain diseases with thiopurine drugs.” Mayo, slip. op. at 9. The second step only requires that doctors determine a level of metabolites, an operation routinely done by doctors and scientists. Id. at 10. Finally, the third “wherein” test merely requires that a doctor take into account natural conclusions that the administration of a drug in sur-dosage should be reduced, or in the opposite situation, reduced.

Robert R. Sachs, in Punishing Prometheus: The Supreme Court’s Blunders in Mayo v. Prometheus, argues that “Samuel Hopkins’ patent on an improved method for making potash, based on the discovery that burning the raw ashes a second time increased their carbonate production […] is no different in kind from Prometheus’ discovery: in both cases empirical ‘scientific’ facts [were uncovered] about the world.” I would disagree: Prometheus’s methods, however useful, merely offer a combination of already-invented medical steps: testing the effect of a drug on metabolism, analyzing these effects, and offering diagnoses as to these effects and their possible remedies. I would think that the combination of these methods does not satisfy the “novelty” requirement required for patentability.

For a thorough analysis of the decision and its possible impacts on patent law, please read this article.

Under Florida’s “Stand Your Ground” law, a citizen has the right to respond to force with deadly force if he “reasonably believes it is necessary to do so to prevent death or great bodily harm to himself or another or to prevent the commission of a forcible felony.” If deadly force is used, police may only arrest the person if they have probable cause to believe that the deadly force was unlawful. According to the Sanford city manager, the police couldn’t arrest Zimmerman because “by Florida statute, law enforcement was prohibited from making an arrest based on the facts and circumstances they had at the time.” However, reports of witnesses and the 911 tapes indicate that there are questionable issues of fact giving rise to at least probable cause for arrest, which is bolstered by the fact that much of the evidence supporting Zimmerman comes from Zimmerman himself- and Trayvon isn’t alive to argue.

The failure of the Sanford police department to arrest Zimmerman has sparked national outrage, leading to widespread protests and a call for Zimmerman’s arrest. Two slogans have risen from these protests “Justice for Trayvon” and “I am Trayvon,” which serve as symbols of solidarity and a call for the prosecution of Zimmerman. Recently, Trayvon’s mother filed a trademark application for these two slogans. The trademark applications cover digital materials, namely DVD’s and CD’s featuring Trayvon Martin, and notably do not cover t-shirts or other merchandise. The filing attorney, Kimra Major-Morris, told Reuters in an e-mail that the applications “were filed to preserve intellectual property rights for projects that will assist families who experience similar tragedies.”

Image Courtesy of NokiaConnects.com

The basic functionality is pretty simple. The phone or other device emits a magnetic field pulse that causes the vibration of “ferromagnetic” material. According to the filing there are a variety of materials that can be used to create ferromagnetic ink responsive to this type of pulse. The ink can be incorporated into decals attached to the skin or even used for permanent tattoos. It is also possible to customize the alerts by varying the length, interval, and strength of the pulses. Just like with custom ring-tones, the pulse will identify who the message is from without the need to manually check the device.

For the record, I’m totally on board. Although my interest in a vibrating tattoo is somewhat lukewarm, I like the direction of the thinking. I suspect that there are applications for this that extend beyond the immediately obvious. Whether anything comes of the patent or not remains to be seen of course, but it is a legitimately interesting and unique (albeit somewhat strange) filing. I believe it is a good example of a development that meets the criteria provided in Title 35 §§ 101-103 of the U.S. Code requiring that the innovation be new and useful, novel, and non-obvious. I find the tattoo communication method most interesting in relation to the non-obvious requirement, which has been interpreted to mean that a designer in the field “of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit” to the change. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). In the present case the technologies were largely already present but Nokia is looking for a way to dramatically change how they interact with one another. And it definitely seems non-obvious as well as futuristic-cool. In a field often dominated by seemingly non-stop patent litigation, this news item was a nice reminder of the fun and interesting ideas underlying it all.

Image attributed to "Jason Dunn" at http://photos.jasondunn.com

When thinking about product advertisements, what does the slogan “the choice of a new generation” bring to mind?  Because of a huge ad campaign from PepsiCo, which started in the mid-1980s and lasted through 1991, and featured commercials starring celebrities like Michael Jackson and Lionel Ritchie, many adults today apparently think of Pepsi.  Having been born in 1987, and not really paying attention to much around me until after 1991, I must have missed PepsiCo’s ad campaign making that association for me.  I’m not sure why, but “the choice of a new generation” makes me think of Bagel Bites, at least when we’re talking about food.

In 2009, eighteen years after PepsiCo stopped using the ad slogan, MOM Brands applied to trademark the slogan for themselves, and now there’s an online ad with a man named Josh Anderson enthusiastically singing about how MOM Brands’ Better Oats is the now the choice of a new generation.  Especially when you consider that MOM Brands’ CEO is a former marketer for PepsiCo/Frito Lay, it looks like MOM Brands is only using the slogan to benefit from PepsiCo having built up its goodwill.  Curiously, MOM Brands might benefit from seizing PepsiCo’s ad slogan, but it almost certainly wouldn’t be a case of trademark infringement.

Trademark protection allows people and businesses to build up and protect their brands, but there’s the idea that you can lose the protection if you stop using the trademark.  15 U.S.C. § 1127 says that nonuse of a trademark for three years is a prima facie argument for abandonment of that trademark, but the underlying, determinative issue is whether the trademark retains a significance of origin.  Even after three years of non-use, a trademark holder can rebut a claim of abandonment if they can prove their intent to keep the trademark alive and resume using it in business.  In this way, a trademark can still be protected by its “residual goodwill.”

Chances are that PepsiCo would be out of luck if it wanted to challenge MOM Brands’ use of the ad slogan.  Yes, MOM Brands is profiting off PepsiCo’s investment in the slogan, but a court would probably consider PepsiCo to have abandoned it and its trademark protection.  PepsiCo hasn’t used the slogan since 1991, which was over twenty years ago.  The slogan might retain its significance of origin for many adults, but for many more I suspect they either never saw the commercials or can’t remember them anymore.  Also, PepsiCo’s not contesting MOM Brands 2009 trademark of the slogan can be construed as PepsiCo’s lack of intent to resume using it itself.  If PepsiCo could convince a court that the slogan’s significance of origin is strong enough to have survived twenty years of nonuse, PepsiCo would still have to show that it intended to resurrect the trademark and use it again.  It’s certainly not impossible for a company to make a retro-themed ad campaign, but it’s very unlikely that PepsiCo would be able to objectively show it had that intent.

MOM Brands’ use of PepsiCo’s old trademarked slogan is interesting because it allows MOM Brands to benefit from the goodwill of another’s brand, but it doesn’t impermissibly harm PepsiCo.  It does take away PepsiCo’s exclusive use of the slogan and opportunity to revive it for a future ad campaign, but PepsiCo’s trademark protection never went that far in the first place.

It’s easy to fall into the trap of thinking that intellectual property protections are meant to last forever and that those who create intellectual properties will always be entitled to their profits.  The monopolies granted to intellectual property rights holders might last a long time, but they’re not meant to privatize ideas.  Instead, they provide temporary or conditional protection to incentivize creation.  Intellectual property protections are a means to an end, and not the end itself.  Trademark law incentivizes people to invest in and develop trademarks for businesses, but when that trademark isn’t being used anymore, it goes back into the public for others to use it instead.  It’s about the development of business in general, and not anybody’s specifically.

Image attributed to Twitter user Stalley

NBA superstar Jeremy Lin’s legal representatives are already involved in attempts to trademark both his name and the “Linsanity” moniker bestowed upon him by the media and adoring fans. But few would have expected medical marijuana dispensaries to be among those parties facing potential legal action by Lin’s legal team.

“Linsanity OG” branded medical marijuana first came to public attention after the rapper Rick Ross tweeted a photo of the product earlier this month. Jeremy Lin’s lawyers have issued cease-and-desist letters to five or six medical marijuana dispensaries in California, Lin’s home state, that offer “Linsanity OG.” One of Lin’s lawyers, Pamela Deese of the Washington, D.C. firm Arent Fox and American University Washington College of Law alumnus, is quoted as saying, “[The dispensaries’] enthusiasm for Jeremy Lin got ahead of their understanding of the law.”

Certain legal experts, however, have cautioned against taking too heavy an approach against infringement since “fans and loyal customers are a category of unauthorized users that requires a particularly delicate response from the trademark owner.” But in the present case, “Linsanity OG” is a branding tool used by several dispensaries on their commercial products, some of which sell for as much as $60 for an eighth of an ounce, and not merely innocuous fan tribute.

Because businesses are benefitting from Jeremy Lin’s rising popularity, it certainly seems sensible for his lawyers to address unauthorized use of the pending trademarks. However, an officially-endorsed version of “Linsanity OG” is unlikely: the devoutly Christian Knicks guard seems more at home selling Volvo cars, and apparently wanted a letter of apology from one of the unauthorized sellers.

Urban Outfitters may have forgotten that hey, Navajo actually exist, when they began selling items like the Urban Outfitter Printed Hipster Panty.  While I’m sure it’s nice, as panties go, it’s the sort of item that makes conservative elements like the traditionalist Navajo being imitated here sit up and take notice, and not positively.  Last year, the Navajo Nation made contact with Urban Outfitters and began trying to get them to remove the targets; they met with mixed success, which a colleague of mine covered here.  Urban Outfitters removed the Navajo name from its own products in many cases, but kept other products available through alternate sources like catalogues and the Free People website, which is controlled by Urban Outfitters.  The Navajo Nation officially filed suit in February for trademark infringement and violation of the Indian Arts and Crafts Act.

The Navajo Nation has trademarks containing the name Navajo, which it uses to market its own goods and services.  They argue that by using the name “Navajo” in a product line, Urban Outfitters is falsely suggesting a connection with the Navajo Nation.  This would violate 15 U.S.C. 1052(a), section 2(a) of the Trademark Act, which would bar the registration of any mark that falsely suggests a connection with a person, institution, belief or national symbol.  If Urban Outfitters has a registered trademark in its Navajo product lines, the lawsuit could cancel that registration.  In terms of the general infringement suit, the Navajo Nation will have to prove “likelihood of confusion”, which courts evaluate based on several factors (varying in details from jurisdiction to jurisdiction) including the strength of the marks in question, evidence of actual confusion between the marks, the similarity between the marks and the marketplace in question.  While we don’t necessarily know all the details, including what products the Navajo Nation uses, Urban Outfitters is using the same word as a well-known, independent sovereign entity within the US, and that’s hardly a good sign.  As to the last count, the Indian Arts and Crafts Act prevents the suggestion that a good is of authentic Native American manufacture when it isn’t.  The latter claim seems weak to me (although I’m not familiar with the law of the Act specifically), because it’s unlikely someone seeing “Urban Outfitter Printed Hipster Panty” is an official Navajo Nation product.

The whole case shows some of the US’s odd relationship with Native Americans.  Keep in mind that the Navajo don’t dress in this “Navajo” style anymore.  The sorts of designs that inspired the fashion world’s brief fascination with the Navajo would today mostly be seen in official ceremonies or other highly traditional gatherings.  Of course, this only makes the treatment more irritating to those who value these traditions.

Image Attributed to TJ Johnson

Mayo Collaborative Services v. Prometheus Laboratories, which has had a confusing track from the Federal Circuit to the Supreme Court, finally received a ruling earlier this week.  The short answer is that the claims were found in a unanimous decision to be non-patentable subject matter.

The court summarizes the claims as:

“Each claim recites (1) an “administering” step—instructing a doctor to administer the drug to his patient—(2) a “determining” step—telling the doctor to measure the resulting metabolite levels in the patient’s blood—and (3) a “wherein” step—describing the metabolite concentrations above which there is a likelihood of harmful side-effects and below which it is likely that the drug dosage is ineffective, and informing the doctor that metabolite concentrations above or below these thresholds “indicate a need” to decrease or increase (respectively) the drug dosage.”

The Court found that patent claims must do more than just apply a law of nature in order to be patent eligible subject matter.  According to the Court, the additional steps claimed were insufficient to transform the nature of the patent claims into something more than a recitation of a law of nature.  The justices found that the step of adjusting the dosage based on the level of the drug in the blood is well known in the art, and was insufficient to transform the claims to patentable subject matter.

The court did not reinstate the machine or transformation test it overruled as the sole determining factor for patentability under 35 U.S.C. § 101 in Bilski v. Kappos.  Instead the court relied on its prior precedent of Diehr and Flook, analogizing the claim to Flook’s non-patentable well-known chemical process.  The Court reaffirmed its stance that laws of nature are non-patentable subject matter, with the reasoning that  although allowing the patenting of laws of nature might encourage their discovery, it could otherwise foreclose more future invention than the underlying discovery would reasonably justify.

Image attributed to Scott Cunningham--Getty Images

The Ultimate Fighting Championship is the largest and most profitable organization in the burgeoning world of mixed martial arts.  Their business has grown internationally in the last year, having put on successful shows in Japan, Brazil, Canada, and the United Kingdom.  The UFC currently operates on the pay-per-view model.  While UFC president Dana White has recently speculated publicly that they will move away from the pay-per-view model in the future, as their foothold with the live television market becomes more stable, currently pay-per‑view operates as a huge source of income for the promotion.  The use of streaming websites to illegally pirate broadcasts of pay-per-view programs has been an intractable problem for the UFC.  In 2010 they brought suit against Ustream and Justin.tv, two streaming content websites, issuing subpoenas for their records to find the IP addresses of those who had been broadcasting the infringing streams.  Their most recent legal action against Greenfeedz.com takes their anti-piracy crusade to the next level.

The UFC’s chief legal counsel, Lawrence Epstein, stated in an interview that the promotion has obtained user data from their latest target Greenfeedz.com.  Greenfeedz, which has since been shut down, had been charging customers to view illegally pirated streams of pay-per-view events in recent months.  Currently the promotion’s anti piracy lawyers are sifting through the data to determine who is going to be named in the suit.  A lawyer representing the anti-piracy firm representing the UFC, Julie Cohen Lonstein, has stated that suits will be brought for copyright infringement under the Digital Millennium Copyright Act.  She added that while there is no exact date for these lawsuits can be determined right now, “It will be in the very near future.”  Epstein compared the recent decision to a suit brought in 2001 by DirecTV against manufacturers of “smart cards” that allowed people to pirate their broadcast signal.

This recent maneuvering by the UFC represents a deep furtherance of their campaign against Internet piracy of their product.  While the promotion has not been shy about filing suit and recovering from websites that provide the illegal streams and some bars and restaurants that showed the illegal streams in their establishments, the current crop of planned suits is the first time that the UFC has stated that they plan to go after home viewers of illegal streams.  Under the DMCA they appear to be well within their rights to sue for copyright infringement, but it may not be so easy to actually do.  As noted by the commentators at Fightlinker, while the attorneys for the UFC do have a large amount of user data from the records of Greenfeedz, tying those records to the actual users may prove difficult.  They must tie specific users to specific illegal streams of events, which may or may not be easy to do depending on how the records of the website were organized.  It is indeed possible that these user records won’t be useful to the promotion’s goal of suing the end users depending on whether they can tie specific IP addresses to the viewing of specific events.  If the records are not conclusive it may be much more difficult for the UFC to win these lawsuits.  It remains to be seen whether the UFC can actually be successful in this endeavor as they have not yet actually filed suit against these end users.  The only way to tell if this strategy is successful is to wait and see the results of the individual suits, which may or may not be successful on a case-by-case basis.  While it remains to be seen in this specific circumstance who will be subject to suit from the UFC, the promotion is sending a clear message.  The largest promotion in the sport of mixed martial arts intends to deter piracy through legal action and has made the progression from going after the providers of pirated material to the end users.  Whether this strategy will be effective remains to be seen.

Image Attributed to Flickr User ChibiJosh

Negotiations began in Melbourne, Australia earlier this month for the eleventh round of the TransPacific Partnership (TPP).  The TPP is the latest attempt to integrate world economies and strengthen the regulatory framework of international trade.  However, the Intellectual Property community is critical of the process – largely conducted in secret – and the anticipated content of the agreement.

The current round of negotiations may rapidly propel the agreement forward because economic heavyweights such as Japan, Mexico, and Canada may finalize preparations to enter the negotiation process.  All three countries announced their interest to join late last year and have been campaigning member countries to accept their bids to enter the negotiation process.

If accepted, the increased prominence provided by these countries will subject the TPP to greater expectations and scrutiny.  Supporters of the agreement seek opportunities to reduce trade barriers to increase economic growth for the benefit of member states.  Despite the attempts by the participating countries to restrict information about the agreement, two versions of the prospective agreement have been leaked.  The leaked versions have provisions that have raised concerns among intellectual property scholars.  Critics have vocally denounced the treaty, often linking provisions of the TPP to implement criminal punishments for infringement and increase liability to internet service providers to other controversial bills such as ACTA and SOPA.

There are provisions of the TPP that will increase protections for intellectual property transmitted over the Internet.  The trade agreement seeks to increase intellectual property protections beyond current regulations of TRIPS by mandating punishments, increasing financial penalties, threatening punishment to service providers that do not remove offending links, blocking offending websites, and implementing a system of “notice and take-down” to notify users and internet service providers about infringing material.

Although the leaked text of the agreement is ambiguous, the aim is clearly to provide regulations to control online behavior.  Critics are concerned that the aims of the agreement could undermine U.S. legal principles, such as fair use and free speech, that protect the public domain.  Internationally, critics are afraid that absent the domestic protections of fair use and free speech, member countries could curtail free speech and hinder the creation of democratic societies.

Regardless of the result of the negotiations, two trends are clear: the TPP is the accepted vehicle for harmonizing international law and harmonization includes the regulation of online behavior.   At this point, the effect of the Internet on the ways that we in modern society communicate and organize our lives is almost cliché.  The effect upon the law has been just as great because the Internet has challenged many traditional concepts of law including jurisdiction, privacy, and intellectual property, just to name a few.  The TPP may become the next step to expand international standards of law from commercial transactions to mandating what is recognized as criminal behavior.

Image attributed to Flickr user The Pairabirds

Historically, hip hop music has always relied on sampling. Early hip hop artists used what they had at their disposal, like old vinyl records and turn tables, to make most of the classic hip hop tracks. This heavy reliance on samples continued into the 1980s, with the development of sampling and synthesizer machines helping to create albums like Public Enemy’s “It Takes a Nation of Millions to Hold Us Back,” which contained hundreds of samples. When hip hop began to become profitable, the music industry began to enforce its copyrights. The case Grand Upright Music, Ltd. v. Warner Bros Records Inc. illustrates the shift in attitude within the music industry about the free use of music samples. Despite the history of sampling in hip hop, the court held that rapper Biz Markie’s unauthorized use of Gilbert O’Sullivan’s song “Alone Again (Naturally)” was copyright infringement. The court held for the first time that music sampling was “stealing” and that samples must be preapproved by the original copyright owners before use. Ever since this case, hip hop artists have struggled to stay true to their art while avoiding litigation over sampling.

Musical artists do have options in this sampling dilemma. The artist can get the sample cleared for use in their new work. With music, there is a copyright for both the sound recording and the musical composition within the recording. Getting musical compositions cleared is simple — the artist would just seek a license from the appropriate compulsory licensing system organization, such as the Harry Fox Agency, for the statutory royalty rate. Getting sound recordings cleared is a little more difficult because there is no compulsory system and no statutory rate limits. The artist has to track down the information for the copyright holder of the sound recording, normally a music label or a publishing company, and request in writing permission to sample the sound recording. Then there are negotiations between the artist seeking the sample and the copyright holder over terms like ownership of the new work, royalties, form of compensation (flat fees, rolling fees, or ongoing royalties), how to credit the copyright holder, the extent of use and other important scope terms. These negotiations can go on for several months, delaying the artist’s album release or even ending with no deal at all and thus no permission to use the sample.

Alternatively, the artist can release his or her music using the sample without prior permission and hope that a defense under the Copyright Act applies. One of these defenses is independent fixation of music, where the artist re-records a sound recording using a band covering the original song. The Copyright Act does not extend infringement to mere sound recording covers even though the new song imitates the old song under section 114(b) of the Copyright Act. However, hiring a band to re-record a sound recording can be expensive, especially for an independent artist with a small budget, and sometimes a band cannot capture the sound recording exactly. Another defense is de minimis use — that the portion used was so small that the average audience would not recognize it or associate the two works as the same. The disadvantage of using this defense is that it is unpredictable: neither the courts nor the Copyright Act have defined how many notes, beats, or seconds of a sound recording are permissible as de minimis use. Additionally, some jurisdictions have completely eliminated this defense: the Sixth Circuit, for instance, held in Bridgeport Music Inc. v. Dimension Films that sampling, regardless of the amount taken, is copyright infringement when not authorized.

The artist could also release his or her music and claim fair use under Section 107 of the Copyright Act. The fair use defense limits copyright owners’ exclusive rights for the purpose of “criticism, comment, news reporting, teaching, scholarship, or research.” The court normally analyzes whether a work is eligible for fair use protection by looking at four factors: the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the effect on the market for the original work. After Acuff-Rose Music, Inc. v. Campbell, a case involving the rap group 2 Live Crew’s use of Roy Orbison’s “Oh, Pretty Woman” lyrics and music, courts have leaned toward finding fair use when the new work is “transformative.” If the artist simply samples a portion of a sound recording and the rest of the song is not “transformed,” the artist probably will not get fair use protection.

Finally, if the artist cannot get the sample cleared in time and wishes to avoid the risk of expensive litigation, the artist can choose not to use the sample at all. While this option saves the expense of preclearance and litigation, it also has a chilling effect on creativity and undermines the Constitutional principle behind copyright law, which is to promote “the Progress of Science and useful Arts.”

If Tyga cannot get the sample of Dr. King’s speech cleared quickly, I believe he will probably opt to delete that track from his album altogether, despite his desire to help a younger generation better understand King’s struggle and message by incorporating the iconic speech into his song. With the sampling lawsuit settled by Kanye West and Jay Z as an example of how time-consuming and expensive a sampling dispute can be, Tyga may shy away from using samples in the future. Regardless of how this matter is resolved, these issues with sampling are ongoing. The difficulty of the preclearance process, the expense and unpredictability of litigation, and the chilling effect of such processes on creativity all begs the question of whether copyright law is helping or hurting music. For hip hop, the answer seems to be that it is hurting.

Globally, the music industry has been advocating for stricter laws regarding illegal downloading of music on the Internet.  In response to the international concern over rampant copyright infringement via the Internet, France proposed more rigorous legislation to protect against and to punish these infringers.  After a number of drafts, the legislation backed by France’s President Nicolas Sarkozy implements a “three strikes” law.  Under the law, infringers are sent a warning e-mail, then a letter via registered mail, and then if the problem still persists their Internet connection is cut off for a period of time. The legislation was passed into law in May 2009. The three strikes law is known as Haute Autorité pour la Diffusion des Œuvres et la Protection des Droits sur Internet, though it is commonly referred to by the acronym Hadopi.  Hadopi is the also the name of the state agency that enforces the law.

The agency, just shy of three years old now, has sent warning emails to over 800,000 users and over 68,000 letters to users for their second strike.  Hadopi has placed 165 infringers under investigation in the third phase. In this last phase, courts are allowed to impose fines of €1,500, which is about $2,000. 

Supporters of Hadopi say that the system is working, as evidenced by the low number of third-stage offenders.  Supporters also point to a study by Wellesley College and Carnegie Mellon University that indicated that Internet users’ awareness of Hadopi led to about a 25% increase in sales of iTunes songs and albums among those aware of and likely to be affected by Hadopi, in comparison to other groups.  The study suggests that users who were aware of the consequences of illegal downloading purchased more music via legal downloads such as the Apple iTunes Music Store.

Critics of the Hadopi law claim that the law directly violates freedom of expression.  They are outraged that third-stage infringers would have their Internet cut off, and argue that that punishment is disproportionate to the crime of copyright infringement.  Critics further suggest that the statistics have been manipulated to signify that the Hadopi law is stopping users from illegally downloading music and films.

Recently, Hadopi sent its first third strike cases to the French prosecution office. The list of alleged infringers was sent to the public prosecutors office, where the prosecutors will decide whether they will bring legal action against the users.

In another chapter in the fight against illegally downloading music, the French government has employed a harsh consequence against repeat offenders.  Only time will tell if this system will actually stop copyright infringement from illegal downloading, but France will be keeping a close eye on this first round of cases.

Patent trolls refer to people or companies that buy up patents and then aggressively enforce them against alleged infringers. While patent holders are certainly entitled to take measures to protect their inventions, the behavior of patent trolls is considered opportunistic because they are not practicing or developing the patented invention. Instead, patent trolls are just seeking a quick payout from the lawsuit. Adding to this problem is the fact that methods commonly utilized by businesses to reduce potential patent infringement, such as monitoring patent activities of competitors or patent pooling, are ineffective against patent trolls since the trolls are not actual producers (and thus will not turn up in searches).

There are some defenses against trolls, such as claiming patent misuse or designing around the troll’s patent. However, these methods may still allow the troll to continue trolling others. For companies that choose to fight the trolls in court, one method of vanquishing the trolls for good may be to find prior art. Prior art consists of all publicly available information that describes the subject of a patent, either on its own or in combination with other references. If the prior art predates the earliest filed information for the patent by at least one year, then it may be used to invalidate a patent’s claim of originality.

While using prior art to invalidate a troll’s patent seems easy enough, finding that prior art may be like finding a needle in a haystack. In addition to being both tedious and time consuming, finding prior art will also be very expensive because the search is typically conducted by an army of attorneys. To address this problem, Article One Partners utilizes crowdsourcing. Crowdsourcing is defined as “the act of taking a job traditionally performed by a designated agent (usually an employee) and outsourcing it to an undefined, generally large group of people in the form of an open call.” The benefit of crowdsourcing is that the crowd solving the problem is typically motivated by passion rather than profit, and since there are more workers, the problem is solved quicker and at a lower cost.

Article One has been operating since 2008 and is free and open to the public (except for USPTO employees and people employed by involved companies). Once members join, Article One provides them with a list of “studies” to choose from, which contain information and descriptions related to selected patents. Members then submit their research related to the study, and the findings are processed by Article One. Article One awards 0-200 “profit-sharing points” based on the usefulness of the material submitted. The catch is that members must accrue at least 2,000 points per year in order to receive any share of the profits.

The payout is probably not worth the time for some, but it may be a good way for law students or others to sharpen their research skills while earning a few dollars. The crowdsourcing approach may also prove useful in addressing the larger issue – if a low cost solution makes it more viable to defeat trolls in court than to pay them, the incentive for trolling is eliminated or drastically reduced.

A patent is indeed not available for an invention that “was in public use or on sale in this country more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b). Public use occurs when more than one year prior to the original filing date of a patent application, the claimed invention (1) was on sale or was publicly used by a person other than the inventor who is under no confidentiality obligation; and (2) was ready for patenting. Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998). However, a public use argument may be barred if a party’s use of a claimed invention is experimental. After all, inventors should be encouraged to test and improve the invention for which they may seek a patent. This effort should be not be hindered by an additional concern that the experimental use should not be public and pharmaceutical companies especially should be encouraged to conduct thorough clinical trials on a large number of participants before launching a new product. The test to determine whether the use of an invention is experimental is whether the exploitation of a product “represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose.” LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071 (Fed. Cir. 1992).

In its decision for Sunovion, the court explains in great detail that the use was indeed public because there had been no assurance or expectations of confidentiality during those clinical trials. The court relies on the participants’ knowledge of the drug they would be testing and on the quantity of the drug administered to each participant over the extended period of those trials. The court goes on explaining that the participants were under no duty of confidentiality and that they could discuss the drug and the process with their doctors. Finally, the court points out that Sunovion did not act as though it was trying to hide a trade secret and the company was not suppressing “disclosure of the invention through the patent system.” No doubt, therefore, that the use was public.

However, no matter how public the use of Brovana had been, the public use bar could still be negated if the use had also been experimental. Nothing in the court’s reasoning as to why the clinical trials were a public use of the drug prevented those trials from also constituting experimental use. After all, the knowledge of the participants only establishes that Sunovion had thoroughly informed its participants before obtaining their consent. The quantity and length of the trials is also evidence that Sunovion was carefully testing its product before its introduction into the market. That Sunovion was not acting as though it was trying to hide a trade secret surely has an impact on whether the use was public but may seem irrelevant to a question of experimental use, which applies notwithstanding the public use.

The court, however, quickly dismissed the argument that the clinical trials were an experimental use of the invention. The court distinguished existing cases and held that here, the patentee, Dey, was not the entity conducting the clinical trials nor was the testing under Dey’s control and authority. Because Dey was not the company that conducted the clinical trials, which prevented the experimental use exception to apply, and because those trials were a public use of an invention, Dey’s patents were not valid as their applications were filed more than a year following those clinical trials. It seems reasonable that Dey’s claims should be denied for the very reason that the patent applications were filed after a grace period of one year following a public use of an invention. No matter, then, that the use was experimental if it was made public by someone other than the putative inventor. Requiring that the experimental use exception only be available to one having control over the use seems an effective way to prevent companies other than the inventor from benefiting from the necessary disclosure of information of certain clinical trials. This requirement indeed precludes competing companies from avoiding the one year grace period to file an application by arguing that the clinical trials were only experimental.

Image Attributed to German Kable-TV

It is now commonly accepted that Hulu and other providers of online entertainment are game-changers in how consumers view television and movies.   However, the widespread proliferation of streaming content has been fraught with piracy and copyright infringement issues since the creation of the media platform.  Barry Diller’s new service is no exception, according to The Hollywood Reporter.  Fox Television along with ABC, CBS, NBC and several other television broadcasters filed two major copyright infringement lawsuits against Aereo, a service which allows consumers the ability to watch broadcast television through digital streaming.  Aereo announced that it had raised $20.5 million in venture funding and is planning to launch in the New York Area in mid March.  Diller recently joined the board of Aereo after his company IAC/InterActiveCorp provided financial backing to the startup.  Diller boasted to reporters that Aereo “pries over-the-air broadcast television out of [a] closed system.”  Aereo says it intends to only offer the service locally, first in New York, before expanding to other markets, one at a time.

The broadcasters allege that the Aereo service infringes upon the copyright protection afforded to the content of broadcasters’ television programming.  In one lawsuit filed in New York federal court last week, the broadcasters say that the $12-a-month service will “provide unlimited streams of Plaintiffs’ television broadcasts over the Internet in direct competition with Plaintiffs.”  The broadcasters’ complaint also alleges “[c]opyright law does not permit Aereo to appropriate to itself the value of Plaintiffs’ television programming by retransmitting over the Internet without proper licenses” and “simply put, Aereo is an unauthorized Internet delivery service that is receiving, converting and retransmitting broadcast signals to its subscribers for a fee.” The broadcasters claim that statutory definitions and interpretations of a “public performance” render Aereo’s service impermissible as copyright infringement.  Currently, one group of broadcasters including Fox, Telemundo, and PBS, represented by Steven Fabrizio at Jenner & Block, is seeking a permanent injunction and statutory damages against Aereo. Another set of broadcasters including CBS, NBC, and ABC, represented by Bruce Keller at Debevoise & Plimpton, is after pretty much the same thing, though the cases are likely to be consolidated.

Broadcasters are not unfamiliar with battling companies that offer digital streaming services. In 2010, the same major broadcasters sued streaming television companies FilmOn and ivi, and were granted injunctions against both services.  Ivi’s strategy utilized Section 111 of the Copyright Act, which authorizes cable TV companies to make secondary transmissions of copyrighted works embodied in primary transmissions so long as a nominal statutory licensing fee is paid.  The Judge rejected this argument, holding “[n]o technology . . . has been allowed to take advantage of Section 111 to retransmit copyrighted programming to a national audience while not complying with the rules and regulations of the FCC and without consent of the copyright holder.”  Ivi has appealed this judgment, arguing that it only needed to pay a compulsory license fee.  The appeal will be heard at the 2nd Circuit later in March.  Broadcasters have well-founded reasons to fear the threat posed by startups like Aereo – Deloitte’s 6^th edition of its report The State of the Media Democracy and other sources report a long term trend of increased “cord-cutting,” a term that refers to the choice by consumers to unsubscribe from cable services in favor of accessing programming content online.  Although current statistics are not dispositive, the proliferation of websites like Hulu has increased the usage of digital streaming services, especially for video content.

Aereo defends its service stating, “[c]onsumers are legally entitled to access broadcast television via an antenna and they are entitled to record television content for their personal use. Innovations in technology over time, from digital signals to Digital Video Recorders (“DVRs”), have made access to television easier and better for consumers. Aereo provides technology that enables consumers to use their cloud DVR and their remote antenna to record and watch the broadcast television signal to which they are entitled anywhere they are, whether on a phone, a tablet, a television or a laptop.”  The district court judge in the ivi case noted that when Congress enacted Section 111, it was doing so with an “understanding of the cable industry as a highly localized medium” and ivi’s service, in contrast, ”retransmits broadcast signals nationwide, rather than [to] specific local areas.” Alternatively, because Aereo is offering its initial service next month in New York, before expanding “a step at a time, a market at a time,” the company may avoid the pitfalls ivi encountered.  The Aereo lawsuit has the potential to provide substantive implications for the future of the Internet TV business and cord-cutting trend in the broadcast television industry. 

Image Attributed to Flickr User Mr. Wright

Earlier this year Newt Gingrich was sent a cease and desist letter for his use of “Eye of the Tiger” during his campaign, but it was hardly the first time a politician got in trouble for their use of (sometimes anachronistic) songs in their campaigning. When this happens there is generally some level of media uproar, with people crying foul over the very same politicians who argue for stronger copyright protection infringing copyrights themselves. But are these politicians really infringing on artists’ copyrights? And if not, what other avenues do artists have to protect themselves?

In an effort to brand themselves and energize their followers, politicians frequently use music at their events. Sometimes this gets them into trouble. In an early example, illustrative of some campaigns’ inability to listen past a song’s hook, President Regan sought to use Bruce Springsteen’s “Born in the U.S.A.” for his campaign. Springsteen refused to endorse the President or license his music.

Modern campaigns are generally smarter about their song choice and have usually sought licenses for their commercials and events. The conflict between politicians and musicians isn’t typically over the use of music in advertising or on websites; the conflict more frequently arises from a politician’s use of a song at a live event, which usually isn’t infringing.

Most national campaigns will buy “performance licenses,” these are the same licenses purchased by retail establishments and dance clubs, and they allow the licensee to perform an entire catalogue of music. There are many advantages to this system, especially for traditional users who don’t have to go through the trouble of obtaining individual licenses and for musicians who are able to enforce their performance rights. The system does prevent individual artists from having control over the public performance of his or her work. While this isn’t a concern with use by a neighborhood Italian restaurant, political campaigns are another beast.

Campaign rallies for today’s presidential candidates are broadcast almost in real time over the internet. In a world where few people understand music licensing but where the music industry’s litigious streak is legendary, many people assume that when they hear a song being played behind a candidate that the musician endorses or is at least unopposed to the candidate’s message; which is not necessarily true.

Musicians have been successful in getting politicians to stop using their music, frequently because of a campaign’s desire to avoid negative press or confusion about copyright principles. Some musicians have been successful in suing, generally over the re-broadcasting of a song that is not covered by a performance license. Although the most frequent form of re-broadcasting is done by entities other than the campaign, who film and post individual videos or news reports that use taped footage. An artist might be able to prevent this use of their song in recorded footage of the rally under the Digital Millennium Copyright Act, given that removal of the song shouldn’t hamper the portions of the footage that are newsworthy. But that only stops the recording and broadcasting, it doesn’t prevent the live use.

For this a musician might be able to use their right of publicity as a way to enforce their rights.

If you are one of the many people who sent an email, made a phone call, posted on facebook, or otherwise acted in the fight over SOPA and PIPA, your call to action may come again in the not so distant future. Yes, SOPA and PIPA in their original forms are “dead,” but the push to address copyright infringement is paramount for the movie, music, computer software, and other industries. In his February 8th op-ed in the New York Times, Cary H. Sherman, chief executive of the Recording Industry Association of America (RIAA), expressed interest in “help[ing] come up with constructive alternatives” in the wake of the vast public outcry. Congressman Stephen LaTourette added that Congress would probably revisit the regulations next year. In the meantime, both sides of the debate will have the chance to reevaluate and negotiate position on the highly contentious pieces of legislation.

To that extent, Brad Plummer of the Washington Post wrote an excellent blog regarding five elements for Internet freedom advocates to inject into the debate over copyright infringement on the Internet. The ideas come from Public Knowledge, an organization dedicated to “preserv[ing] the openness of the Internet and the public’s access to knowledge.” While thoughtful and progressive, they all deserve context and compromise. The following considers each of the five major points.

1. Curbing abuses of copyright takedowns

The shoot-first-ask-questions-second method of taking down copyrighted materials is no doubt problematic. Under section 512(c) of the Digital Millennium Copyright Act (DMCA), service providers like YouTube are required to “expeditiously remove, or disable access to, the material that is claimed to be infringing or be the subject of infringing activity.” All that is required by the party owning the copyright is a “good faith belief that the use of the material . . . is not authorized by the copyright owner, its agent, or the law.” This low threshold standard is easy to overcome for copyright holders and the only punishment is a penalty of perjury. The damages that Public Knowledge suggest may give pause to copyright owners who play the game in a sloppy manner. Alternatively, amending the good faith belief standard to a stronger standard such as pleading sufficient facts to survive a motion to dismiss could also eliminate these frivolous claims.

2. Shortening copyright terms

One matter that lends to copyright infringement is simply the fact that copyrights last for a very long time: the lifetime of an author plus seventy years. While shortening that time is certainly a legitimate argument, there are two significant counterpoints. First, nations that are parties to the Berne Convention, an international copyright agreement, all have as their copyright length lifetime of the author plus seventy years. In addition, there is reciprocity of copyright recognition between member nations. To opt out would put U.S. policy in discord with the international community. Thus, to reduce the term of copyrights in the U.S. would put Americans at a disadvantage relative to international copyrights. If this term was reduced to fifty years, an American work would fall into the public domain and be freely traded twenty years before a foreign work would. This would allow the world to profit off of such a work before Americans could profit from a foreign work from a Berne Convention nation.

3. Clearing up “fair use” rules

Fair use is perhaps the most malleable issue in copyright law today. Public Knowledge makes four proposals to amend fair use in the United States. The third argument proposes that the government expand examples of fair use. The expansion would include “incidental, nonconsumptive , or noncommercial personal uses.” These are all areas that arguably would allow for the use of copyrighted materials under a fair use analysis already. For example, it would almost certainly be a fair use for a single consumer to rip a song from a CD that was legitimately purchased, copy it within a computer from the hard drive to its RAM, then finally copy that song to an iPod for personal use. Even the RIAA concedes that this hypothetical would not break the law. Having Congress add clarity to this issue would open fair use a little wider to individuals who could perhaps use greater security in using copyrighted materials in ways that would not “supersede” the original work (see Folsom v. Marsh).

4. Protecting against overbearing copyright claims

Two points are made here. The first is that false warning statements regarding copyright ownership should be prohibited by law. The most notable false warning statements come during sports broadcasts that pronounce that descriptions or accounts of a broadcast without consent of the copyright owner are prohibited by law. This is not the first time that overbroad claims have been targeted for overstating their copyrights. It is clear that under fair use, a New York Jets fan can recount to a friend any description or accounts of a Jets versus Patriots telecast without fear of punishment. Correcting misinformation like that is certainly a fair point to raise in the copyright discourse. The second point is that “transient” copies of copyrighted objects should be permitted under the law. This point seems a bit unnecessary in the face of Cartoon Network, LP v. CSC Holdings, Inc. In that case, the Second Circuit held that buffering between telecommunications servers did not meet the duration requirement to be considered a copy. This case law may already pave the way for “transient” copies.

5. Allowing the breaking of Digital Rights Management software for legal purposes

Digital Rights Management (DRM) prevents copying a copyrighted work after it has been purchased by a consumer. Public Knowledge makes the point that this system prevents the fair use of legally obtained copyrighted materials and should be eliminated. This simple concept is not unreasonable and not unprecedented. In 2007, Steve Jobs wrote an open letter titled “Thoughts on Music.” His central thesis was that DRM-encrypted music should be eliminated and that open music would benefit the entire music market. In 2009, Apple was able to do just that. Between January and February 24, 2009, Apple sold four billion songs, one billion shy of what they had sold in the previous five years. Public Knowledge is right to point out that this method could also provide fair use protection to other copyrighted materials like film and books and should be part of the anti-piracy conversation.

The next debate on copyright infringement will require a fair discussion of these issues and others that are likely to impact every person in America. It is right and fair to seek adequate protection for copyrighted materials. It is equally just to balance that interest with consideration for the consumers of copyrighted materials—those who made the system profitable in the first place.

Image Attributed to Flickr User Bayo

PMC, a Texas-based company that prides itself on its almost 60 active patents, is suing Zynga, the world’s largest developer of social network games, for patent infringement.

Zynga is a game developer for social networks, such as Facebook, Google+, and MySpace.  The San Francisco-based company is best known for its popular interactive games FarmVille, Mafia Wars, and Words with Friends.  Mark Pincus, an entrepreneur with no experience in the game industry, founded the company in 2007.  His minimal experience in the gaming industry doesn’t bother Pincus, as his company has developed more than 30 games and boasts 232 million monthly active users and 60 million daily active users.  Zynga has generated over $1.5 billion in revenue since 2007 and was valued around $8.9 billion before its initial public offering in December 2011.

Personalized Media Communications (PMC) owns an intellectual property portfolio consisting of over 57 active patents.  PMC alleges that Zynga is infringing on four of its active patents.  PMC is based in Sugar Land, Texas and accordingly filed suit in the U.S. District Court for the Eastern District of Texas. 

On February 10, 2012, PMC filed its complaint for patent infringement under 35 USC § 271.  The four patents named in the suit, numbers 7,797,717, 7,908,638, 7,734,251, and 7,860,131, cover “the use of control and information signals embedded in electronic media content to generate output for display that is personalized and relevant to a user.”  Each of the patents was issued for the invention of “Signal processing apparatus and methods.”  PMC’s complaint only alleges that Zynga “makes, uses, sells, offers for sale, and imports into the United States” its games which infringe on PMC’s patents, but fails to specifically explain how Zynga abuses PMC’s active patents.

PMC claims that Zynga’s infringement is “willful and deliberate” and therefore PMC is entitled to increased damages under 35 USC § 284. PMC further claims that they are entitled to attorneys’ fees and costs under 35 USC § 285, which states that the court may award reasonable attorney fees to the prevailing party in exceptional cases.  John C. Harvey, the founder of PMC, commented that “Many years of time and labor went into developing our inventions and securing the patents that permit their practice.”  Harvey went on to state that he didn’t think it would be right to let these patents be infringed upon.

Some bloggers believe that PMC is a patent troll and only after Zynga’s money. Those bloggers call the patents “vague” and point out that the patents could be used against a number of different companies.  In addition to this recently filed patent infringement suit, Zynga has had its share of copyright issues, being accused of copying game concepts from other game developers.  For some, this makes Zynga a somewhat unsympathetic defendant.  Either way this lawsuit seems to be just another testament to the inefficiencies of the U.S. patent system.

Pinterest is theoretically protected under the safe harbor provision of the DMCA, which protects websites from liability for content uploaded by their users as long as they promptly remove the content when requested by the original content owner. However, this protection is not absolute. As the Supreme Court held in MGM v. Grokster, and as has been more recently demonstrated in the MegaUpload prosecution, if a site actively encourages infringement its safe harbor protection will be taken away. With MegaUpload, the alleged problem was a failure to comply with takedown requests; with Grokster, it was encouraging users to download copyrighted music. Pinterest claims to comply with DMCA takedown notices (although at least one lawyer has criticized its policies), but whether it has a purpose without using copyrighted content remains to be seen. Like Grokster, it advertises the ability to use copyrighted material to its users. On the page for its iPhone app, for example, many of the sample images are protected, such as the poster for the movie I’m Still Here and photographs from the magazine Le Journal de la Maison.

In addition to removing infringing content, Pinterest has established a “nopin” meta tag that sites can use to prevent it from reposting their content. Some sites have taken advantage of this option, but how well it will work as a copyright solution has yet to be determined. For one thing, it places the burden of preventing infringement on the content providers, not on Pinterest. For another, it only prevents pinning items directly from the blocking site; users can still download the images and upload them directly to Pinterest. And of course, as major photo sites start to use the code, Pinterest may find its users getting frustrated over their inability to use the images they want.

The Pinterest users themselves, of course, are not eligible for safe harbor protections. So to be protected when posting copyrighted content, they would have to show some other basis for the right. Fair Use is one possibility, but there is nothing transformative about pictures posted to Pinterest, and it publishes works in their entirety. Currently, the best protection for individual users is probably their small scale and demographics. Unlike music sharing superusers, who might distribute thousands of songs, no Pinterest users have yet gained a reputation for the large-scale distribution of stock photos or other commercially-available images. Additionally, damages would be difficult to prove since, unlike with music, there would probably not be a presumption that each infringement of a photograph was a potential lost sale and the value of web traffic is more difficult to compute. Moreover, Pinterest is popular with women and parents, who would make sympathetic defendants in any case that went to trial.

Compounding their reposting problem, Pinterest’s Terms of Use are not friendly to users who wished to actually pin their own original content. In general, social media sites require users to grant them a license to use any content posted to that site, but do not make any claim of ownership, and Pinterest is no different. However, the key provision that is making some people nervous about Pinterest is that its license is irrevocable and perpetual, meaning that even if you delete content, Pinterest can theoretically still use the content however they wish. In contrast, Facebook’s terms state that the “IP License ends when you delete your IP content or your account.” Tumblr, YouTube, and Flickr have similar terms. So a user wishing to maintain control of their content might choose another service to post it – and those services are increasingly using the nopin meta tag.

Overall, Pinterest has got a good business model in that they have created a service that people are interested in, and they appear to be making money from it. However, until they work out their intellectual property issues, their place in the social media world will not be secure.

Patents for Humanity is a USPTO sponsored program in which applications will be taken in four categories: medical technology; food and nutrition; clean technology; and information technology.  Up to 50 winners will be chosen in the pilot year.  Of course, there is a reward – an acceleration certificate that allows the recipient to receive faster processing in a re-examination proceeding, BPAI appeals case, or a final decision of a patent examination.  Examples of eligible technology include “life-saving medical diagnostic equipment, water sterilization devices, mosquito control, and land mine detection, among others.”

This program recognizes that universities and businesses of all sizes should each play a role in contributing to developing solutions that support sustainable development in the world’s impoverished nations.  As USPTO director David Kappos stated, “[s]weeping revolutions in technology remind us of what the innovative drive and entrepreneurial spirit can do to build a better world.”

Although it is unlikely that companies will be handing over their patent portfolios for a bump up in the queue, any attention to global humanitarian needs is welcome.  Many corporations like Nike have “open innovation” programs designed to promote collaboration and shared knowledge.  Also, many other programs exist to inform and promote humanitarian use licenses, like Global Access in Action.

Click here for more information and instructions on how to apply.

Image Attributed to Flickr User Promiflash

As the Academy Awards rapidly approach, Hollywood is abuzz with the latest gossip surrounding the nominees and presenters, exclusive after-parties, and potential tabloid drama.  Since announcing Angelina Jolie as a presenter and her husband Brad Pitt as a nominee, one can easily picture the Jolie-Aniston split-screen producers are imagining will stir up female audiences everywhere.  But, Jolie has another catfight to wage – she has recently been sued for copyright infringement over her new film, In the Land of Blood and Honey, according to the Hollywood Reporter.

Croatian journalist James Braddock has alleged that Jolie’s movie constitutes copyright infringement of his book, The Soul Shattering, which was published in 2007.  The movie features a love affair during the Bosnian Civil War.  The book is entirely based on facts and was written as a tribute to the many tragedies that occurred during the Bosnian War, according to a website dedicated to the book.  The story honors all the women of Bosnia & Herzegovina, who were subjected to “inhumane, intended, organized and perpetual abuse and rape,” as part of the “ethnic cleansing“ designed by the Serbian regime that plotted to create “The Greater Serbia,” which they theorize as an ethnically cleansed political entity.

Jolie’s movie focuses on the human elements of the Bosnian War and similarly features a romance that takes place among great tragedies.  The story takes place in 1992, while Yugoslavia’s civil war was raging. The story features Danijel, a Serb, who first meets Ajla, a Bosnian, on the dance floor. Their new relationship ends abruptly when they are caught in a bombing.  Almost immediately, Danijel is a soldier with orders to obey, and Ajla is now a woman who lives in fear of her life in a prison camp at which Danijel is a guard.

Although the stories differ, there are significant similarities.  The author of The Soul Shattering has created a website dedicated to exposing Jolie’s alleged infringement, which points out the various features of the original book that appear in the movie.  Notably, in both the book and the movie, the female character is a prisoner in a Serbian held camp, her lover is an officer of the camp, and the male character’s father is a high-ranking “Greater Serbian” nationalist.  However, the author’s comparative lists allege that his book is the “only story ever written about a relationship between a soldier/aggressor and a victim in the war in Bosnia.” Although the stories share significant elements, it is highly unlikely that these are the only two stories that have featured similar characters or themes.  Braddock will have to prove that Jolie’s movie plot is substantially similar to that of his book in order to prove infringement. 

In addition to claiming copying, Braddock must also prove access to the copied material.  To do so, he is pointing to Edin Sarkic, a figure that may become a key player in the controversy if Braddock’s claim advances to trial.  Braddock claims that after publishing his book in 2007, he traveled to Sarajevo to promote his work and raise awareness for Bosnian war victims. He claims that Sarkic told him that he read The Soul Shattering and wanted to meet to discuss the book in further detail. Braddock alleges that he and Sarkic met three more times in 2008 to discuss details about the book, “including plot and character development and the story’s cultural significance and historical accuracy.”  Braddock claims that he and Sarkic kept in touch over the next two years, continuing to discuss the book and the possibility of developing the story into a film.  Braddock also alleges that he contacted an employee at one of Jolie’s charities to propose that he and Jolie collaborate on village-development projects in New Orleans and Sarajevo.  Braddock has named Edin Sarkic as a co-defendant in the lawsuit.  Sarkic served as one of the film’s producers and has been credited in the press with helping Jolie attain the necessary permits to film in Sarajevo.

The court will have to decide whether Sarkic provided Jolie access to Braddock’s book and whether Jolie’s storyline is substantially similar to constitute infringement.  Courts rarely find infringement when works share common themes or feature stereotypes or archetypes.  Judge Learned Hand developed this standard in Nichols v. Universal Pictures, stating what is now commonly referred to as the idea-expression dichotomy or the “abstractions” test:  protection of literature cannot be limited to the exact text, but the court cannot grant protection to generic characters or themes.  Thus, the issue is whether the elements taken were “substantial.”  The rationale behind this standard is that some content falls within the public domain and must remain unprotected so that other authors are able to play upon commonly understood ideas and characters.   Here although the two works share similar elements as described above, the court will probably find that such archetypal themes as romance in wartime, star-crossed lovers, the abuse of women, or ethnically charged conflict are not copyrightable and are not in a fixed medium of expression sufficiently similar to Braddock’s incarnation of these themes.

Braddock indicated that he knew about the film since early 2010, but waited to file the suit until just before the premiere date.  U.S. District Judge Robert Dow, Jr. in Illinois said that there were valid concerns about the timing of the lawsuit and suggested that the late filing would be a consideration when examining equities, harm and the public interest. The judge also noted that the plaintiff hadn’t yet shown that “immediate and irreparable harm would result” from the film’s release and hadn’t yet demonstrated that the opposing parties had been noticed. The author withdrew his claim for a temporary restraining order after the film’s distribution company convinced Judge Dow that there were problems with the motion, but as of mid-December he was still pursuing damages for infringement.

Although she is most known for her humanitarian work, famous family, and her role as heroine Lara Croft in Tomb Raider, this is the first film Angelina has directed.  The film debuted December 23, 2011, and was nominated in the Best Foreign Language Film Category at the Golden Globes.   Jolie has brushed off the legal action, adding, “It’s par for the course. It happens on almost every film.”

In February 2011, the Naked Cowboy filed claims of trademark infringement, unfair competition, and dilution against CBS after a character on the soap opera “The Bold and the Beautiful” wore a costume resembling the Naked Cowboy’s signature look. According to the court record, a character on the show named Oliver appeared wearing only a cowboy hat, cowboy boots, and briefs, while playing a song on his guitar. Unlike New York’s Naked Cowboy, the words “Naked Cowboy” did not appear anywhere on the character or in the show. During later promotions of the show, however, CBS sold advertising on a YouTube clip of the show titled “The Bold and the Beautiful – Naked Cowboy,” and used the words “naked” and “cowboy” in tags on the clip.

CBS moved to dismiss the suit under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted. The court recognized that Naked Cowboy was afforded trademark rights in the phrase, but infringement would require CBS to actually make use of the mark in commerce. Since the mark never appeared in the television show, CBS did not use the mark in commerce in that context. CBS sold adwords on YouTube, but the court held that this did not constitute use in commerce because CBS did not place the words on any goods or use them in a way that would indicate source or sponsorship. Although the term “Naked Cowboy” appeared in the title of the video, the court held this was protected under fair use because CBS was using the term to describe the content of the video.

In regards to the unfair competition claim, the court recognized that the Naked Cowboy costume was highly distinctive and recognizable enough to be a protectable mark. Part of the Naked Cowboy’s distinctiveness was the result of the words “Naked Cowboy” appearing on his hat, boots, and guitar. The court held that the character appearing on the show was sufficiently different because the words “Naked Cowboy” did not appear anywhere on the character. For the sake of thoroughness, the court applied the Polaroid factors for likelihood of confusion and concluded there was no such likelihood of confusion.

The trademark dilution claims were dismissed for similar reasons. The court found that The Bold and the Beautiful character’s costume was not similar enough to the Naked Cowboy’s trademark garb to satisfy the elements of dilution. The court also relied on reasoning that CBS did not make use of the mark in commerce to justify dismissing the dilution claim.

The entire court document can be found here.

Other snack food companies may see Princeton Vanguard as a threat.  According to a market research company in Chicago, Pretzel Crisps are the 6^th most important player in the pretzel snack market (although they are also often classified as a cracker).  Frito-Lay has tried to market its own versions of flat, crisp pretzels with Rold Gold Pretzel Chips and Rold Gold Pretzel Waves, but neither product is still being sold so we can assume they met with limited success.  And now it has moved to challenge Vanguard’s trademark registration.

The problem is that Vanguard’s trademark is actually worryingly weak.  The product is literally a crisp, flattened pretzel, and the name is “Pretzel Crisp.”  Trademarks are rated according to how directly their name corresponds to their product.  “Merely descriptive” trademarks are weak, while “arbitrary” or “fanciful” marks are the strongest.  Generic marks, which are the generic term for the product type, cannot be trademarked at all.  Because Pretzel Crisp describes the product so well, it is probably a descriptive mark.  Descriptive marks are valuable for reasons other than trademark strength; they are useful at attracting consumers who want to know what they are getting, and they show up more clearly on Internet searches for products in their category.  However, to sustain a descriptive trademark, an owner must show that it has created “secondary meaning” in the marketplace.  That means people must, on hearing the mark, think not just of the class of product but the specific product associated with the mark.  Usually trademark holders achieve this with advertising and longstanding market presence, and in court prove the existence or lack of secondary meaning via survey evidence.

Luckily for Princeton Vanguard, even if the mark is cancelled by the court for lack of secondary meaning, they could still market their product.  However, if they wanted to continue protecting their distinctive brand, they should probably change the name or add to it to make it something more distinctive.

Image attributed to Flickr user Lunaming5

Under Article 31 of the Trademark Law of the People’s Republic of China, “An application for registration of a trademark shall not create any prejudice to the prior right of another person, nor unfair means be used to pre-emptively register the trademark of some reputation another person has used.” Chinese law further states that a plaintiff is entitled to relief for infringement where “(1) the individual is a famous public figure, (2) the defendant acts in bad faith by intentionally using plaintiff’s name or other personal attributes without authorization, and (3) the use of the plaintiff’s name or other personal attributes damages the plaintiff by causing confusion among consumers who mistakenly associate the infringer, its products or services with the plaintiff.”

Jordan will probably have little difficulty proving the elements for relief. First, Jordan is a famous public figure in China: he is a six-time National Basketball Association champion, two-time gold-medal winner at the Olympics, and has visited the country several times since retiring. Second, Qiaodan Sports clearly acted in bad faith by knowingly profiting from Jordan’s name and identity. The company used the term “Qiadoan,” which has been associated with Michael Jordan in China since the 1980s, in advertisements, large marketing campaigns, on sportswear, and as the company’s domain name. The company also employs the number “23,” synonymous with Jordan, on much of its sportswear. The company’s logo is similar to the “jumpman” logo Nike uses on its Jordan sportswear and shoes. The company even used the names of his sons Jeffrey and Marcus on several of its sporting goods. Finally, Jordan will probably argue that even though he only has a trademark in English, the Qiaodan trademark should be revoked because it was registered as the Chinese version of “Jordan” in 1998 without authorization, and causes confusion among Chinese consumers as to the relationship between Qiaodan’s goods and Michael Jordan.

A representative from Qiaodan Sports, however, argues that these similarities are coincidences, that “there is no connection, 23 is just a number like $23 or $230” and the use of Jordan is not misleading because “there are so many Jordans besides the basketball player, there are many other celebrities both in the US and worldwide called Jordan.”

However, there are just too many similarities between Jordan’s brand and Qiaodan’s– a Chinese consumer would reasonably believe Qiaodan and Jordan are the same brand. In fact, a 2009 survey conducted by a marketing company contradicts the Qiaodan Sports representative’s assertion that the Chinese consumer is not misled by its brand. The Shanghai survey found that 90 percent of the 400 survey takers in China believed that Qiaodan Sports was the Chinese version of the Jordan brand.

Besides, Jordan has recent Chinese case-law on his side. In 2010, basketball player Yi Jianlian successfully sued Fujian Yi Jianlian Sport Good Company, a local Chinese company, for the unauthorized use of his name. The court held that the name of a famous person is a “highly renowned trademark.” Similarly, according to the Wall Street Journal, in 2011, another basketball player, Ying Ming successfully brought suit against Wuhan Yunhe Dashayu Sportwear Company for the use of “Yao Mingyidai” or “Yao Ming Era” as a brand name without authorization. Both of these cases show the country is becoming stricter in its enforcement of naming rights.

Nonetheless, this case may not be a slam dunk, as there are many factors that make the result unpredictable. One of these factors is national deference. In both of the above-mentioned cases, the plaintiffs and defendants were Asian, which may have influenced the court’s ruling. In Jordan’s case, you have a foreign person against a national Chinese brand. Chinese courts do not have a great track record dealing with foreign entities, as evidenced by the continuing struggles of Microsoft and Apple to enforce their intellectual property rights in China. Additionally, ruling in Jordan’s favor may not be in the best interest of the Chinese people, as Qiaodan employs thousands of Chinese workers and has contributed millions to the country’s economy. Jordan asserts in the New York Times, however, that this lawsuit is about his name and identity – not money.

This will be an interesting case to follow and Jordan will be keeping everyone updated through his website, which is completely dedicated to the case. With the statute, case law, and other factors in mind, you be the judge: would you believe “Qiaodan” and “Jordan” were the same brand?

Image Courtesy of Daniel Moore, New Life Art, Inc.

A native of Hoover, Alabama, Daniel Moore’s fame began in 1979 when he depicted Alabama’s goal-line stand against Penn State, and was subsequently given sideline passes and access to many of the university’s items from the Paul W. Bryant Museum for use in his paintings. The University did not begin to ask Moore to pay a licensing fee for his images of the football team until 1999. Moore claims that University of Alabama officials demanded an eight percent royalty on all the art he had done since 1979 and for any new work. Because he refused, Moore was denied sideline passes and in 2005 the University filed a lawsuit in federal court claiming trademark infringement for depicting images that contain school logos and insignia.

A United States District Court in Birmingham issued a ruling favorable to Moore in November of 2009, with District Court Judge Robert Propst noting that it is likely Moore’s customers buy his work out of loyalty to the football team and not because they were under the mistaken assumption that Moore’s products were officially licensed merchandise of the University. See Univ. of Alabama Bd. of Trustees v. New Life Art Inc., 677 F. Supp. 2d 1238 (N.D. Ala. 2009).

The University has appealed the decision to the United States Court of Appeals for the Eleventh Circuit in Atlanta, which heard the case on February 3, 2012.

High-profile amicus briefs have been filed in support of both sides. The American Society of Media Photographers argued that Moore was following a long artistic tradition of depicting the culture of his environment: “Daniel Moore lives in Alabama; he paints football … To say football is special in Alabama is to understate the state’s passion for and interest in it — not by inches, but by yards.” The University has received amicus briefs from twenty-seven other universities.

Most crucially, an amicus brief was filed in support of Moore by a collection of intellectual property law professors, who stressed that Moore’s “realistic depiction of Alabama football games cannot give rise to a claim under the Lanham Act.” One of these law professors, Mark McKenna of Notre Dame, makes the point that artistic free speech rights “should not be subject to licensing arrangements by colleges and universities.”

In an open letter, Moore sounds genuinely hurt that the very institution he devoted his career to glorifying is suing him. Moore asserts that he is not infringing on the University’s trademark because, “I sign each one of my paintings upon completion with my own ‘mark’ (my signature) to clearly proclaim that I am the creator of the work and as a notice to the source of its origin.”

According to UCLA law professor Eugene Volokh the plaintiffs actually have a fairly decent argument because filing the briefs in court “doesn’t waive any copyright” which turns this into a murky fair use question with “no clear answer.” Fair use protection is detailed in Title 17 section107 of the U.S. Code and stipulates that certain uses of protected materials are not infringement. These fair uses include criticism, reporting, and education. Determining fair use occurs by applying a four factor test the code provides. As noted by professor Volokh there isn’t really much precedent to draw from in interpreting the outcome of this case, but running through the fair use factors is an interesting thought exercise.

1 – The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes

This factor splits right down the middle in my mind. Westlaw and LexisNexis are clearly aggregating the material to charge subscription fees for access but the material is primarily used for research and educational purposes. It is important to note that the court where this case was filed has previously held that the public benefit is not offset by the fact that the defendant’s motive is commercial gain. Time, Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968). The Time, Inc. case, involving photographs of the Kennedy assassination, departs fairly significantly from the details of the current case.

2 – The nature of the copyrighted work

The nature of the copyrighted work in this case is one that people may disagree on. It is factual but not a simple listing of facts. Significant effort generally goes into making a persuasive argument. I’ve bounced this around with peers and have heard very different opinions on whether or not this constitutes “creative work” that should be protected or if merges with the publicly available court material when it is entered as part of a case. I tend to lean towards the latter position.

3 – The amount and substantiality of the portion used in relation to the copyrighted work as a whole

There’s not really anything to discuss here. The material in question is copied and made available in full. This factor heavily favors the plaintiff.

4 – The effect of the use upon the potential market for, or value of, the copyrighted work

In my opinion the outcome will be decided primarily on how the court analyzes this factor. In Time,Inc., the court suggested that perhaps the most important part of the fair use test is the damage or injury that the plaintiff suffers. Id. The court found in favor of the defendants under fair use largely because the plaintiff could not demonstrate competition between the plaintiff and defendant and “no market for the copyrighted work appear[ed] to be affected.” I suspect that the plaintiffs in this case will struggle to demonstrate that they are in competition with Westlaw and LexisNexis or that they have been financially impacted by the existence of their research sites.

As a law student this suit is fascinating to me. An injunction against Westlaw and LexisNexis would presumably be crippling to legal research at the academic and professional levels. I suspect that the court will interpret this case as somewhat frivolous and not be particularly generous to the plaintiffs on the close questions. You can’t know until you try though and the attorneys bringing this suit certainly plan to find out.

Less than a week after the infringement suit was filed, the parties settled this dispute. The terms of the “amicable” settlement remain unknown, but Folliard will continue to use “Big Ginger” on its whiskey and ginger ale drink.

Why did these parties settle so soon? Even though the majority of cases don’t reach trial, did one party believe their claim or defense was weak and they were better settling? If this case was not settled, a court would find trademark infringement if a likelihood of confusion among consumers exists. 15 U.S.C. §§ 1051–1127.  An eight-factor test exists to help in this determination by considering the strength of the mark, proximity of the goods, and similarity of the markets. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The court also considers evidence of actual confusion, marketing channels used, sophistication of the products, defendant’s intent, and likelihood of expansion of the product lines. Id.

Weighing these factors, Jameson’s “Big Jameson Ginger” name would most likely be found to infringe on Folliard’s federally registered trademark, “Big Ginger.” Besides the word Jameson, the names used are identical. The goods are also proximate, since they are both whiskey drinks. Not only do the drinks contain whiskey, they are almost identical cocktails containing ginger ale. It can also be implied that Jameson had intent to confuse, since it was aware of Folliard’s trademark when it previously tried to buy the rights to “Big Ginger.”

The terms of the settlement are unknown, but was Jameson smart to settle quickly or should have Jameson fought to use the mark in court?

Image Attributed to IPB Blogger TJ Johnson

On Thursday, February 16^th, 2012 a German district court ruled that a gesture used by some Android software is covered by Apple’s slide to unlock patent. Motorola had been using a padlock image that was slid across the screen in order to unlock the device.  The German court appeared to be concerned with the gesture itself and the result of the action of sliding an icon to unlock the device, making it ready for use.

Earlier this month, Motorola received an injunction forcing Apple to disable its data push feature in Germany. Apple has now attempted to turn the tables by winning its latest lawsuit which will force Motorola to redesign some of the features that control how to turn on its smart phones and tablets. Motorola has asserted that the ruling would not create a problem for sales of Motorola devices in Germany, Europe’s largest Smartphone market. Motorola has already implemented a new design feature allowing the company to continue sales in Germany.

Some have expressed strong feelings that Apple is winning the patent battle and Google is in trouble. For example, Florian Mueller has suggested that “[t] oday’s ruling is significant bad news for Android at large, and Google. . . . Today’s ruling … shows that the noose keeps tightening around Android’s neck in many ways.” Google has been trying to improve its intellectual property position by its recent  purchase of Motorola Mobility as well as other patent rights. But, it may be too little too late, since Microsoft has asserted yet another complaint against Motorola, this time for the use of touch inputs on Android devices.

With both Microsoft and Apple going after Motorola and the Android platform, each is taking a different approach to the final goal of litigation. Apple has been seeking injunctions to stop the sales of Motorola devices outright, allowing Apple to expand its sales. Meanwhile, Microsoft has taken a different approach to its patent battles, seeking licensing and per device fees for infringement of its patents. Only time will tell which strategy will pay off in the end.

For more on when Apple first received its Slide to Unlock patent please see Locked Out: Apple Gets Patent for “Slide to Unlock” Feature by Brandon Marsh.

The protection of a character as separate from the protection of the surrounding work of fiction could sound surprising at first. If one were to write a story about a teenage magician with jet-black hair and a lightning-shaped scar on his forehead, one would likely be sued over copyright infringement of J.K. Rowling’s Harry Potter books, more so than over the trademark infringement of its main character. However, one could also be sued for trademark infringement of the character of Harry Potter. Both ways, intellectual property protection of fictional characters may indeed turn these pieces of imagination into very lucrative creations. Although ERB, Inc. is arguing that the company still owns copyrights over Tarzan and John Carter of Mars in certain countries and that the distribution of Dynamic comic-books in those countries would result in copyright infringement under foreign laws, ERB, Inc. mainly bases its claim of infringement on Tarzan’s and John Carter of Mars’ trademarks. The strategy surely has to do with the difficulty of proving copyright infringement of a fictional character. It is by nature so ambiguous to define most characteristics of a fictional character, besides physical or general descriptions (e.g., jet black hair, light green eyes, lightning-shape scare on forehead). However, it does not appear that showing trademark infringement would be an easier way in this case.

Courts have long struggled over the copyright protection of fictional characters. Fictional characters are oftentimes only the personalization of general ideas or traits. However, copyright law only protects expressions of ideas, not the ideas themselves, and can hardly be a ground for protection where the work is only representative of general character traits. As Judge Learned Hand put it: “[t]he less developed characters, the less they can be copyrighted; this is the penalty an author must bear for marking them too indistinctly.” Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930). Through this distinct delineation standard, characters could be protected under copyright law but the general ideas embodied in those characters would be left to the public domain. Determining copyrightability over the specificity of a character may nonetheless not offer a consistent test. The more general a fictional character is, the more popular this character is likely to be. Popular characters are adaptable characters; they are characters which are easy for most to relate to. Heathcliff of Emily Brontë’s Wuthering Heights or complex Fitzwilliam Darcy in Austen’ Pride and Prejudice may respectively be tortured (Heathcliff wins here) and complex. Yet they both embody general ideas, including the struggle of adapting to different social circles of one’s own. An idea to which a consequential number of people can transfer and adapt to their own experiences. Those character traits would likely not be copyrightable.

ERB, Inc. still could have had a claim under copyright law (provided that Burroughs’ works had not fallen into the public domain) under a “story being told” test. Under this test,“[i]t is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by the copyright.” Warner Bros Pictures, Inc. v. Columbia Broad. Sys. Inc., 216 F.2d 945, 950 (9th Cir. 1954). In both Tarzan of the Apes and John Carter of Mars, the two characters really constitute the story being told: the story only exists and solely revolves around these two characters. This test, however, has been altered, avoided, rejected, or used only in conjunction with the distinct delineation test by many courts. Still, ERB, Inc. argues that Dynamic’s comic book series does not respect Burroughs’ original works and hurts ERB, Inc.’s image–the family argues that some comic covers even showed pornographic images with over-feminine features. Provided that these remarks could ground any claim of actual disrespect of Burroughs’ work, ERB, Inc. could have argued that Dynamic’s series infringes on Burroughs’ moral rights, which are permanent, and indeed cover any attack to the work’s integrity. No matter, then, that the works would have fallen in the public domain, ERB, Inc. would still be able to argue moral rights infringement. The likelihood of success of such a claim, however, is uncertain in the United States.

But trademark protection over Burroughs’ work is not much more likely to succeed. Unlike copyrights, trademarks can persist as long as the mark is identified as a source for specific goods or services. Under such a claim, however, a party must show that its mark is distinctive, protectable, and that the litigious work indeed infringes on the mark. As to distinctiveness, all courts have held so far that fictional characters only have distinctiveness when “they have undergone a reasonable degree of circulation and established some level of public recognition.” Kathryn M. Foley, Protecting Fictional Characters: Defining the Elusive Trademark-Copyright Divide, 41 Conn. L. Rev 3, p. 941 (2009). As Foley points out, however, “[t]he proponent of a trademark must satisfy the heavy evidentiary burden of acquired distinctiveness through widespread use and recognition.” Id. The mark must also indicate the origin of the goods or services. A recent Supreme Court case has shed light on this requirement, holding that the character must serve as an indicator of the source of the mark, which cannot be deduced only from wide public recognition or popularity. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37 (U.S. 2003). Trademark protection, therefore, can only be granted to a fictional character such as Tarzan of the Apes or John Carter of Mars where Tarzan and John Carter of Mars identify the origin of the goods or services they sponsor. That the name “Tarzan” should be a lucrative source of income for ERB, Inc., there is not much doubt. Fictional characters’ names may be protectable elements under trademark law indeed. However, it is yet unclear (to me, at least) whether Tarzan is the identifier of any source of specific goods or services provided by ERB, Inc. The mere association between the trademark image and the character itself is unlikely to succeed.

Image Attributed to Flickr User Andre Natta.

In a world where it is getting harder to get an audience for commercials, Madison Avenue needs a hook. When that hook is a famous copyright and the audience is the Super Bowl’s it is best to play it safe and get a license, even if it comes at a cost.

The Super Bowl, in addition to being an excuse to take a few hours off from studying and off of a New Year’s diet, is also an event that is replete with significance for intellectual property, (although this may be more evident to those of us with a flagging interest in professional football.) The NFL is famous for going after trademark infringers; the athletes and their trainers are searching for innovations that will give even the slightest edge using materials and devices both under and out of patent protection; and the telecast itself, not to mention the half-time show, is all protected by copyright. This is all before we even consider the fact that it is the largest television event of the year, and unlike many it is all but immune to being DVR’d to speed through later, making its significance for marketing grow in the last few years.

One of the most anticipated commercials of this Super Bowl was a Honda commercial featuring Mathew Broderick reprising his Ferris Bueller character.  The rise of individuals recording shows to watch later and watching television online has made commercial advertising more difficult. For these reasons, advertising companies try to hype their commercials to get voluntary viewership online or on the recorded DVR version, all while maintaining focus on their primary goal of selling goods and services.

One way to pique interest in commercials is by using characters that the audience can connect to, in some cases this is a task of branding like in M&M’s trademarked candy pieces, but sometimes a company draws on other characters. This year Honda used the plot line of Ferris Bueller to sell their CR-V’s. This is not the first time they have used a famous movie character to sell their cars. In the 1990s, Honda got in trouble for using a character stylized after James Bond to sell its Civic del Sol convertible. MGM sued Honda in the Central District of California for misappropriating its character and was able to receive damages and enjoin Honda’s further use.

Honda did not make that mistake this year. Ferris Bueller is owned by Paramount Pictures, a subsidiary of media conglomerate Viacom, which is in a continuing legal battle with YouTube over copyright infringement. Honda licensed the Ferris Bueller character from Paramount pictures, and neither side is disclosing what Honda paid for it. If I were Paramount, I would have asked for a hefty sum, because as advertisers feel continued pressure to pull audiences to them, copyright owner’s iconic characters become increasingly valuable.

Image Attributed to Flickr User teamstickergiant

New York Knicks point guard Jeremy Lin has taken the NBA by storm, becoming one of the most miraculous sports stories in recent memory. Given the massive exposure he has received as part of his meteoric rise to the King of Gotham, it was inevitable that someone would try to cash in on his fame. Two men, a 35 year old Californian and one of Lin’s high school coaches, have both filed trademark applications for the term “Linsanity,” a nickname bestowed upon Lin by the media. Lin has also thrown his hat into the ring, filing his own application with the United States Patent and Trademark Office (USPTO). This situation demonstrates how instant-brands created in the Internet age are handled, especially when juxtaposed against the backdrop of Blue Ivy Carter’s emergence as a brand.

The first application was filed by Yenchin Chang, who appears to be a fan looking to cash in on the crazy surrounding Lin. Chang wants to trademark the term because he is “excited” and wants to have some fun with the trademark. However, there is little chance that Chang’s application will be approved. First, Section 1(a) of the Lanham Act allows an owner of a trademark used in commerce to register her mark with the USPTO. There is no indication that Chang has used “Linsanity” in any commercial capacity. Section 1(b) of the Lanham Act allows a person with a bona fide intention to use a trademark in commerce to request registration of that trademark. While Chang makes the argument that he will start using “Linsanity” in commerce by selling t-shirts and jerseys, Section 1(b)(3)(D) precludes him from receiving registration because Lin has a legitimate claim to the mark. Chang has also offered to sell the mark to Lin, provided it gets approved, which seems like a bad faith move on Chang’s part. Accordingly, Chang’s application will likely be rejected by the USPTO.

The second application was filed by Andrew Slayton, one of Lin’s physical education teachers in high school. Slayton purchased the domain names Linsanity.com and TheJeremyLinShow.com in 2010. News reports suggest that Slayton has been selling up-to-date knockoff Lin Knicks jerseys on his websites, although it is unclear whether Slayton had been selling “Linsanity” merchandise on those websites when he acquired them in 2010. Based on Section 1(a) of the Lanham Act, it might appear that Slayton has a legitimate claim to the “Linsanity” trademark because he has used the mark in commerce by selling t-shirts and jerseys. However, similar to Chang’s claim, Section (1)(a)(3)(D) likely prevents Slayton from receiving registration because Lin has a legitimate claim to the mark since Lin inspired it and consumers would likely associate products sold under the “Linsanity” moniker to come from Lin or the Knicks. Slayton also faces the prospect of violating the Knicks’ trademarks for their jerseys because he sells knockoffs. Given this information, it seems highly unlikely that Slayton’s application will be approved by the USPTO.

Lin recently decided to stake his claim to “Linsanity,” filing his application with the USPTO after the first two applicants. His claim encompasses all manner of apparel, such as jerseys and underwear, and other merchandising areas, such as backpacks and beer sleeves. Lin now joins the long line of athletes and coaches who have tried to protect their brands. The list includes former Los Angeles Lakers coach Pat Riley, who successfully trademarked the term “Three-Peat,” and New York Jets cornerback Darrelle Revis, who has tried to trademark the term “Revis Island.” Even Tim Tebow has filed an application for “Tebow Time.” It makes sense for athletes and celebrities to protect the value created in a mark credited to them, if only to prevent others from capitalizing on that value without any investment in cultivating that mark. While there is something fundamentally unfair about having competitors profit off of the goodwill engendered in a valuable mark, it also seems a little strange that one person should be able to protect a mark when it has become so valuable in such a short amount of time. Two weeks ago, the “Linsanity” mark was relatively worthless, but now it is a commercial force in its own right. Lin did forge the value of the brand with his inspired play, but it is interesting to see the expedited rise of his mark, especially when compared with companies that had to invest large amounts of money and wait many years for their marks to reach the same level.

I haven’t followed the whole cupcake fad with any particular interest; I’m more of a frozen yogurt fan.  But it’s no surprise that when a type of product rises in popularity, the rise in competition will lead to intellectual property disputes.  In particular, the spike in cupcake stores throughout the country will inevitably lead to disputes over trademarks.

Candace Nelson, judge in the “Cupcake Wars” TV show has been involved in a trademark dispute over the name of a cupcake store in Fairfield, Connecticut.  The store, formerly known as Pink Sprinkles will now be renamed to “Pink Cupcake Shack” as part of a settlement in a trademark infringement action, claiming that the name would cause confusion with Nelson’s company, “Sprinkles Cupcake.”  Sprinkles Cupcake opened its first store in 2005 and has achieved national recognition, aided perhaps by Nelson’s presence on Cupcake Wars and exposure on shows Oprah and Martha Stewart’s.

This is a good old likelihood-of-confusion issue.  So if it had gone to court, that court would have examined how close the marks were, how well-known the original mark was, the similarity of the markets involved and whether there was evidence of real confusion.  Here, we don’t know whether there was any actual confusion, but it’s clear that both were in the same market and I would assume that the hypothetical average purchaser of cupcakes isn’t particularly discerning.  The original mark seems fairly strong, since it belongs to a well-known cupcake maker with multiple stores who has been featured on national television.  That said, aren’t there only so many appropriate names for a cupcake store?  “Pink Sprinkles” is dangerously close to being merely descriptive, which would mean Nelson would have had to show the words “Pink Sprinkles” were associated with his stores in the minds of the marketplace.

There’s no particular moral to the story, other than demonstrating the way the national trademark system can be clumsy at times.  It seems unlikely that Pink Sprinkles would ever have come into direct competition with Sprinkles Cupcake, and it’s perhaps unreasonable for a company in Connecticut to be aware of a somewhat similarly named store in California.  That said, maybe Sprinkles Cupcake is famous enough in the cupcake world to deserve that protection.

Apple lost a court battle in China to Proview in December 2011, and was ordered to pay Proview approximately $1.59 billion if it loses the final court ruling. Apple subsequently claimed a victory over use of the mark in Hong Kong, but had the case dismissed in another Chinese court that ruled the agreement only covered use of the mark in Taiwan. Earlier in February 2012, Proview sought to enjoin the sale of Apple’s “iPad” in China, claiming that the agreement did not cover the Chinese market. Several Chinese retailers, including China’s leading Apple retailer Suning, have since halted sales of the iPad until the trademark dispute is resolved.

There is wide speculation that this is quickly becoming a political battle. Apple has created thousands of jobs in China (although it has faced consistent accusations of allowing poor working condition), and to rule against the company would surely invoke some retaliation. Adding to this speculation is the fact that Proview is alleged to be profiteering and simply seeking a large pay-out from Apple. Proview is purported to be in heavy debt and has had its shares halted on the Hong Kong stock market since 2010. Regardless of Proview’s motivations, the general consensus seems to be that Proview has a strong argument under Chinese IP law and could prevail unless a settlement is reached or there is a political intervention.

The shutdown of websites that provide access to copyrighted materials is becoming more and more prevalent in and outside the United States. In the past few months, we have seen the shutdown and ongoing litigation regarding the “digital locker” Megaupload and the recent shutdown of sites streaming sports telecasts. To prevent access to a website, a nation must prevent access to both the domain name as well as the IP address assigned to the site. To prevent the data available on the site from being accessed again, the authorities must also take possession of the data that the website was making available. In the RnBXclusive case, access to the website was stymied by agreement between SOCA and a hosting provider that was not based in the UK. The details of the agreement are unclear, but it sends an unsettling message to pirates that thought they were protected by maintaining their pirated information overseas.

Intellectual Property Magazine, a UK based legal publication, explains that in the UK, courts can order Internet Service Providers (ISPs) to block copyright-infringing sites that are hosted overseas from local audiences. Of course, the website may still be operable for audiences outside of the UK. For RnBXclusive, SOCA was effectively able to shut down all access to the site because the website hosting provider took down the site on the ground that RnBXclusive broke the terms and conditions of its hosting contract.

Particularly curious in the RnBXclusive case is SOCA’s circumvention of the court order. In July 2011, UK courts set a precedent when six film studios, all American-based and all members of the Motion Picture Association of America (MPAA), successfully won a case against BT, the global telecommunications company, to prevent access to Newzbin2, another website violating copyright law. BT was shown to have actual knowledge “that the users and operators of Newzbin2 infringe copyright on a large scale,” providing a basis to prevent access to the site. As ZDNet notes in its piece (the link above), preventing access to a site is a stopgap solution to piracy. The court order requires all ISPs to cooperate and allows website creators who simply change IP addresses and hosting providers to slip through the cracks.

It is unclear if SOCA’s new tactic will effectively stop pirate sites in their tracks. Reports read by this author on the SOCA seizure do not clearly state if the data the website posted has been seized or not. This means that the files RnBXclusive has been broadcasting on its site may still be saved to a computer or server somewhere in the world. Perhaps the arrest associated with the shutdown will yield a seizure of that data. In the case of Megaupload, U.S. authorities quickly seized control of servers being used in Virginia to hold files saved on the site. Without such seizure of hard data, the RnBXclusive files may still see the light of the Internet through other website domains, creating a metaphorical Whack-a-Mole for SOCA.

For users of RnBXclusive, SOCA has provocatively stated that “users [of RnBXclusive] could face jail sentences too.” The original takedown notice included the following from SOCA: “If you have downloaded music using this website you may have committed a criminal offence which carries a maximum penalty of up to 10 years imprisonment and an unlimited fine under UK law.” Surely SOCA’s resources are better suited thwarting criminal activity by website creators and hosts, but it would not be out of the question to see SOCA pursue heavy users of RnBXclusive.

attributed to "suizilla" on flickr

Poor In-N-Out Burger.  It seems like it has a hard time because it’s always having to shut down imitators of its retro-themed burger joints.  Last September, my fellow IP Brief blogger Jeff Kettle wrote about how In-N-Out had filed a complaint against a Maryland-based restaurant named “Grab-N-Go Burger,” which was apparently sufficiently similar with In-N-Out to warrant a trade dress infringement claim.

I agree with Jeff that the opinions of both Two Pesos, Inc. v. Taco Cabana, Inc. and Hooters v. Ker’s Winghouse are important when addressing trade dress infringement claims, but I don’t agree with his opinion about In-N-Out.  Unlike him, I wouldn’t go so far as to say In‑N‑Out burgers are so good they’re worth going all the way to California.  As a Texas man, I think there’s no need to go to California when you can go to the far superior Mighty Fine Burger in the centrally-located Lone Star State.  My own burger bias aside, In-N-Out’s claim against Grab-N-Go has since been settled and dismissed.

Before In-N-Out could wrap up its trade dress infringement claim on the East Coast, another imitator named “CaliBurger” had popped up in Shanghai.  As the Los Angeles Times points out, In-N-Out was able to bring a claim in a Santa Ana federal district court because CaliBurger (un)fortuitously had some offices in California.  In‑N‑Out apparently settled its claim, with CaliBurger agreeing to change the names of some of its items (e.g., “Animal Style” fries are now “Wild Style” fries).  If CaliBurger hadn’t had offices in California, I don’t think U.S. courts would have had jurisdiction over CaliBurger, and In-N-Out would have been left looking for remedies pursuant to international treaties instead of U.S. law.

The first stop in the international trademark treaty analysis is the Madrid System, which allows for trade marks to be internationally registered and protected.  Upon registration of a trademark in a country that signed onto the agreement, a registrant can designate other signatory countries in which they would like to extend protection of that mark.  China is indeed a signatory country under the Madrid System, but unfortunately In-N-Out has not registered its trademark there.  Without registration, the Madrid System doesn’t provide avenues for relief for In-N-Out.

The second stop on the analysis is the Paris Convention, to which China is also a signatory.  Article 6bis of the convention could provide In‑N‑Out with an alternative path for relief in the form of an international trademark common law claim.  In‑N‑Out runs into a problem here too though, because this route is only available if its trademark is well known in China.  It’s fair to say that many people all over the United States know of the In‑N‑Out brand, but do people in China?  The Los Angeles Times says that some Americans living in Shanghai had recognized CaliBurger to be an imitation of In‑N‑Out but that most everyone else hadn’t been aware of the brand at all.  In‑N‑Out has introduced its brand to Shanghai customers by offering one-day tasting events, but this is a far cry from having it be well-known.

The settlement for In‑N‑Out’s U.S. federal district court claim against CaliBurger seems to have only resulted in modest name changes, but I have a feeling this is because there isn’t a lot of room in the governing international treaties for more extensive remedies.  Because In‑N‑Out’s trademark isn’t internationally registered and because it’s not well known in China, In‑N‑Out might need to let CaliBurger carry on selling its lookalike and similarly-themed food.  I suppose In‑N‑Out will have to be content reminding itself that imitation is the best form of flattery.

Image Attributed to Tony Barton

Madonna. We have some good news and some bad news.

We’ll start with the bad news first.  Your stalker, a man who served a 10-year sentence for threatening you, escaped from a mental hospital.  Also, your daughter seems to have finally entered her rebellious phase.  And, the movie you directed is getting, um, less than rave reviews.  Finally, you’re about to get sued by Joe Francis.

Here’s the good news. The Los Angeles Police Department has located, arrested, and returned your stalker to his hospital. You most likely approve of Lourdes’s shaved head and your music career is booming, as your unreleased album is already chart-topping on iTunes.  Lastly, don’t worry too much about that Joe Francis’s lawsuit – it probably won’t stick.

Here is some background on the potential lawsuit.  Joe Francis is the founder of GGW Brands, which produces the Girls Gone Wild series.  The series films girls who are willing to expose their bodies for the camera.  The shooting locations usually revolve around major party scenes, such as Mardi Gras or college spring break.  Francis has built an empire out of the series, with infomercials, videos, DVDs, and apparel. It has been reported that his company brings in close to $40 million a year in revenue from the series.

Meanwhile Madonna has been working on her 12th studio album, entitled MDNA.  The album, with a scheduled release date of March 26, has seventeen songs on it and the first track bears the same name as Francis’s popular series.  To promote her new album, Madonna agreed to perform at the halftime show of Super Bowl XLVI.  Days before the Super Bowl, Madonna’s Super Bowl set list was leaked to the press. The Material Girl was scheduled to perform some of the songs for which we know her best, “Vogue” and “Like a Prayer.”  She was also scheduled to perform a new song off of MDNA.  However, when Joe Francis caught wind of the news, he acted quickly to try to ensure his trademark wasn’t going to be infringed upon. 

Francis’s lawyer sent a cease and desist letter to Madonna on February 3rd, two days before the Super Bowl.  The letter, which was addressed to Madonna, NBCUniversal, and NFL Commissioner Rodger Goodell, demanded that Madonna refrain from performing her “Girls Gone Wild” song at the biggest game in football.  The letter claimed that Madonna is engaging in “trademark infringement, and trademark dilution,” among other claims, by using the name “Girls Gone Wild” for her song.  The letter further threatens that Francis will take legal action unless Madonna stops using the name and negotiates a licensing agreement for the use of the trademark.

The potential lawsuit seems strikingly similar to a 2002 case between toy manufacturer Mattel and MCA Records over the song “Barbie Girl.”  In Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), the manufacturer of the ever-popular Barbie doll claimed trademark infringement and dilution against the Danish band Aqua for their song.  The Ninth Circuit held that the use of the title “Barbie Girl” did not infringe on Mattel’s trademark, and the song title fell under the non-commercial use exception in the Federal Trademark Dilution Act.

The Ninth Circuit held that literary titles do not violate the Lanham Act, which provides for a national system of trademark registration and protection.  The court concluded that a literary title is made to “catch the eye and promote value of the underlying work.”  The court stated that consumers use titles to garner information about the work and do not use titles to identify the publisher or producer of the work.  Therefore, a literary title does not constitute trademark infringement unless the title explicitly misleads as to the source of the work.  In Madonna’s case, the title of “Girls Gone Wild” would constitute a violation of the Lanham Act only if it suggests that Francis and the GGW Brands produced the song. The test for trademark infringement is if the product creates customer confusion – and Joe Francis would have a high burden to prove that customers thought that he produced a song on Madonna’s newest album.

In Mattel, Inc., the court also held that the song “Barbie Girl” falls under one of the three exemptions to the Federal Trademark Dilution Act.  The court found that the song title did more than propose a commercial transaction and therefore is entitled to full First Amendment protection.  Following the Ninth Circuit’s precedent, if Madonna can prove that her song does more than propose a commercial transaction, for example by showing that the title is reflective of the nature of the song or that the song is commenting on cultural values in America, then she has a strong case that her song title falls within the noncommercial use exemption.

While the song has yet to be released, it is safe to say that Madonna probably did not mislead listeners to believe that Francis, and not Madonna herself, produced the song.  Madonna – we believe you have a strong case here if Joe Francis and GGW Brands pursue legal action.  After all, no one gets confused with Madonna and there is only one Queen of Pop.  Right?

attributed to "kid lion" on flickr

I played a lot of videogames as a kid, and depending on your perspective, all that time spent in front of the TV was either a waste or an escape into adventure.  I had a lot of fun playing, but I’ll admit that videogame developers tended to rehash their ideas over, and over, and over again.  The mainstay ideas in videogames are incredibly unique (e.g., an Italian plumber that shoots fireballs, eats mushrooms, and battles dinosaurs), but they were few in number and recycled continuously.  Combined with how computer processor limitations used to require the games be technically simplistic, this made many see videogames as not creative.  Without creativity (arguably), there wasn’t a lot of copyright protection available in the context of videogames.  Fast forward to today, when videogames are much more complex, and how does this all play out?

Spry Fox, LLC is the maker of a videogame titled “Triple Town,” in which a player matches available resources to build progressively bigger structures that eventually form a town.  The game debuted on the Amazon Kindle, but has since been published on social networking websites like Facebook and Google+, and also on iOS and Android mobile devices.  According to its complaint Spry Fox filed late last month in a Washington federal district court, Spry Fox ended up publishing Triple Town on these other platforms after negotiations with another publisher had fallen through.

In the negotiations, Spry Fox had shared beta versions of Triple Town with the publisher so that it could evaluate the game, but shortly thereafter the publisher ended all talks.  Inexplicably, the publisher then came out with its own game titled “Yeti Town,” which has many of the same features, game play and design elements as Triple Town.  The similarities are so strong that Spry Fox filed claims for relief under theories of both copyright infringement and false designation of origin.  I won’t talk about the false designation of origin claim, but I think there are some interesting issues worth discussing with copyright infringement claims in the videogame context.

As Ars Technica explains, there is case law precedent for how to deal with copyright claims involving videogames.  Specifically, the 1994 federal district court case of Capcom U.S.A., Inc. v. Data East Corp. provides some guideposts for how Spry Fox’s claim could play out.  If Capcom’s analysis applies to Spry Fox’s claim, Spry Fox will need provide direct or circumstantial evidence that the other publisher copied Triple Town.  Absent direct evidence (which I assume could be showing that Yeti Town’s source code is identical to that of Triple Town), proving circumstantial copying is actually quite a difficult argument for a videogame maker.

Videogame makers first have to show that they’re protecting their videogame’s copyrightable expressions and not just the ideas behind those expressions.  Only copyrighting the expressions of ideas makes sense (we don’t want someone to have the exclusive control of an idea), but Capcom applied this very broadly to the videogame context.  Regarding the videogame then in question, “Street Fighter II,” the court looked at the game’s individual features and filtered many of them out as unprotected, non-copyrightable expression.  Some of the reasons included:

• Features that can only be expressed in one way (e.g., only one way to express a punch);
• Functional expressions; and
• Unoriginal, uncreative expressions.

Together, these filters ruled out the bulk of Street Fighter II as non-copyrightable, with only a few of its features left to compare with those of the videogame alleged to be a copy.  The court looked at these remaining features and applied a high standard for what constitutes the requisite “substantial similarity.”  Explaining that videogames only allow for a narrow range of creative expression, the court held that copyright infringement would only occur if the allegedly infringing game had features that were identical to those of Street Fighter II.  Under this standard, Capcom’s copyright infringement claim failed.

Even if Spry Fox’s copyright infringement claim comes down to being proven by circumstantial evidence under Capcom’s rule, I think Spry Fox will succeed.  This is principally because the growing complexity of videogames and the expansion of it as a medium of expression should undermine the presumptions that made the standards of Capcom’s rule so high.  So much of the Capcom opinion is about how unoriginal Street Fighter II was, and how expression in videogames is limited because of the medium’s simplicity.  Even when you’re looking at Facebook games (which are simplistic when compared to games on modern videogame consoles like the PS3), they’re so much more complex than older games like Street Fighter II.   It would be silly to say that Triple Town’s features aren’t creative or expressive because the medium doesn’t allow for them to be expressed in other ways.  With this change of circumstances, I think so much more of Triple Town’s features will fall into the protectable “expressions” category than the non-protectable “ideas” category.

More generally, I don’t agree with the analysis in the Capcom opinion.  Instead of looking only at the videogame’s individual features, the court and the parties should have also considered whether the combination of those features is itself a copyrightable expression.  The court spent time looking at each of Street Fighter II’s characters, and wrote many of them off as unoriginal stereotypes, but together those characters were an ensemble.  Creativity can be found in the arrangement of features because that in itself can be creative, distinctive, and original.  I haven’t played Triple Town, but I suspect that even if its features aren’t individually protectable copyrighted expressions, their combination and overall package would be.

Yet, it would appear that one such defendant has decided to challenge copyright trolls over the bullying on the ground that there should be no copyright protection for the particular downloaded works. Hard Drive Productions had sued Liuxia Wong over the illegal downloading of Hard Drive’s adult work “Amateur Allure Jen.” Ms. Wong chose retaliation and is now suing Hard Drive seeking declaratory relief against Hard Drive’s harassment. Ms. Wong is arguing that she did not download the adult work and that she could not infringe on Hard Drive’s copyrights as “Amateur Allure Jen” is not entitled to copyright protection.

The strength of a defense based on the non-copyrightability of pornography rests on whether pornography promotes the progress of science and useful arts as prescribed by the Copyright Clause of the U.S. Constitution. An argument in favor of refusing copyright protection is the very reason why copyright protection is granted in the first place: it gives incentives for creation. Allowing copyright protection on pornographic works, then, would only give more incentive for pornographic creations. One may ask why a pornographic movie would not promote useful arts as much as, say, Mel Gibson’s Apocalypto. Morality has had a surprising impact on assessing the usefulness of a creative work.

More often protected under freedom of speech, pornography still divides courts on the question of its protection under copyright law. So far, two circuits have held that obscenity could not be a defense to copyright claims. See Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852 (5th Cir.1979); Jartech v. Clancy, 666 F.2d 403 (9th Cir.1982). In Mitchell, the Fifth Circuit indeed held that “protection of all writings, without regard to their content, is a constitutionally permissible means of promoting science and useful arts under Congress’ copyright power….” A court in the Southern District of New York, however, has refused to follow the Mitchell holding and relied on the doctrine of “clean hands” to deny copyright protection to works seen as obscene. Devils Films, Inc. v. Nectar Video Under, 29 F.Supp.2d 174, 175 (S.D.N.Y. 1998). Under this doctrine, a party is denied remedy when it did not act in good faith with regards to the subject of the lawsuit. In Devis Films, the court reasoned that based on the plaintiff’s complaint, there was probable cause to believe that the plaintiff was violating a federal statute prohibiting the business of selling obscene material in interstate commerce. Id. at 175. For this reason, and based on the court’s finding that plaintiff’s works were obscene, the court denied plaintiff’s claim of copyright infringement. See id. Interestingly, the court in Mitchell had held that obscenity was not an appropriate defense in an infringement action, “whether piggybacked on an “unclean hands” rubric or introduced in some other manner.” 604 F.2d at 863,

The claim that conformity to “good” morals is an obstacle to intellectual protection is not limited to copyright issues. Sex toys were once refused patentability because their immoral character prevented them from satisfying the utility requirement of patent protection. In the trademark context, the Lanham Act provides that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … consists of or comprises immoral, deceptive, or scandalous matter….” 15 U.S.C. § 1052. But as morality evolves over time, what is considered immoral today may be considered as copyrightable material in the future. Penguin’s decision to publish D. H. Lawrence’s novel Lady Chatterley’s Lover once gave rise to (one of many) obscenity trials. The novel is now considered a cultural landmark of the sexual revolution of the 1960s.

Section 2(b) of the Lanham Act states that a trademark registration shall be refused if it “[c]onsists of or compromises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or any foreign nation, or any simulation thereof.”  This prohibition does not require any further element, like that of disparagement or false suggestion of connection.  The TTAB has interpreted the phrase “other insignia” as “the same general class as ‘the flag or coats of arms’ of the United States . . . such as the Great Seal of the United States, the Presidential Seal, and seals of governmental departments . . . .”  But In re United States Department of the Interior held that “department insignia which are merely used to identify a service or facility of the Government are not insignia of national authority.”  Therefore the Board in In re United States Department of the Interior allowed the registration of the insignia containing the phrases National Park Service and Department of the Interior.

The issue of first impression is whether a government entity itself can register its “own flag, coat of arms, or other insignia.”  Here, in both In re The Government of the District of Columbia and In re City of Houston, the Board has refused to register the official seals of the District of Columbia and the City of Houston. 

In both instances the TTAB found the section 2(b) statutory language and intent to be “plain and clear on its face,” thus the Board had “neither the authority nor a basis to deviate from its terms.”  The Board stated it is “not free to disregard the plain meaning of the statute or to read into it an exception that is not provided for under a plain reading of it.”  Because, in both cases, the applicants’ marks are either seals or insignia of a “state or municipality,” they were in both cases “barred by statute.”

These decisions may not end future applications for government seals.  Although both TTAB decisions state that they will not follow previous potentially erroneous registration of official governmental seals, these two new precedential decisions do not distinguish those registered seals.  Further, they impose a case-by-case analysis, an “examin[ation] on its own merits, based on the administrative record.”

attributed to hype-hop photography on tumblr

When Beyoncé and Jay-Z’s daughter Blue Ivy was born on January 7, the Internet exploded with people either expressing their excitement that two famous people had a baby or expressing their annoyance that anyone would care so much that two famous people had a baby. Expectations for Blue’s biologically-preordained future career are so high that she’ll be deemed a failure unless she becomes an EGOT-winning billionaire mogul before her sixteenth birthday (she has already, at two days old, become the youngest person ever to reach the Billboard charts). Well familiar with what it takes to become hugely successful multi-talented superstars, Beyoncé and Jay-Z are helping their baby start life right with the traditional baby gift of personal branding.

The Washington Post reports that Beyoncé’s company BGK Trademark Holdings has filed an application with the U.S. Patent and Trademark Office in order to protect Blue Ivy’s name–and , in the process, reserve it for future marketing opportunities.  The application reserves Blue Ivy Carter for a wide range of goods and services, including beauty products, musical recordings, baby products, and key chains.  If the Z family is, in fact, planning to use the Blue Ivy trademark for a line of baby products, it’s a disturbing commercialization of someone so young.  But if they aren’t, it won’t be registered: the PTO requires that anyone filing a trademark under “intent to use” begin commercial use of the mark before it will complete registration.  They would also have to keep up use, or risk what happened to Britney Spears, who trademarked her son’s name in 2006 only to have it marked abandoned in 2010 (Brit re-filed last year).

The application is particularly questionable because it doesn’t appear that the trademark is actually necessary to prevent others from marketing products under Blue Ivy’s name.  Beyoncé’s application came when others tried to trademark “Blue Ivy Carter NYC” and “Blue Ivy Carter Glory IV,” but both of those applications were turned down for being based on the name of “a very famous infant,” and there’s no reason to think that future efforts wouldn’t get the same dismissal.  And it might not help when people go outside traditional channels to market products, such as with Ivy Blue OG, a recently-introduced strain of marijuana.  So while it might be a good marketing move, there’s nothing to suggest that it’s a good parenting move, and any kid growing up that famous probably needs the latter more than the former.

Image attributed to Michael R. Perry

Moore and Kirkman created the original comic book series “The Walking Dead,” which was first published in 2003. Kirkman wrote the story and dialogue, while Moore was an illustrator for the first 24 issues of the series. Moore contends that in 2005, when Kirkman was in negotiations for the licensing rights to the Walking Dead series, Kirkman told him that a potential deal was being held up and that Moore would have to assign all of his rights in the work to Kirkman’s company before any deal could go through. Moore contends that Kirkman fabricated this hold up in order to get him to sell his rights on the cheap. Making things worse for Kirkman is an off-the-cuff remark he made during an interview nine months ago. Asked how a comic book writer should find an artist to draw his stories, Kirkman replied, “trickery and deceit.” Ouch.

As fans of the comic and television series know, the two works are very dissimilar. While the two share many characters and a general premise, they are quite different in terms of story and cast. Most of the similarities between the two works are no doubt shared by the other entries in the massive sub-genre of zombie horror, which has spawned everything from movies and video games, to re-imaginings of 19th century Victorian literature. As fun as it is, the zombie apocalypse is hardly a new idea at this point.

With all of this in mind, it is fair to wonder what rights Moore has in the live action series at all. Since he was only the illustrator, shouldn’t he only have a copyright in the illustrations he did for the comic? What rights of his did the creation of a live action television series violate? Does Moore have rights to the story that Kirkman wrote and adapted for television?

While Moore may not have rights to the story of the series he certainly has rights to the characters themselves. Kirkham’s series does not have to reproduce any of Moore’s drawings to be guilty of copyright infringement; he need only reproduce the characters (in any medium), as long as the two are considered to be co-authors.

In a similar case involving a dispute over comic book characters, author Neil Gaiman brought suit against Todd McFarlane, the creator of the Spawn comic book series, for several supporting characters that Gaiman helped create. Ruling for Gaiman, the court held that if both artists contribute some form of original expression in a character that is independently copyrightable, then the two artists are joint-creators and share rights in the creation. Gaiman v. McFarlane, 360 F.3d 644, 658 (7th Cir. 2004).

Moore’s illustrations are certainly “original expression” and since they were creative in nature and fixed in a tangible form (i.e. the pages of the comic) they are also independently copyrightable. This means that if Moore’s allegations are true, he could be in line for a piece of the hit television show, and any other works or merchandise that use the characters that he helped to create.

The “hard goods” seizures included the confiscation of fake jerseys, ball caps, t-shirts, jackets and other souvenirs replicating not only NFL equipment but that of other sports leagues as well, including Major League Baseball, National Basketball Association, and National Hockey League. Government teams engaged in the confiscations included U.S. Immigration and Customs Enforcement (ICE), Homeland Security Investigations (HSI), U.S. Customs and Border Protection (CBP), U.S. Postal Inspection Service (USPIS), Indianapolis Metropolitan Police Department, and the Indiana State Police – all in partnership with the NFL. Based on statistics provided on February 2 from ICE, the various enforcement teams have seized 42,692 items of phony Super Bowl-related memorabilia along with other counterfeit items for a total take of more than $4.8 million to date – up from $3.72 million last year. It is unclear from the ICE website how the government has measured the value of the items.

In addition to this record-breaking seizure of hard goods, government agents have seized 307 websites associated with intellectual property violations against the NFL. Sixteen of the sites illegally streamed live sporting telecasts over the Internet, including NFL games. The remainder were illegally selling and distributing counterfeit merchandise. The operations also led to the arrest of Yonjo Quiroa, of Comstock Park, Michigan, charged with one count of criminal infringement of a copyright related to his operation of websites that illegally streamed live sporting event telecasts and pay-per-view events over the Internet.

What is certainly clear from this operation is that the NFL is not kidding about protecting its brand – and rightfully so. In the United States and across the globe, the NFL is big business. The New York Times reports that starting in 2014, CBS, Fox and NBC will together pay an average of about $3 billion a year for their broadcasting contracts with the NFL. 60 Minutes reports that the NFL earns $2.5 billion from licensing fees on “everything from footballs and league apparel to shot glasses and ice scrapers.” It is no surprise that the NFL takes protecting its brand very seriously.

The production and sale of counterfeit goods is a clear violation of American trademark law. Unsurprisingly, ICE has targeted foreign importers in its crackdown. As the news release makes clear, illegal importation of these goods is a major concern for enforcement authorities. Section 42 of the Lanham Act explicitly forbids the importation of goods that copy or simulate a trademark registered in accordance with the provisions of the Act. These efforts appear to be a swift strike against foreign violators, sending a message to all parties involved in production, distribution, and sale of counterfeit goods that their funds would be better spent in lawful practices. What is not clear is whether or not these efforts are hitting foreign counterfeiters where it hurts or punishing others along the chain.

The seizure of the website domain names was done in accordance with a warrant issued by the District Court for the Southern District of New York. By seizing the domain name, the government effectively stops traffic to the name of the website. The actions taken by the government are virtually identical to the recent and highly publicized shutdown of Megaupload.com. Although these sports site shutdowns may be gaining publicity in the news, they are not the first of their kind. Days before last year’s Super Bowl, ICE seized control of several websites that streamed broadcasts of sporting events in violation of copyright law. Try as the government may, there is little to prevent a site from moving to a jurisdiction outside of the U.S.’s reach and continuing to stream sporting telecasts into the U.S. through the web. This issue dovetails into the SOPA/PIPA debacle since federal law enforcement has very little in its arsenal to combat foreign infringers. This challenge is likely to be discussed along with the second iterations of both bills in Congress.

Here, the WVU Board of Governors is claiming that “[b]ecause of its widespread use in connection with the WVU Board’s activities and licensed merchandise, the gold and blue color scheme has tremendous power as a source identifier of WVU….” The first side of the argument is that the university’s color scheme deserves protection in and of itself. Courts, however, are split on whether a university’s color scheme alone could give rise to trademark protection. In its complaint, the plaintiff strategically adds that the use of the color scheme is particularly damaging “when used in connection with other indicia identifying or suggesting West Virginia University, such as references to athletic events in which a West Virginia University team is participating, the history of West Virginia University’s athletic successes, or the geographic area in which West Virginia University is located.”

“WVU’s gold and blue color scheme” therefore deserves trademark protection because these colors are the source identifier for what the complaint states as the University’s “significant fame and public recognition, especially when appearing in connection with athletic teams and events….” But again, many if not all universities and colleges in the United States also build their business and goodwill on their sports teams, which all have specific colors, names, and histories. Technically, then, many if not all universities’ color schemes could be granted trademark protection on their color schemes if these color schemes are source identifiers for those universities’ sport teams. As Kristen E. Knauf puts it, “[U]niversity color schemes are communicatively functional. As previously discussed, communicative functionality is the use of a mark to communicate a non-source related meaning, including social meanings. Loyal alumni often wear their school colors while attending collegiate athletic events to communicate their affinity for a particular team.” Shades of Gray, the Functionality Doctrine and Why Trademark Protection Should Not be Extended to University Color Schemes, 21 Marq. Sports L. Rev. 361 (2010-2011). The functionality of universities’ color schemes, she explains, is a reason why color schemes do not deserve trademark protection.

In the case of WVU, it is interesting to note that the coming lawsuit gained (slightly) more media attention because of the provocativeness of the slogans used by the t-shirt company (e.g., “West Virginia Girls Do It In the Mud”) rather than because of the color scheme trademark issue that this case presents.

Image Attributed to flickr user Sifu Renka

The color red is bold, irreverent, and quite possibly distinctive. However, it is still just one notch on a wide spectrum of colors, which begs the question: should a shoe designer be able to trademark red on its shoes? This question is being played out in a lawsuit on appeal between Christian Louboutin and Yves Saint Laurent (YSL). In particular, this appeal highlights the tension that exists in trademark law over how color trademarks should be handled. Fellow bloggers Caroline Gousse and Alexandra Mackey have written about the beginning stages of the lawsuit and the implications of the initial decision, respectively.

Louboutin filed the initial lawsuit against YSL, making several claims under the Lanham Act, including trademark infringement. The dispute was over four different shoe designs that YSL had produced for its Cruise 2011 collection, each of which featured shoes with red soles. Louboutin claimed that YSL’s shoes were confusingly similar to his red soled shoes and that YSL’s shoes diluted the market for Louboutin’s shoes. Interestingly, Louboutin has a registered trademark for his red soles from the United States Patent and Trademark Office.

The trial court judge followed the rule from the preeminent color trademark case, Qualitex Co. v. Jacobson Prods. Co., which states that color can be protectable under the Lanham Act if it acts as a symbol that distinguishes a company’s goods and identifies their source, provided that it serves no other significant function. Louboutin lost because the judge concluded that given the creativity, seasonal change, and aesthetics of the fashion industry, the colors used in fashion products are primarily designed to advance expressive, and ultimately functional, concerns. Accordingly, the judge found that awarding Louboutin an injunction enforcing Louboutin’s trademark over the color red, even in the context of shoe soles, would impermissibly hinder competition between fashion designers.

Given the ruling of the trial court, it appears that Louboutin has an uphill battle over its trademarked red soles. Louboutin’s lawyer has argued that the trial court erred in holding that granting the red sole trademark protection would impermissibly hinder competition. Louboutin’s lawyer compares the red sole mark to the trademarks held by Tiffany & Co. for its blue box and Owens Corning for its pink insulation. Lastly, his lawyer mentions that they are only seeking to enforce protection of the red on shoe soles, not the entire shoe. YSL’s lawyer has argued that it is unfair to prohibit designers from using colors that are among the basic tools of the trade.

From Louboutin’s perspective, it seems reasonable for a court to enforce protection of his trademarked red soles. He invested a lot of resources into turning a relatively unimportant area of a shoe, the sole, into a primary aesthetic feature. Moreover, there is a strong economic value built up in the red sole mark that Louboutin should be able to protect. When consumers see red soled high heels, they instantly associate them with Louboutin. It also seems reasonable for the mark to only be protectable on the soles of shoes because it would allow designers the freedom to utilize red in their designs, while also protecting Louboutin’s investment in making soles aesthetic.

However, from YSL’s perspective, it becomes more apparent why it would be improper for the appellate court to grant Louboutin an exclusive monopoly over red soles. If a court were to grant Louboutin’s mark protection, what is stopping competitors from grabbing other primary colors for their shoe designs? Could this type of area-specific mark be applied to other types of fashion items, such as a trademark over blue sleeves on sweaters and white collars on dress shirts? Granting Louboutin’s mark protection would seem to create a slippery slope that could eventually impermissibly hinder competition. Another consideration is that Louboutin is seeking to get protection for all the shades of red in the color spectrum, not just the specific red that he uses on his shoes. Prohibiting other shades of a color, especially if it is not employed by the trademark holder, seems unnecessarily restrictive to competitors.

How this suit eventually plays out in the appellate court will be very interesting. Will red bottom shoes remain exclusive to Louboutin? Or will consumers suddenly find these red soled shoes to be ubiquitous, and perhaps, a little less enticing?

Image Attributed to flickr user Eva Rinaldi

Back in October, I reported that things were heating up in yet another Kardashian legal battle.  A few months ago, The Gap hired high-power lawyer Louis Petrich to defend the retailer against reality-TV queen Kim Kardashian’s lawsuit.  The subject of the dispute is an Old Navy commercial that featured an actress allegedly intended to look like the infamous reality star.

In mid-January, The Gap initiated an investigation to determine whether Kardashian’s reputation has been tarnished as she claims, according to The Hollywood Reporter.  The Gap is exploring several of Kim K.’s former business deals, including the failed partnership of the Kardashian clothing line with retailer Bebe, and the current Kardashian partnership with Sears.  The Gap is also questioning Kardashian’s motives for bringing the multi-million dollar lawsuit.  The discovery process to determine Kim’s true worth is expected to take up much of this year.

The Gap seems to be pursuing discovery under the tarnishment theory of trademark dilution.  A trademark is tarnished when an infringing mark portrays the original mark in a negative way.  15 U.S.C. § 1125.  A common instance of such tarnishment occurs when an infringer offers low quality goods associated with the original mark. The theory is that a tarnishing use of a mark threatens to destroy the commercial value of the original mark because people will associate the infringer’s low-quality goods with the plaintiff’s unrelated goods.  By proving that Kim’s reputation is no longer associated with higher quality goods or interpreted as a “wholesome identifier” of her brand or persona, The Gap will show that even if its use of a look-alike associated Old Navy with Kim’s brand, that association did not reduce the value of Kim’s already low-value trademark.  In other words, the discovery process could provide evidence that Kim’s reputation as a public figure has already been damaged, and further tarnishment would not reduce the value of her persona. 

Alternatively, The Gap may claim that the Old Navy commercial featuring the alleged Kim look-alike was a small part of a larger campaign, and profits gained from that individual ad would be de minimis, entitling Kim to few if any damages.  However, the entire discovery process could also be a clever way for The Gap to build a very public and very personal retaliation against Kim.  The Gap is expected to call Kim to testify; as well as Melissa Molinaro, the actress from the commercial at issue; and Reggie Bush, Miami Dolphins running back and Kim’s ex-boyfriend.

Kim and her lawyers plan to fight back by proving The Gap infringed Kim’s trademark and misappropriated her likeness, which resulted in hefty financial damage to Kim and her brand.  The Kardashian team aims to establish infringement by providing proof of customer confusion using recent consumer surveys and testimony by members of the media who reported on the Old Navy marketing plans.  In cases of trademark infringement where the respective marks, products, or services are not identical, similarity will generally be assessed by reference to whether there is a likelihood of confusion – that consumers will believe the products or services originated from the trademark owner.  15 U.S.C. §§ 1051–1127; AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).

Although Kim and her lawyers hope to win a $20 million jury verdict, The Gap will not be liable for the payment of damages, as its advertising agency’s insurer Crispin Porter & Bogusky has agreed to provide indemnification to cover Kardashian’s claims.  No settlement discussions have been initiated at this point.

The Canadian Independent Music Association submitted a list of provisions it wanted in Bill C-32 that included the ability to block users’ access to individual infringing sites, using The Pirate Bay as an example. This provision would be directly analogous to SOPA’s Section 102, which included the DNS blocking provision that was the first part of SOPA to crumble to public pressure. CIMA, along with the Entertainment Software Association of Canada, also called for an enabler provision similar to Section 103 of SOPA, which targets sites that facilitate infringement. Geist argues that such a provision could be used to against sites like YouTube, and that while established sites with the resources to defend themselves would be protected under safe harbor exceptions, the threat of lawsuits would have a chilling effect on technological investment and innovation.

Also like in the U.S., Canadian lawmakers have had trouble practicing what they preach. While SOPA author Rep. Lamar Smith was being accused of using an unattributed image on his campaign website, people using the internet in the Canadian House of Commons were downloading copyrighted music, movies, and software over BitTorrent. Canada’s Pirate Party, which made the discovery, noted that this was not evidence that MPs were pirating content but rather that it “demonstrates how easy it could be to be accused of downloading content even if you are innocent.” Indeed, the more draconian regulations become, the more difficult it will be for ordinary citizens to comply. Legislators in both Canada and the U.S. should consider whether such frustration is really something they want in their constituents.

The activities mentioned are currently legal because of a provision in the Digital Millennium Copyright Act (DMCA) that legitimizes the practice of removing the limitations imposed by Apple’s iOS operating system.  Those activities described above can be achieved through an act known as jailbreaking.  Jailbreaking is the method by which one can transform an Apple device running the iOS operating system – such as the iPhone, iPad, or iPod touch – to allow third-party applications and software to be installed and used.  Jailbreaking allows users to gain access to the operating system and download independent applications, or apps, which are not officially approved by Apple.

Why would one want to jailbreak their iPhone?  The main reason is that some Apple users want to customize their iPhone or iPad and expand its features.  A jailbreaker can modify their iPhone and change the wallpaper, icons, and other system graphics.  Some advocates of jailbreaking boast that they can now circumvent restrictions of Apple’s iOS operating system, and can now use Flash on their iPhone or turn their phone into a Wi-Fi hotspot.  Another reason for users to jailbreak their Apple devices is to access apps that are not found in the Apple App Store.  Some believe Apple censors the content of its apps, citing Apple’s decision in 2010 to remove the WikiLeaks app from its App Store.   These users may find jailbreaking to be an alternative to the censorship they believe Apple places on its apps.  

But what goes up must come down and there is definitely a downside to jailbreaking.  Apple has reported that customers who jailbreak their iPhones can experience device instability, unreliable voice and data service, disruption of services, and problems synchronizing data.  Apple also warns of compromised security, shortened battery life, and inability to apply future software updates.  Apple states clearly on its website “unauthorized modification of the iOS is a violation of the iPhone end-user license agreement and because of this, Apple may deny service for an iPhone, iPad, or iPod touch that has installed any unauthorized software.”

Jailbreaking is a known exemption under the Digital Millennium Copyright Act anti-circumvention provisions.  The DMCA, signed into law in 1998, offers protection against circumvention of technological measures used by copyright owners to protect their work.  However, every three years the Librarian of Congress may designate certain activities as exempt from the anti-circumvention provisions. In 2010, the U.S. Copyright Office and the Librarian of Congress recommended that computer programs that enable wireless telephone handsets to execute various software applications, when lawfully obtained, be placed under the list of exemptions under the DMCA.  However, this exemption for jailbreaking will expire in 2012.

In the spring of 2012, the U.S. Copyright Office will hold hearings on the proposed DMCA exemptions.  The Electronic Frontier Foundation (EFF), a non-profit group that advocates for digital rights, is petitioning the Copyright Office to protect jailbreaking.  The EFF is asking the Copyright Office to extend the 2010 exemption for jailbreaking.  The EFF acknowledges that the DMCA is made to block copyright infringement but supports the jailbreaking exemption because it will allow Apple users more freedom to make their devices “more secure and more functional.”

Under the safe harbor provision, 17 U.S.C. §512(c), service providers are not liable for “the storage of material, at the users’ direction, that resides on a network or system operated or controlled by the service provider.” The safe harbor protection is conditional, however, on the provider demonstrating three things: (1) it lacked knowledge the system contained infringing material, (2) the provider received no financial benefit directly from the infringement, and (3) upon receiving notice of infringement, the provider removed the material immediately.

Based on Grooveshark’s current business model, it appears it would be protected under the safe harbor provision. The music service allows its users to upload their music and stream the music for others; Grooveshark is merely the server the music sits on. Thus, you would expect Grooveshark to be sailing smoothly through litigation under the safe harbor provision.

But its case may be plagued by unexpected complications: recently, someone representing themselves as an employee of Grooveshark claimed in great detail on the popular blog Digital Music News that Grooveshark encouraged employees to regularly upload music to the site – an action not protected under the safe harbor provision. This finding led to an investigation by Universal which, according to TorrentFreak, revealed that several top executives and other employees of the business uploaded more than 113,000 songs to the server.

Grooveshark’s legal issues highlight the confusion over music streaming companies and the scope of protection under the safe harbor provision. Speaking as both a music composer and a frequent online music listener, I definitely have conflicting feelings on the subject of unlicensed use of music. On one hand, you want to protect websites that are simply allowing users to express themselves through the creation of playlists of music they store on the site. But on the other hand, you also want to compensate and motivate the artists and recording companies that have invested their resources to create the music.

Beyond balancing multiple interests, there were other options Grooveshark could have pursued. The music service could have obtained statutory licenses under §114 of the Copyright Act like Pandora, and/or paid a flat fee into an account for copyright holders or negotiated with music recordings clearinghouses and artists like Spotify did to get non-exclusive licenses. With these two legitimate options, why would anyone rely exclusively on the safe harbor provision that could leave a company open to multi-billion dollar lawsuits? Maybe Grooveshark desired to allow users to express themselves without liability, maybe it desired to retain a larger profit by not paying licensing fees, or maybe licensing fees were just too expensive for the start-up company. Whatever the motive, Grooveshark will have a tough legal battle ahead; the protection it thought it had under the safe harbor provision may not be guaranteed.

EA is in part relying on its recent successful summary judgment motion where a court ultimately held that the First Amendment allowed EA to use “Dillinger Tommy Gun” as free speech.  In implementing the Second Circuit’s Rogers test for protection under the First Amendment, the court found that EA had: (1) met the extremely low threshold of using the mark with at least an “above zero” level of artistic relevance to the work, and (2) the use did not mislead the public regarding source or content of the work.  The policy interest is in protecting the mark owner from a use that is “wholly unrelated to the [work] or [is] simply a disguised commercial advertisement for the sale of goods or services.”  Despite plaintiff’s argument that there was no artistic relevance because the Dillinger Tommy Gun played such a minor role in the game, the court held that EA met the minimal threshold of above zero artistic relevance.  Additionally, the court held that the plaintiff failed to provide any evidence to support customer confusion.

EA hopes to springboard off of the Dillinger decision into the Bell Helicopter declaratory judgment action.  An important point of consideration is that the court’s analysis of confusion was limited by lack of evidence supporting confusion.  As the court stated, “Plaintiff has presented no evidence that any customers are confused by the use of ‘Dillinger’ in the Godfather games.  The Court cannot simply infer that the Dillinger name confuses the public, let alone that such confusion outweighs First Amendment concerns.”  Therefore, the effectiveness of using Dillinger as precedent toward “the marginalization of certain trademarks in various mediums” might be limited, in that this holding seems easily distinguishable.  The lack of confusion analysis in Dillinger does not seem to be a judicial trend clearly prioritizing First Amendment rights over trademark abuses.

In its instant declaratory judgment action against Bell Helicopter, EA argues the nominative fair use doctrine, where that argument was absent in Dillinger.  This most likely is due to the Ninth Circuit being one of the few circuits to allow a nominative fair use defense.  The elements for nominative fair use were announced in New Kids, stating that (1) the product or service must not be readily identifiable without use of the mark, (2) only so much of the mark may be used as is reasonably necessary to identify the product, and (3) the user must do nothing to suggest sponsorship or endorsement by the mark holder.

Although the use of the helicopter marks have an equally low proportional role in the video game as the Dillinger Tommy Gun did, EA will have to show under the nominative fair use argument that there is no other readily identifiable way to represent the Bell Helicopters without the use of the mark.  In the case of the word mark, this might be a difficult challenge because “Huey” military helicopters are considered to be the most recognizable and famous military helicopter.  The Dillinger Tommy Gun might have also failed under this threshold, because the Tommy Gun has a historically defined distinctive look.

It will be interesting to see how the District Court for the Northern District of California values the Dillinger holding and evaluates the use of these video game elements as nominative fair use.  Awarding declaratory judgment may have huge effects on future unlicensed use of trademarks in the video game context.