In Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court clarified the test for awarding attorney’s fees when applying the Copyright Act’s discretionary fee-shifting provision, 17 U.S.C. § 505. The Court held that the objective reasonableness of a losing party’s position should be given “substantial weight”—but not necessarily control—the outcome of a fee petition. The lower courts had varied considerably in their approach to the discretionary fee-shifting analysis. Although the regional circuits… More
Category Archives: Copyright
Let’s face it, we live in a food-crazed world. Our current preoccupation with food has less to do with eating it; we also are fascinated with looking at it. Posting photos of food on Instagram is now a universal pastime. Food reality shows like Top Chef, Cake Boss, and Chopped are extremely popular and chefs are now considered bona fide celebrities, known internationally for their signature recipes.
Many top chefs today are also known for their artistic food designs… More
Trademark and Copyright Law Blog Co-Editor David Kluft to Speak on Intellectual Property and Social Media Law
David Kluft, co-editor of the Trademark and Copyright Law Blog and Intellectual Property partner at Foley Hoag LLP, will be speaking at the 19th Annual New England Intellectual Property Law Conference. The conference, sponsored by Massachusetts Continuing Legal Education, will take place beginning at 12:30pm on June 23, 2016 at the MCLE Conference Center, Ten Winter Place in Boston. The conference will also be available by live and recorded webcast. Dave’s presentation, entitled “Trademarks, Copyrights and Speech in the Social… More
France is often presented as a country which is quite protective of IP owners, especially in the field of trademarks and copyright. However, a recent decision rendered by the Paris District Court in relation to a portrait of Jimi Hendrix clearly goes in the opposite direction.
Gered Mankowitz is an English photographer who is the author of many portraits of pop and rock stars, such as Kate Bush, the Rolling Stones, and Jimi Hendrix. In 2013, Mankowitz saw that his 1967 photograph… More
The Internet Archive’s Wayback Machine archives copies of websites every few weeks or months, going back to 1996. The Wayback Machine currently has almost 500 billion archived webpages. By entering a website into the Wayback Machine, a user can see what archived copies of the website are available and then view those historical copies. For example, this link brings you to a copy of the Trademark & Copyright Law blog as it existed on April 28, 2010, shortly after its founding. … More
Last month, the Supreme Court denied certiorari in Authors Guild v. Google, Inc., the long-running copyright case involving Google’s Google Books project. The high court’s refusal to hear the case leaves in place the Second Circuit’s October 2015 decision in favor of Google and brings to a close this highly publicized and closely watched litigation, more than a decade after it began. The Second Circuit’s opinion, which the Supreme Court has left undisturbed, held that Google Books is protected as fair use, a conclusion considered by many to… More
Last year, I made a terrible mistake. When I published Harry Potter Lawsuits and Where to Find Them on this blog, I pronounced that “Ms. Rowling and her works pop up in court more than any author since Charles Dickens.” I missed someone big. Of course, it was William Shakespeare, who beats them all even when it comes to legal citations.
The First Circuit’s “Scungy” Backpage: Copyright And Right Of Publicity Claims Ineffective Against Sex Trafficking
In Doe v. Backpage.com, the First Circuit affirmed the District of Massachusetts in holding that Section 230 of the Communications Decency Act (CDA) shields from civil liability a website used by third parties to facilitate the sex trafficking of underage girls. If you haven’t had a chance to follow the case, there are three basic takeaways: (1) the immunity provided by Section 230 of the CDA is very broad; (2) the judges are no happier about it than… More
Justice Scalia on Trademark and Copyright: Dastar, Penguin-Shaped Cocktail Shakers and “Guilt by Resemblance”
When we decided to mark the passing of Justice Antonin Scalia by recounting a few of his copyright and trademark opinions, we were somewhat surprised to discover that there really hadn’t been that many. In fact, we located only seven matters in which Justice Scalia contributed a written opinion on a substantive issue of trademark or copyright law, and only four were majority opinions. Here they are, in chronological order:
We’ve taken advantage of past Presidents Days to recount George Washington’s role in the history of U.S. Copyright law, specifically the birth of fair use. That role was not insubstantial, but it was posthumous and, therefore, unwitting. By contrast, Abraham Lincoln’s contribution to copyright law was likely quite intentional.
On March 3, 1865, President Lincoln signed into law “An Act to Amend Several Acts Respecting Copyright,” the galley of which contained the subheading: “Photographs … may be copyrighted.” This was the first U.S…. More
Designers like Alexander Wang, Rebecca Minkoff, and Michael Kors are all gearing up to premier their 2016 fall/winter collections this month during New York Fashion Week. Fashion Week draws more than 230,000 attendees each year to over 500 runway shows and events in New York City. The economic impact of this biannual event is estimated to be close to $900 million. That’s more than the U.S. Open, which generates approximately $750 million annually for New York, and the Super Bowl, which generated an estimated $550 million when it was held in the… More
Around this time last year, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those IP-ish lawsuits that I’m supposed to know about. So I put together the first Sue-per Bowl Shuffle, a guide to the year’s gridiron disputes over trademarks, copyright, the right of publicity and other matters with a First Amendment flavor.
This year, we’ve got you covered again. Although the deflate-gate… More
Haven’t seen the new Star Wars movie yet? The pop culture zeitgeist recommends that you binge-watch all six of the prior Star Wars movies before going to see Episode VII, The Force Awakens and, according to the Washington Post, there is some controversy about the proper binge-watching order. Should you watch them in narrative order (I through VI) or in film release date order (IV-VI and then I-III)? Apparently, the preferred order is: IV, V, I, II, III and then VI.
Well, I couldn’t bear to sit through I, II and III again in any… More
Trademark and Copyright Law Blog Welcomes Natasha Reed as Author and Counsel in Foley Hoag’s New York Practice
We are delighted to welcome Natasha Reed as counsel in Foley Hoag’s Intellectual Property Department and — more importantly for present purposes — as our newest blogger. She’ll join Peter Sullivan in our New York City Office and on the author column of the blog.
Natasha has helped owners of some of the world’s most recognized brands in the luxury goods, fashion, film, music, publishing and food and beverage industries with trademark and copyright needs. With… More
Most readers of this blog are well-acquainted with the Digital Millennium Copyright Act (DMCA) and the anti-circumvention provisions codified therein, 17 U.S.C. § 1201 et seq., which prohibit the circumvention of technological measures that control access to a copyrighted work, even in the absence of copyright infringement. The anti-circumvention provisions of the DMCA are often criticized for their failure to include an explicit fair use exemption like that included elsewhere in the Copyright Act,… More
It is often said Christmas is creeping ever-backwards, each year striving to begin its domination of our collective consciousness and consumer dollars at an earlier date. In the realm of litigation, Christmas creep manifests itself in part in the Yule-themed disputes that can occur at any time of the year, particularly in the areas of intellectual property and free speech. In order to get the Trademark and Copyright Law Blog into the holiday spirit, we’ve rounded up twelve Christmas-themed legal matters (“res” in Latin) that resulted in a written opinion during the last twelve months. Merry Christmas!
Just in time for the holiday season, we present our second annual Trademark Year in Wine and Beer. Whether you are planning a holiday party or just having some friends over, you are probably in the market for some liquid holiday cheer. Sure, you could make your beverage purchases based only on taste or price, but instead why not mix it up this year and pick a drink that was the subject of a recent notable trademark dispute? It’s a win-win: you will indirectly offset the costs of litigation, and in… More
What if were to tell you that I jointly authored this article with a colleague, but that I’m not going to give her any credit or attribution because I don’t feel like it? Can she sue me for copyright infringement? No, because we are joint authors, so I have as much a right to publish this article as she does. If we lived in Europe, my colleague might have relied on her inherent right of attribution, a moral right (or droit… More
Would-be filmmakers often see the ghostly reflection of their own work in allegedly infringing films that actually get made. With many such copyright claims, the devil is – figuratively – in the details, but in the recent case of Brown v. Twentieth Century Fox, the satanic details were quite literal.
Last year, a film called Devil’s Due premiered. It was greeted by unappreciative reviews, unenthusiastic audiences and then by a lawsuit. With a whopping 18% rating on Rotten Tomatoes, the
When are clothing designs sufficiently severable from the utilitarian aspects of the clothing so that the designs can be protected by copyright? That is a question courts have wrestled with for years, and the Sixth Circuit Court of Appeals answered in Varsity Brands, Inc. v. Star Athletica LLC, a case involving a long-running dispute between Varsity Brands, a company which designs, manufactures and sells cheerleading apparel, and its competitor Star Athletica (“Star”). It is also a question that may be headed to the U.S. Supreme Court.
The dispute began in 2010, when Varsity Brands sued Star for infringing… More
In a squabble between two psychologists over rights to books about “explosive” children, the First Circuit weighed in this summer with an opinion holding that a work of authorship under the Copyright Act can be simultaneously both a “joint work” and a “derivative work.” The case is Greene v. Ablon, 794 F.3d 133 (1st Cir. 2015).
The plaintiff, Dr. Ross Greene, pioneered a method for treating children with “explosive” behaviors, known as the Collaborative Problem Solving (“CPS”) approach. Dr. Greene worked for many years at Massachusetts General Hospital, where he… More
Are You Sure This Isn’t About Copyright? Chicken Sandwiches, Monkey Selfies and the Boundaries of Copyright Law
Last week, a wild crested macaque named Naruto (but really People for the Ethical Treatment of Animals) filed a copyright infringement lawsuit against photographer David John Slater in the Northern District of California. The suit alleges that Slater infringed Naruto’s copyright in the famous “monkey selfies” (taken by Naruto with Slater’s camera). The complaint requests that the Court order Slater to disgorge any profits he has realized from the distribution of the images and establish a trust, administered by PETA, to “be used solely for the benefit of Naruto, his… More
As a leader of a start-up company, you are probably aware of the importance of protecting your company’s innovative products, services and technologies through patent filings. If you are savvy, you are also aware of the importance of having a trademark and branding strategy as well (see our guide entitled “Trademark Strategies for Start-Up Companies”). Most start-up companies overlook copyright issues, however, and this can create problems down the road. In this article,… More
Just about one hundred years ago, Archibald Query of Somerville, Massachusetts invented the first commercial marshmallow cream, which he pedaled door-to-door in Union Square. Around 1917, he sold the recipe for $500 to two candy makers in Lynn who had just returned from World War I, and their company (Durkee-Mower) still makes Marshmallow Fluff today. In 2006, Union Square boosters began celebrating Query’s achievement with the Fluff Festival, a day of activities literally and figuratively stuffed with marshmallows. In honor of the 10th annual Fluff Festival, which takes place… More
Earlier this week, the Ninth Circuit affirmed the Northern District of California’s denial of cross motions for summary judgment in Lenz v. Universal Music. In an opinion by Judge Richard Tallman, the Court held that the defense of fair use must be considered by a copyright owner prior to the filing of a takedown notice under the Digital Millennium Copyright Act (DMCA). Here is our summary of the opinion:
What’s the case about?
Universal assigned a legal assistant to monitor YouTube for copyright infringement. The legal assistant… More
Many of our fine readers are by now well acquainted with the Digital Millennium Copyright Act (DMCA), the late-‘90s era addition to the Copyright Act intended to address an increasingly digital copyright landscape. The DMCA includes treaty compliance updates, anti-circumvention provisions and, most important for present purposes, the Online Copyright Infringement Liability Limitation Act (OCILLA), 17 U.S.C. § 512, section (c) of which provides a safe harbor for internet “service providers” that host content uploaded by their users. Because Section… More
On July 31, 2015, Harry Potter author J.K. Rowling celebrates her 50th birthday, according to muggle sources. The enormous success of Rowling’s literary creation and its associated multimedia empire has spawned countless jealousies, countless imitators, countless parodists and countless pirates. The franchise has kept dozens if not hundreds of lawyers busy with precedent-setting copyright cases, trademark disputes, First Amendment battles over religious expression, and even the occasional breaking and entering. Indeed, it appears that Ms. Rowling and her works pop… More
When we published our Sue-per Bowl post, 2015 looked like it would be a good year for right of publicity claims brought by athletes. On January 6, 2015, the Ninth Circuit in Davis v. Electronic Arts held that the First Amendment did not compel dismissal of right of publicity claims brought by former NFL stars who appeared in the “historic teams” option of the Madden NFL computer game. However, things went downhill after that: other than Davis, the first six months of 2015 have not been kind to right of publicity claims in the sports world. Here is… More
Last week, the focus of the legal world was not on intellectual property, to put it mildly. However, copyright law did have a small and somewhat silent, but still important, role in the Supreme Court jurisprudence that led to the legalization of same-sex marriage in Obergefell v. Hodges. In fact, the reasoning of United States v. Windsor, the 2013 precursor to Obergefell which struck down the Defense of Marriage Act (DOMA), relied in large part on a 1956 copyright… More
“Hollywood Circuit” Court Issues En Banc Decision in Garcia v. Google: No Copyright Protection for Fleeting Dramatic Performance
On May 18, 2015, the Ninth Circuit sitting en banc vacated its prior decision in Garcia v. Google. The prior decision, authored by Judge Alex Kozinksi, controversially held that an actress had standing to issue a DMCA takedown notice to YouTube because she had a distinct copyright in her performance within a film, even though she was not an author of the film as a whole. The en banc decision dissolves a previously issued injunction and reaffirms a more… More
Last year, the District Court in Home Legend v. Mannington Mills gave three reasons for its holding that the designs on faux-hardwood flooring material, which are intended to look like real maple floors, were not subject to copyright protection. On April 29, 2015, however, a unanimous Eleventh Circuit decision held that these reasons were against the grain, and shipped the matter back to District Court for pulping.
We have written many times about attempts to use copyright law to do what defamation law can’t: take stuff down from the internet. Because Section 230 of the Communications Decency Act (“CDA”) prevents a defamation plaintiff from suing an internet service provider for merely hosting defamatory content, many allegedly defamed parties instead have attempted to use the Digital Millennium Copyright Act (“DMCA”) to “take down” the offending material. For example, some dentists have asked their patients to sign over the copyright… More
Section 512(f) of the Digital Millennium Copyright Act makes parties who issue copyright takedown notices liable for any “knowing” misrepresentations in those notices. However, the Ninth Circuit in Rossi v. Motion Picture Ass’n of America, and other courts, have interpreted the term “knowing” narrowly, causing many to wonder if Section 512(f) has much practical application.
In our Oscar litigation post a few weeks ago, we made a passing reference to MGM v. Showcase Atlanta Coop. Prods., Inc., 479 F.Supp. 351 (N.D. Ga. 1979). In that case, the Northern District Court of Georgia held that the play Scarlett Fever was not a protected parody of Gone with the Wind, but rather an unlicensed derivative remake. When we researched this topic, we were somewhat surprised to discover almost no other published opinions exploring the line between theatrical… More
Taking legal action to enforce a copyright is often an expensive proposition so, before you go down that road, you better make sure you own the copyright in question. But what if you have already initiated copyright infringement proceedings and later lose confidence in your claim of ownership – how do you extract yourself? Well, here’s one option that seems to be increasingly popular (but which we don’t recommend): just don’t show up. Recently, default judgments issued for just that reason in two cases we’ve been following.
The Disappearing Dentist
And the Lawsuit Goes to . . . An Oscar-Time Guide to “Best Picture” Intellectual Property Litigation
The film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves, and so on. Sometimes the lawsuits are… More
The Beastie Boys can look back on 2014 as a year of good copyright outcomes. The preceding years had seen their music used without authorization in two promotional videos, by Goldieblox and Monster Energy, despite the surviving members’ commitment to honor the wishes of Adam Yauch, known as MCA, that Beastie Boys music not be used in commercial advertisements. The remaining band members, Adam Horowitz and Michael Diamond, decided to Make Some Noise about both unauthorized uses… More
Sometimes a cigar is just a cigar, as the saying goes. However, things are not always as they appear, and sometimes events unfold in ways you would not anticipate. Such is the case with the Ninth Circuit decision in the matter of Omega v. Costco. The case concerns Omega’s allegations that Costco was importing watches bearing the Omega symbol, thus infringing the copyright in that design. Despite the fact that the parties on appeal briefed only one hotly contested legal issue –… More
Heading into this year’s Super Bowl party season, there are two things every lawyer should be concerned about. First, why can’t your team get it together? Second, what do you do if you are asked to explain to your friends and neighbors some NFL-related litigation that you haven’t been following? We can’t help you with the first problem (although, as an Iggles fan living in the heart of Patriots Nation, I feel your pain). As to the second problem, however,… More
The case of Latele Television v. Telemundo Communications Group might have been a simple factual dispute over copyright ownership, but instead it has devolved into a series of accusations — including allegations of willful discovery violations and forgery — that could have been lifted directly from the telenovelas at issue in the case. This fascinating dispute, still ongoing in the Southern District of Florida, serves as an object lesson on the importance of thorough pre-litigation investigation, open communication among co-counsel, and candor in discovery responses.
Latele Television claims to own… More
Use of Porn Star Images in “Romance Fraud” Dating Profiles Fails to Support Trademark and False Advertising Claims
The plaintiff in Avalos v. IAC/Interactive Corp. called it “one of the biggest conspiracies ever executed on the internet” — the unauthorized use of images of adult film stars in fake online dating profiles. But in an opinion issued October 30, 2014, Judge Jesse Furman of the Southern District of New York held that trademark law was not the right way to go about solving this problem. The complaint was dismissed in its entirety.
The Romance Fraud Scam
According to the complaint,… More
Georgia State Academic Fair Use Decision Vacated by 11th Circuit: A (Relatively) Quick Read for the Busy Practitioner
Last Friday, the 11th Circuit Court of Appeals vacated and remanded the Northern District of Georgia’s 350-page fair use analysis of the electronic reserves practices at Georgia State University (“GSU”). Although this reversal is technically a win for the plaintiff publishers, the 11th Circuit left the most important parts of the lower court’s analysis intact, and essentially affirmed the bulk of its reasoning with respect to the first and fourth fair use factors. We have previously written at length about GSU’s
Superman Dodges a Bullet: Supreme Court Denies Certiorari in Heirs’ Bid to Reclaim Character Copyright
Close on the heels of the settlement between Marvel Comics and Jack Kirby’s heirs, which ended their dispute over copyright in a number of iconic comic book characters, the heirs to one of Superman’s co-creators, artist Joseph Shuster, lost out on the chance of a Supreme Court hearing in their effort to wrest copyright in the Man of Steel away from DC Comics. Like Kirby’s heirs, Shuster’s heirs had attempted to invoke 17 U.S.C. § 304(c) by sending notices to… More
As regular readers of this blog will know, comic book superheroes frequently find themselves at the center of legal disputes over copyright in fictional characters. In many cases, both sides agree that the characters in question are sufficiently delineated to merit copyright protection, but disagree over which party owns the copyright (and the lucrative royalty stream from sequels, movies, etc.). The answer is often complicated by the historical structure of the comic book publishing… More
On September 26, 2014, the District of Massachusetts shot down a plan to develop a “textbook dictionary.” James Richards, inspired in part by the Autobiography of Malcolm X, developed a project to convert the dictionary from a reference book into something that looked more like a textbook. Richards felt that this format would be more conducive to helping students and adults improve their reading and listening comprehension skills.
October is Pro Bono Month in many states, including Massachusetts, New York, Michigan, New Hampshire, Maine, Rhode Island, Indiana, Tennessee, and Alabama. The ABA has created an annual weeklong National Pro Bono Celebration, which this year is October 19-25. Recognizing the countless lawyers who devote their time and efforts to representing people of limited means, and urging all lawyers to do more, these pronouncements remind us that every attorney has an ethical responsibility to make sure that our system of justice is… More
Last week, Judge Alvin Hellerstein of the Southern District of New York issued his opinion Fox News v. TVEyes. Fox News claimed that TVEyes’ media monitoring service was copyright infringement. TVEyes argued that it was fair use. Here is our summary version of the case:
What is TVEyes?
TVEyes is a media-monitoring service that records content from over 1,400 TV and radio news outlets, and uses speech-to-text technology to create a searchable database of transcripts of that content. TVEyes subscribers include corporations,… More
Last month, the Missouri Court of Appeals, Western District, held that a public university was not required to turn over copies of certain course materials, including course syllabi, in response to a public records request. The syllabi were the type of document that is normally subject to disclosure under Missouri’s “Sunshine Law” (Chapter 610 of the Revised Statutes of Missouri), which allows members of the public to gain access to government records. However, there was one problem: copyright.
The Sunshine… More
When Can You Be Sued For Introducing Copyrighted Works At Trial? Almost Never, But Plaintiffs Keep Trying
Professor Nimmer once identified the “weakest infringement claims of all time” as those involving attempts by copyright holders to prevent their copyrighted work from being used as evidence against them in court. “It seems inconceivable,” Professor Nimmer wrote, “that any court would hold such reproduction to constitute infringement either by the government or by the individual parties responsible for offering the work in evidence.” But this scholarly warning has not prevented many plaintiffs from trying — and failing — to use copyright law to keep evidence out of civil and criminal trials, or to punish the parties who introduced… More
No matter how sophisticated we are on the outside, on the inside everyone has a favorite novelty t-shirt buried deep in the recesses of their juvenile subconscious. Mine is one that says “Welcome to Philadelphia. Now Go Home,” which so perfectly captures both the convivial pride and bewildering hostility of the city that raised me.
Highlights of Congressional Hearings on Copyright Remedies: Statutory Damages, Small Claims and Felonious Streaming
On July 24, 2014, the Judiciary Committee of the United States House of Representatives, through its Subcommittee on Courts, Intellectual Property and the Internet, held hearings on the subject of copyright remedies. Most of the discussion focused on the efficacy of statutory damages, which provide for awards between $750 and $30,000 per infringed work (with adjustments up to $150,000 per work for willful infringement). There was also discussion of the Copyright Office’s recent proposal for a small… More
Wizard of Oz Celebrates 75th Anniversary & Victory in Copyright and Trademark Dispute Over Film Characters
This August will mark the 75th anniversary of the release of the classic film The Wizard of Oz. As Warner Bros. celebrates the iconic status acquired by the film and its characters during the past seven-plus decades, the studio will likely also be rejoicing over a recent victory concerning the intellectual property rights in images of the characters from the film.
In the early 2000’s, Dave Grossman Creations, Inc. (DGCI) and others began acquiring restored versions of old posters and lobby cards (smaller versions of the posters) from The Wizard… More
About a year ago, we wrote about the final chapter in the copyright saga of Joel Tenenbaum, the Boston University student who was found liable for copyright infringement by a District of Massachusetts jury, based on his admitted sharing of about 30 songs via online peer-to-peer networks. Because the jury found that his infringement was willful, it awarded the plaintiffs a whopping $675,000 in statutory damages, or about $22,500 for each violation. By contrast, the retail value of the… More
Highlights of Congressional Hearings on Copyright Moral Rights, Termination Rights, Resale Royalty, And Copyright Term
On July 15, 2014, the Judiciary Committee of the United States House of Representatives, through its Subcommittee on Courts, Intellectual Property and the Internet, held hearings regarding a number of copyright issues, including moral rights, termination rights, resale royalty and copyright term. Despite the eclectic nature of the hearing, all of the issues discussed fell under the general category of what Chairman Howard Coble (R-NC) described as the “rights of the creator, often referred to as the little guy.”
Representative John… More
We previously reported on the Supreme Court’s recent decision on June 25, 2014 that Aereo, Inc.’s internet television service infringed the copyright of the programs being transmitted by the service. In holding that Aereo was doing more than simply providing antenna access to its customers, Justice Breyer identified “Aereo’s overwhelming likeness to the cable companies” that are subject to regulation under the 1976 Copyright Act. Following the opinion, Aereo suspended its service temporarily, but saw in Justice Breyer’s language… More
So, how is copyright law doing as an online reputation management tool?
We have written many times recently about the use of copyright law to do what defamation law can’t: take stuff down from the internet. A politician in California claimed copyright in her campaign photo in order to have a satirical blog deleted. Dental patients have been asked to sign away their copyrights to hypothetical future online reviews so the dentists can take down the ones they don’t like. And… More
Every attorney in the United States understands that West Publishing Corp. (“Westlaw”) and the LexisNexis Group (“Lexis”) are perennial rivals in the electronic legal research field. As such, they don’t agree on much, but there are some important exceptions. Earlier this month, one of those exceptions came to a pleasing conclusion for both companies, when Judge Jed Rakoff of the Southern District of New York issued his long-promised opinion in White v. West Publishing Corp.
The case was brought by Edward… More
“Oh right. . . THAT thing!” Designated Agent Required Prior To DMCA Copyright Infringement Safe Harbor
The recent case of Oppenheimer v. Allvoices is, if nothing else, a cautionary tale for everyone who wants to start the next big social networking site or provide any internet service with user-generated content. The moral is that the Digital Millennium Copyright Act (DMCA) is not self-executing; there are a few hoops you have to jump through before you can take advantage of the DMCA safe harbor. One of them is selecting and registering a designated… More
Aereo’s Internet TV Service Not Saved From Copyright Infringement Liability By Technical Differences, Says Supreme Court
Television broadcasters and other digital content providers issued a collective sigh of relief on June 25, 2014, when the United States Supreme Court issued its much-awaited opinion in American Broadcasting Companies, Inc. v. Aereo, Inc. The Court reversed the Second Circuit and held that Aereo’s television service, which allowed viewers to watch broadcast television programs over the internet, infringed the broadcasters’ exclusive right to publicly perform their work.
For prospective customers of Aereo and similar services, this means that the ability to legally watch television over the internet is unlikely… More
Second Circuit Hints At Possible Google Books Outcome In Finding HathiTrust Digital Library Project Protected As Fair Use
Earlier this week, the Second Circuit issued its ruling in the HathiTrust case, a potential precursor to the long-awaited resolution of the more prominent, and related, Google Books case. The decision upholds the district court’s finding that the non-profit defendant is protected by the fair use doctrine, but leaves room for a potentially different outcome in the Google Books matter. As we have reported, the Google Books project aims to scan and digitize all the world’s books and make them full-text searchable. As part of the “Library Project” arm of… More
It Doesn’t Have To Be the Magna Carta! Alien Yogurt And The Writing Requirement For Copyright Transfers
Sunday (June 15) marks the 799th birthday of the Magna Carta (sometimes spelled Magna Charta), which famously limited the powers of the English monarch vis-à-vis his feudal barons. Although often credited as a singular influence on the U.S. Constitution, and therefore on American law, it also gave rise to one of our favorite pre-internet copyright memes, courtesy of Ninth Circuit Judge Alex Kozinksi in Effects Associates v. Cohen.
Copyright Antitrust Claims Against Textbook Publishers Dismissed in Longstanding Gray Market Copyright Case
It is no secret that college textbooks are expensive, and the average student has little recourse when a professor assigns specific books and editions. Stuck between a rock and a hard place, over the years students have concocted several creative ways to avoid these high prices. Examples include checking out textbooks from libraries for a semester at a time; purchasing books at retail price, photocopying every page, and returning the books for a full refund; and of course swapping textbooks with other students. Some of these methods are… More
The Department of Commerce is holding a round table at Harvard Law School on June 25, 2014 to discuss the Internet Policy Task Force’s Green Paper on Copyright Policy, Creativity and Innovation in the Digital Economy, released on July 31, 2013. The Boston topics will include 1) the legal framework for the creation of remixes; (2) the relevance and scope of the first sale doctrine in the digital environment; and (3) the appropriate calibration of statutory damages in the contexts of individual… More
In honor of African American Music Appreciation Month, sometimes known as Black Music Month, we recall the first judicial decisions in which jazz music was the subject of a legal dispute. Although jazz originated in the late nineteenth century in the Southern United States, the word “jazz” appears to have been applied to music for the first time between 1912 and 1915. Before the decade was out, jazz music was producing legions of listeners, late night dance crowds and plenty of middle class angst. By the 1920’s, controversies concerning the genre had wended their way through the lower… More
In its recent opinion in Oracle v. Google, the Federal Circuit reversed the Northern District of California and reinstated a jury’s infringement verdict against Google. The opinion is long and complex, and much ink has already been spilled by its critics. As a service to those of you sitting on the sidelines of this particular debate, here is our summary version of the case:
What’s the case about?
Some recent administrative developments may be of interest to copyright and trademark practitioners:
Effective May 1, 2014, the U.S. Copyright Office has amended its registration fee schedule. This includes reduced renewal application fees and increased fees for registering multiple works. A complete list of the new fees is available here.
Updated Trademark Manual of Examining Procedure (TMEP)
On April 30, 2014, the USPTO issued the April 2014 update of the TMEP, which includes precedential case law and other changes since the October 2013 revision. Highlights of the changes are available from the USPTO… More
Yesterday, the Massachusetts Appeals Court affirmed the vacature of a $22.5 million verdict in a matter that began fifteen years ago in part as a dispute over a duplicitous authorship claim in a copyright registration. The case concerned the fraudulent autobiography: Misha: A Memoir of the Holocaust Years, a.k.a. Surviving with Wolves.
Surviving With Wolves
In 1994, Massachusetts resident Jane Daniel heard Misha Defonseca describe her experiences during World War II. Born Misha Levy, Defonseca was seven years old when her Jewish… More
Court Dismisses Tarantino’s Copyright Claim Over Hyperlink To Leaked Script; Grants Leave to Amend But Notes That Fair Use Argument Is Strong
We recently reported on director Quentin Tarantino’s copyright lawsuit against Gawker Media over his leaked script for the film The Hateful Eight. The suit alleged that Gawker Media, by encouraging its readers to leak the script and then linking to the leaked script on another site, engaged in contributory copyright infringement. Gawker Media, arguing in part that a mere hyperlink could not be the basis for copyright infringement liability, filed a motion to dismiss.
Once a piece of clothing has been styled, cut and shaped according to a designer’s vision, it is a form of expression arguably no less worthy of copyright protection than say, a photograph, painting, or poem. However, the “useful article” doctrine generally denies copyright protection for aspects of clothing design that are considered inherently functional or “utilitarian.” So, for example, the two-dimensional pattern on a dress may be copyrightable, but the three-dimensional cut of the dress is generally not protected by… More
Quentin Tarantino probably wasn’t offended when the Hollywood gossip website Defamer, owned by Gawker Media LLC, compared him to a petulant child and accused him of throwing a “temper tantrum.” After all, the colorful characters in his films have uttered far more incendiary insults. But when the website published a story about Tarantino’s leaked script for the upcoming film The Hateful Eight, and included with the story a link to a PDF file of the entire leaked screenplay, Tarantino took… More
Tax day presents several interesting questions for copyright holders, not the least of which is how the Internal Revenue Service (IRS) will treat income from the sale or exclusive license of a copyright. If a copyright is a “capital asset,” proceeds from its sale or exclusive license are a capital gain rather than ordinary income, and the transaction will be taxed at a much lower rate.
Prior to 1950, whether a copyright was a capital asset was largely determined by the professional status of the author. A copyright was not a “capital asset” if could be described as “inventory” of… More
Can Private Photos Be Used In Political Ads Without Permission? Colorado Court Rejects Gay Couple’s Misappropriation Claim; Copyright Claim Survives
When we upload family pictures to the internet, we understand that, in theory, anyone in the world might download them and use them for some nefarious purpose. However, we usually take comfort in the fact that most of us just aren’t interesting enough to be noticed. But that wasn’t the case for New Jersey couple Brian Edwards and Thomas Privitere.
In 2010, Edwards and Privitere got engaged and created one of those obligatory saccharine websites to provide information about their… More
On March 13, 2014, the Judiciary Committee of the United States House of Representatives, through its Subcommittee on Courts, Intellectual Property and the Internet, held hearings regarding the copyright infringement notice and takedown procedures set forth in 17 U.S.C. § 512, the Digital Millennium Copyright Act. The focus of the discussion concerned whether the DMCA fairly allocates the burdens of copyright enforcement and administration of the takedown process among copyright owners, internet service providers and internet users. Underlying the discussion was also the desire to balance the exclusive rights of content creators… More
The United States Copyright Office has announced the initiation of a study of the effectiveness of existing methods of music licensing. Three types of licenses were mentioned in the announcement: (1) compulsory licenses for the reproduction and distribution of musical compositions; (2) licenses for the public performance of compositions through ASCAP and BMI; and (3) licenses for the relatively new right in the digital public performance of sound recordings.
Among the issues that will be considered are:
Compulsory Licenses for Reproducing and Distributing Musical Compositions
The owner of… More
For those of us who like customized tchotchkes, CafePress is a marvel. You can take any photo or message you like, use the CafePress website to electronically slap it on a t-shirt (or keychain, iPhone case, etc.), and then order a non-electronic copy for yourself. Before you can say “7-10 business days,” you are drinking your morning coffee from of a marginally humorous bespoke mug while wearing a baseball cap with a picture of your cat on it. Heaven.
Illinois Governor Pat Quinn’s reelection campaign appears to be based on a simple message: “Do you want C. Montgomery Burns Representing You in Springfield?” Yes, he means that C. Montgomery Burns. Yesterday, Quinn began a media blitz comparing his opponent (businessman Bruce Rauner) to the Simpsons character. This included the release of an ad on YouTube which reportedly featured images of Rauner juxtaposed with clips from the Simpsons. When the ad was released, the Chicago… More
Performing rights organizations (PROs) are entities that issue licenses to, and collect royalties from, television stations and other parties who wish to perform or broadcast copyrighted musical compositions. There are three PROs in the United States, the largest of which are ASCAP and BMI. The other PRO, the Society of European Stage Authors and Composers (SESAC) has until recently been the Jan Brady of the bunch – born in the middle and often overlooked. Founded in 1930 to represent European composers, it later concentrated on the… More
Are You There, Copyright Office? It’s Me, First Circuit! Can Composers Deposit Infringing Musical Works In Place of The Original?
Copyright law usually has little patience for plaintiffs who don’t have a copy of their original work to deposit with the Copyright Office. For example, in Seiler v. Lucasfilm, a plaintiff who claimed to have created the “Imperial Walkers” in The Empire Strikes Back film had his case dismissed because, having lost his original drawing, he was trying to sue based on a “reconstruction” drawn after the allegedly infringing film came out. More recently, the Ninth Circuit
Fox news recently reported on a dispute between Gulfport, Mississippi resident Kelly Taylor and her local Walgreens pharmacy. Ms. Taylor, using Walgreens’ online photo service, attempted to print out a few pages of the Bible to hand out to members of her church. Walgreens refused, citing copyright law. When Walgreens told Taylor that it would require approval from the author, she informed the store that God was the author so “who exactly would I get the approval from?”
Ms. Taylor was “in total shock,” so she contacted Fox News and… More
On February 26, 2014, the Northern District of California issued its opinion in Dhillon v. Does 1-10. Judge Susan Illston held that the use of a political campaign photograph by one’s political enemies is fair use.
The Munger Games is a political blog run by anonymous California conservatives who are not fans of socially liberal California Republican politics, exemplified in their eyes by businessman Charlie Munger. On February 12, 2013, the blog set its sights on Harmeet Dhillon, Vice Chair of the California Republican Party, by publishing “Meet Harmeet,” an article criticizing Dhillon’s involvement with the… More
By now, you’ve probably heard the agonized shrieks of your friendly neighborhood copyright lawyer, decrying the Ninth Circuit’s opinion Garcia v. Google. If you haven’t had the time or inclination to read the opinion, here is a quick synopsis, followed by our list of nine ways in which many find the Ninth Circuit’s February 26, 2014 decision somewhat troubling.
Cindy Lee Garcia agreed to act in a low budget film called “Desert Warrior,” for which she was paid $500. The… More
CrossFit, Inc., the fitness training company, licenses its trademarked name and goodwill to over eight thousand affiliates worldwide at $3,000 per year per affiliate. When non-affiliate Jenni Alvies began posting on Facebook about fitness under the name “Crossfit Mamas” (including selling exercise apparel bearing the same name), CrossFit felt Alvies was infringing its mark.
An orphan work is an original work of authorship whose author cannot be located or identified when someone is seeking permission to use it. For example, say you want to reprint a photograph in a book, but you can’t identify or locate the photographer, and you don’t know where to go for permission. Should you still use it? Have you really searched hard enough for the rights holder?
George Washington is responsible for a lot of “firsts.” For example, he was the first President, the first Commander-in-Chief of the Continental Army and the first guy to have the George Washington bridge named after him. But President Washington was also indirectly responsible for what is widely regarded as the first American application of the copyright doctrine of fair use.
Jared Sparks, Charles Upham and the Washington Letters
On January 21, 2014, oral arguments were held in the Supreme Court case of Petrella v. Metro-Goldwyn-Mayer, Inc., which concerned the copyright to the story underlying the film Raging Bull. We previously discussed this case at some length, but to make a long story short: There is a three-year statute of limitations for copyright infringement. However, because of the “rolling” nature of copyright claims, a new three-year period begins to run each time an infringing copy is… More
One of the most commonly misunderstood aspects of copyright law is the significance of intent. The elements of direct copyright infringement are (1) the plaintiff’s ownership of a valid copyright in a work and (2) the defendant’s copying of protectable expression from that work. The defendant’s intent is not part of this analysis. One hears the term “innocent infringer” thrown around, but this moniker is of far less value than is often imagined.
Take, for example, sculptor Robert Davidson’s recently-filed case against the US Postal Service (USPS) in… More
In Kenney v. Warner Bros. Entertainment Inc., No. 13-11068, 2013 WL 6212593 (D. Mass. Nov. 29, 2013), Judge Richard G. Stearns dismissed an action for copyright infringement brought by Michael P. Kenney (d/b/a Mike O’Dea and Shamrock Films) against the film studio Warner Brothers.
According to the decision, Kenney is a screenwriter, director, and actor, who began developing a Ghostman comic book and film in 2010. Kenney conceived… More
A few months ago, we reported on the disabled blog of Oliver Hotham, a student in the UK whose reporting on an anti-gay rights group was censored by what appeared to be a politically-motivated takedown notice issued by that same group, “Straight Pride UK.” We suggested that WordPress, the host of Hotham’s blog, had not been legally obliged to take down the material, but instead had the option of “growing a backbone” and ignoring takedown notices that were clearly not… More
When last we looked in on the Google Books dispute, the Second Circuit had overturned class certification in the suit, brought by the Authors Guild and multiple individual authors, on the basis that the District Court first should have resolved Google’s fair use defense, which could moot the class certification issue. Last week Judge Denny Chin, still presiding over the Google Books dispute by designation, ruled that the copying envisioned by the Google Books project was protected under the fair use doctrine.
As we have
While most artists take pride in creating and protecting their works, many graffiti artists remain necessarily (sometimes famously) anonymous, since their art may also constitute criminal vandalism. In contrast to the classic image of the beleaguered shopkeeper scrubbing daily at illicit tags, however, some property owners condone and even patronize the aerosol artists who adorn their facades. In that situation, the lack of a formal, written agreement addressing the parties’ rights at the outset can lead to costly and unnecessary… More
Lies and the Lying Liars who Register Copyrights: Seventh Circuit Provides Guidance on “Curious” Copyright Invalidation Procedure
According to the Seventh Circuit in Delivermed Holdings LLC v. Schaltenbrand, plaintiff Mark Swift lied to the Copyright Office, rerouted customer calls to his cell phone in order to sabotage his business partners, exploited the business for personal gain and engaged in questionable litigation tactics. But Swift won his appeal anyway because the District Court skipped a critical step before invalidating his copyright registration. In so ruling, the Seventh Circuit became the first federal appeals court to weigh in on the “curious” copyright invalidation procedure set forth… More
Enforcing copyrights in the Federal Courts can be both expensive and complicated, so much so that many feel copyright law Is virtually unenforceable except by large corporations. Filing a copyright claim for anything under $30,000 is perceived as a lose-lose proposition because legal fees and discovery costs (even for pro se litigants) can quickly surpass any potential recovery. One study cited by the Copyright Office indicated that most copyright lawyers wouldn’t even accept such a small case in the first place.
Vimeo, the online video service, is seeking leave to appeal to the Second Circuit on the issue of whether sound recordings made prior to 1972 are covered by the safe harbor provisions of the Digital Millennium Copyright Act (DMCA). As a practical matter, affirmance by the Second Circuit would mean that an otherwise DMCA-compliant internet service provider (ISP) could be immune from liability for copyright infringement if one of its user videos infringes John Lennon’s 1973 Mind Games, but… More
At some point, a legal claim is just so old and stale that it’s unfair to allow the plaintiff to bring it. The statute of limitations and the doctrine of laches are two different solutions to this same problem. The former puts specific time limits on certain types of claims. On the other hand, the equitable doctrine of laches (from the old French “laschesse,” meaning “slackness”) eschews the one-size-fits-all approach and allows a judge to use common sense and fairness to determine whether a plaintiff’s delay was unreasonable given the particular circumstances of each case.
But what happens if the… More
Electronic Arts, Inc. (“EA”), owner of the $4 billion John Madden Football videogame franchise, thought it had a pretty good defense when Robin Antonick filed suit in the Federal Court for the Northern District of California, claiming that EA had infringed his computer software copyright.
Specifically, Antonick didn’t appear to have a copy of the copyrighted source code, i.e. his original program, so the jury simply could not conduct a side-by-side comparison of the allegedly infringed and allegedly infringing works. EA felt this would make the… More
It appears that a Circuit split is developing on the issue of whether Internet services that transmit network television programs are engaged in a transmission to the public in violation of the networks’ copyrights. The networks argue that the Internet streaming services (such as Aereo) are engaged in public transmissions because large numbers of members of the public can access television programs using these services; the streaming services argue that they merely facilitate one-to-one private transmissions because their technology uses multiple… More
We’ve previously written about Tuteur v. Crossley Corcoran, the Digitus Impudicus copyright case in the District of Massachusetts. The facts can be summarized as follows: Blogger A posted a photo of herself giving Blogger B “the finger.” Blogger B reposted the photo as part of her response. Blogger A then issued a Digital Millennium Copyright Act (DMCA) takedown notice to Blogger B’s internet service provider, claiming that Blogger B had committed copyright infringement by republishing the photograph.
So, is Blogger… More
The District of Massachusetts may be becoming a center for takedown notice jurisprudence. As we have previously reported, pending before the court is the matter of Tuteur v. Crosley-Corcoran, the outcome of which may determine how much good faith is required by a copyright owner before he or she may issue a takedown notice under Section 512 of the Digital Millennium Copyright Act (DMCA).
Now, the same court is entertaining another potentially high-profile takedown case. On Thursday, August 22, 2013, Harvard Professor… More
Setting the Record Straight on the DMCA: UK Blogger Censored by Questionable Use of US Copyright Law
The Digital Millennium Copyright Act (DMCA) is sometimes criticized for creating more problems than it solves. Section 512 of the DMCA provides a mechanism for copyright owners to demand that Internet Service Providers (ISPs) remove unauthorized copies of their copyrighted works from the internet. If the ISP complies with the demand, it is immune from any future award of damages for direct or contributory copyright infringement. If the ISP ignores the demand, it loses this immunity. This system is… More
A “Deal with the Devil”? Ghost Rider Creator Asserts that Contract Did not Give Marvel Perpetual Ownership of Copyright in Comic Book Character
As we have previously observed, superheroes often take starring roles in disputes relating to copyright protection for fictional characters. This makes sense, as they frequently appear in long-lived series of works in various media (comic books, television shows, films, etc.) sporting a consistent set of identifying characteristics – physical appearance, personality traits, “origin story,” and the like. Indeed, many such disputes take it as a settled conclusion that the superhero character is entitled to copyright protection,… More
One reason to buy physical books and music CDs rather than Kindle books and iTunes files is that when you own a physical copy of the book or music CD, you can lend it to friends. You could also, if you chose, sell your copy. These are rights guaranteed by the first sale right in Section 109 of the Copyright Act. When you buy a Kindle book or an iTunes song (or more accurately, when you license them), you have no… More
When Tin Pan Alley composer B.G. “Buddy” DeSylva co-composed such 1920’s hits as California Here I Come, Sonny Boy and If You Knew Susie (and lesser-known works such as Why Don’t You Marry the Girl?) he may have understood that he was leaving an indelible mark on American popular culture. But could he have possibly realized that he would leave an indelible mark on American legal culture by sleeping with… More
Yesterday the Second Circuit issued its decision undoing the District Court’s certification of a plaintiff class in the long-running lawsuit claiming that the Google Books Library Project violates copyright in millions of books. The plaintiffs, the Authors Guild and various individual authors, assert that Google’s practice of scanning and digitizing in-copyright books from major libraries, and making short “snippets” of those books available to the public in response to searches, is an infringement of copyright. The District Court had certified a class consisting of all U.S. authors… More
First Circuit Affirms $675,000 Award Against Joel Tenenbaum: Gore Test Does not Apply to Statutory Damages under Copyright Act
This week, the First Circuit affirmed a $675,0000 statutory damages award against college student Joel Tenenbaum for copyright infringement. The Court held that the damages award, based on Tenenbaum’s illegal downloading and distribution of 30 copyrighted songs, was not excessive or a violation of due process.
The Original Jury Award
As we have previously discussed, Tenenbaum had been downloading and distributing (via peer-to-peer networks) thousands of copyrighted songs, despite warnings from his parents, his college and copyright owners. In 2007, a group of recording companies brought a copyright infringement suit and sought statutory damages with respect to… More
Approximately a year ago, Judge Orinda Evans of the Federal District Court for Northern Georgia held that the electronic reserves practices of the library at Georgia State University (“GSU”) were, for the most part, fair use and not copyright infringement. While some were surprised by the liberal breadth of the court’s interpretation and application of the fair use doctrine, no one ought to have been surprised that the plaintiffs decided to appeal. The parties — and about a dozen amici… More
In a decision issued earlier this month, the Ninth Circuit held that the right to bring copyright claims cannot be transferred without an accompanying transfer of copyright ownership itself.
The ruling came in consolidated cases which had been brought in the District of Nevada by Righthaven, LLC, an entity which had been founded for the purpose of receiving assignments of the ability to enforce copyrights. The problem was that under the Copyright Act, only a “legal or beneficial owner of an exclusive right under a copyright” can… More
Big changes may be afoot in copyright law these days, via both litigation and legislation. Courts are considering sweeping infringement claims with potentially far-reaching implications, and Congress is beginning the process of a massive overhaul of copyright statutes. We provide here a brief rundown of some recent developments.
Authors Guild v. Google
As we have reported previously, the Authors Guild and representative individual authors have been waging a long-running battle in the Southern District of New York against Google’s GoogleBooks project,… More
The federal district court in New Jersey has dismissed Stefani Germanotta, a.k.a. Lady Gaga, from a copyright lawsuit filed by composer and record producer Calvin Gaines. Mr. Gaines alleged in his complaint that his writing and producing partner, Rob Fusari, proved to be something of a Judas by betraying their longstanding collaborative relationship. According to Gaines, he and Fusari composed the music and produced the master recordings for several Lady Gaga tracks, including the international megahit Paparazzi. The problem, according… More
After infamously departing (i.e., being fired) from the nascent production of the Broadway musical Spider-Man: Turn Off the Dark, acclaimed stage and screen director Julie Taymor filed suit against the show’s producers. As discussed previously on this blog, Taymor brought claims for breach of contract as well as copyright infringement. The stakes were high. Had Taymor succeeded in her suit, she might have been in a position to bar further productions and adaptations of the show, which has gained in popularity and profitability despite being riddled with problems… More
The first prong of the fair use defense in copyright infringement cases, the “purpose and character of the use,” is often described as an inquiry into whether the allegedly infringing work is “transformative.” In other words, does the allegedly infringing work add something new, thus altering the message of the original, or does it essentially just copy (and potentially usurp the market for) the original? A classic example of a transformative use is parody, where the new work “conjures up” (i.e., copies some of) the original in order to criticize it.
But what if the author… More
Following the Second Circuit’s remand order last year on appeal of an initial grant of summary judgment for YouTube, the Southern District of New York has revisited the issues in Viacom’s copyright infringement suit and again found that the Digital Millennium Copyright Act (“DMCA”) shields YouTube from liability for infringing video clips posted by users on its site. Last year’s Second Circuit decision had laid out specific directives on four topics to be addressed on remand. In his April 18 opinion, Judge Louis Stanton dutifully addressed the issues one by one, finding in each case that… More
A Private Matter: Second Circuit Rules that Aereo’s TV Streaming Service is Not an Infringing Public Performance
Last Monday the Second Circuit ruled in favor of Aereo, Inc., a television streaming service, in a lawsuit filed by a consortium of network broadcasters who argued that Aereo’s services constitute a public performance that violates their copyrighted material. The Court affirmed an order of the District Court denying the broadcasters’ motion… More
A U.S. federal court has held that the publication by a media monitoring service of excerpts from Associated Press news articles is copyright infringement for which the fair use defense is not available. The Associated Press v. Meltwater U.S. Holdings, Inc. et al., 12 Civ. 1087 (March 21, 2013). The case provides a victory for content owners in the ongoing legal war between creators and distributors of online content.
In granting summary judgment to The Associated Press (“AP”)… More
Ever since the entertainment industry figured out how to use IP addresses to bring copyright infringement lawsuits against illegal downloaders, defendants and critics have been calling these plaintiffs “trolls”. But name-calling wasn’t enough for Dmitriy Shirokov. He wanted payback, and brought a class action lawsuit against his persecutors. However, according to an order issued earlier this week by Judge George O’Toole of the Federal District Court for Massachusetts, Mr. Shirokov will have to figure out another… More
Copyright Owners Left Legally Jet Lagged? – The Supreme Court Embraces the International Exhaustion Doctrine
A multi-year legal drama over the proper scope of certain sections of the U.S. Copyright Act, as applied to goods made and first sold outside the United States, has finally come to an end. In a 6-3 decision issued yesterday, with dissents from Justices Ginsburg, Kennedy, and Scalia (strange bedfellows in many regards, judicially speaking), the Supreme Court, in the case of Kirtsaeng v. John Wiley & Sons, Inc., has embraced the concept of international exhaustion in relation to the copyright first-sale doctrine. This decision has far-reaching implications for copyright and trademark owners alike.
Under the… More
Several recent cases have highlighted the interesting issue of whether and when fictional characters – as distinct from the works they inhabit – are subject to copyright protection. Over the years, courts have developed two main tests for determining whether characters are worthy of copyright protection. First, as Judge Hand pointed out in the 1930 case Nichols v. Universal, stock characters are free for anyone to use, but characters that are sufficiently delineated are protected from imitation: “the less… More
WINTER . . . I MEAN PRINTER . . . IS COMING: Game of Thrones Alleges Copyright Infringement by 3D Printer IPhone Dock
The inner twelve-year old boy in me doesn’t know which is cooler: the throne made entirely from swords for HBO’s Game of Thrones series, or the fact that 3D printer technology can now replicate that throne in my home at the touch of a button. It’s an interesting time to be a twelve-year old boy. It may be an even more interesting time to be an intellectual property lawyer because, like the imminent clash in Game of Thrones between… More
Dish Networks’ Hopper device has spurred a considerable amount of legal controversy. Recently, that controversy made its way into the official award ceremony of the Consumer Electronics Show.
Dish released its Hopper DVR in May 2012. The Hopper’s “Primetime Anytime” feature automatically records the entire primetime lineups of CBS, ABC, FOX, and NBC. During playback, the “Auto Hop” feature automatically skips commercials. A few weeks after the announcement, CBS, Fox, and NBC sued Dish in the Central… More
Dissecting Mr. Rockefeller: First Circuit Rejects Copyright Infringement Claim Based on Unoriginal Elements of News Photograph
Clark Rockefeller, aka Christian Karl Gerhartsreiter, lived a double life until his conviction for child abduction in 2009. He was subsequently charged with an unrelated murder in California, and that trial is set to begin later this month.
But the most recent chapter in the Rockefeller saga has very little to do with Rockefeller himself. In 2007, before anyone… More
Like Joel Tenenbaum, who has been discussed in prior entries in this blog, Jammie Thomas-Rasset has conducted a long-running battle with the recording industry over how much damages she should pay for her downloading activity. Like Mr. Tenenbaum, she argues that large statutory damages are unfair against individual “consumer” downloaders who contributed only minimally to the industry’s damages. She has had a district court judge on her side throughout her odyssey, but was shot down by three successive juries… More
YouTube Not Required to Remove “Innocence of Muslims” Video in Response to Actress’s Takedown Notice
Last week a California federal judge declined to enter a preliminary injunction sought by actress Cindy Lee Garcia, which would have required YouTube to remove the 14-minute anti-Islamic film “Innocence of Muslims” that has sparked deadly protests around the globe in recent months. Garcia’s complaint for direct and secondary copyright infringement against YouTube and its parent company, Google, alleges that she was fraudulently induced to appear in the “vile and reprehensible” film, and that her originally innocuous lines were dubbed… More
Last Friday, the Republican Standing Committee (“RSC”) published a report by twenty-four year old staffer Derek Khanna, a former Mitt Romney aide and graduate of Georgetown Law School, entitled: “Three Myths about Copyright Law and Where to Start to Fix it.” In less than twenty four hours, the report disappeared from the internet.
The RSC claims that the report was removed because it had been published without adequate review. But Techdirt and others, smelling scandal, speculate that the report was nefariously removed because it was… More
The Year of Downloading Dangerously: Federal court gives adult film copyright “trolls” the Third Degree
About this time last year, we reported on a case which bore perhaps the least catchy name in the history of the Massachusetts Federal District Court: Liberty Media Holdings, LLC v. Swarm Sharing Hash File AE340D0560129AFEE8D78CE07F2394C7B5BC9C05,821 F.Supp.2d 444 (D. Mass. 2011). In that case, 38 John Doe defendants were accused of illegally downloading the adult film, “Amateur College Men Down on the Farm,” via BitTorrent. The defendants argued that it was improper for all of them to… More
We’ve previously written about the academic publishing industry’s lawsuit against Georgia State University (“GSU”) and its library system’s electronic reserve practices. In May, Northern District of Georgia Judge Orinda Evans held that these practices were, with a few exceptions, fair use.
Last week, the publishers docketed their much-expected appeal with the 11th Circuit Court of Appeals. Among the issues that the Court will be asked to review whether Judge Evans misapplied the fair use doctrine and… More
An often-frustrating aspect of IP law is that in relatively small matters, the cost of litigation can quickly become disproportionate to the value of the intellectual property in dispute. In other words, there is no automatic sliding scale of expenses that shifts according to the value of the IP.
Yesterday Google and the Association of American Publishers (AAP) announced that they have settled the litigation filed in 2005 by the AAP challenging the Google Books Library Project. As we have previously reported, Google is involved in an ambitious project to digitize the contents of a number of the world’s largest libraries and to make that content available online. The Google Books site provides excerpts of books, which Google calls “snippets,” for free; in cases where Google has the necessary rights, users can purchase complete copies of books through the… More
If It’s Not Copying, It’s Not Copyright Infringement: Why the Seventh Circuit Overturned an Injunction Against myVidster.com
This past week, myVidster.Com was hijacked by Dutch cyber-pirates, and the owners were really happy when it came back on line Friday. This is because, putting aside the hijacking, August was a pretty good month for myVidster.Com, thanks in large part to 7th Circuit Court of Appeals Justice Richard Posner.
MyVidster.com is the latest social media site to become the latest social media site. It allows users to engage in “social bookmarking,” which involves internet citizens sharing hyperlinks to online materials in which they may share a mutual interest…. More
As previously discussed on this blog, last year the First Circuit held that the jury verdict for $675,000 in statutory damages against graduate student and file sharer Joel Tenenbaum should not have been reduced to $67,500 by District Court Judge Nancy Gertner on constitutional grounds. The case was remanded for consideration of Tenenbaum’s motion for remittitur, and, if that was denied, for fresh consideration of the constitutionality of the award.
In light of Judge Gertner’s retirement, the remanded case… More
Mitt Romney seems to attract copyright controversies like his bank account attracts interest. During the 2012 presidential campaign, Candidate Romney has already had copyright rows with Tom Brokaw and CNN. Now, he’s got three more.
Last month, President Obama’s campaign used Romney’s cringe-worthy rendition of “America the Beautiful” (a song in the public domain) as the atonal soundtrack to a political attack ad. The Romney campaign retaliated with its own musical… More
Foley Hoag Attorneys to Screen Provocative, Academy Award-Winning LOGORAMA Film and Lead Discussion of Copyright and Trademark Fair Use Issues
Honestly, who hasn’t fantasized at some point about Ronald McDonald grabbing an Uzi and slaughtering his way through corporate America? LOGORAMA, the Academy Award-winning animated short, involves a gritty police chase set in a Los Angeles-inspired cityscape entirely populated by over 2,500 contemporary and historical trademarks and logos. We couldn’t let this provocative and fascinating film pass completely without notice in the legal community.
In 2006, square-jawed super hero Captain Copyright arrived in Canada, vowing “to protect the rights of artists, writers, musicians, photographers, filmmakers . . . and everyone in between.”
Captain Copyright was the brainchild of Access Copyright, a Canadian non-profit organization that serves as a licensing conduit between the authors of copyrighted materials and those who use that material in education, business and government. The idea, apparently, was to inculcate the nation’s youth with an innate respect for copyright law.
About two months after he appeared, however, Captain Copyright turned around and… More
The Devil’s in the Details: Dissecting the 350-Page Georgia State University Electronic Reserve Copyright Ruling
On May 11, 2012, we learned what it sounds like when all the college professors and university librarians in the country breathe a collective sigh of relief. Judge Orinda Evans of the Federal District Court for Northern Georgia issued a whopping 350-page opinion which, for the most part, vindicated Georgia State University’s fair use defense in the closely-watched copyright infringement case brought by a coalition of publishers (Oxford University Press, Cambridge University Press… More
Copyright Claims Dismissed Against Facebook Movie and Book: Unoriginal Expression And Fragmentary Phrases Not Protected
Software entrepreneur Aaron Greenspan claims not only to have been the original inventor of Facebook. He also claims to have been the original author of the story of Facebook, via his memoire, Authoritas: One Student’s Harvard Admissions and the Founding of the Facebook Era.
However, yesterday Massachusetts Federal Magistrate Judge Robert Collings found that these claims were not sufficient to sustain a copyright lawsuit against Benjamin Mezrich, the author of The Accidental Billionaires: The Founding of Facebook, and the makers of the film, The Social Network, which… More
The firmament of copyright blog topics just got a little dimmer, and a lot better clothed. Last month, after eleven years, three Ninth Circuit opinions and 1,212 docket entries in the trial court, soft-porn multimedia company Perfect10, Inc. stipulated to the dismissal of its copyright infringement claims against Google (and others) in the Federal District Court for the Central District of California.
As blogged about here previously, the saga began in 2001, when Perfect10 sought to stop Google from including thumbnail versions of Perfect10 photographs in Google’s image search results. After Perfect10’s… More
In the early 1990’s, when I was applying to film schools, I recall that different schools had different policies regarding the copyright ownership of student work. Copyright in any work, of course, is owned by the author in the first instance. However, many colleges and universities have policies (and in some cases contracts) that purport to alter that basic ownership principle, by requiring that students assign some or all of their rights to the school. For example, USC film school’s policy provides that the school owns the copyright in any… More
When patent prosecutors file applications with the United States Patent and Trademark Office (PTO), they are required by law to include “all information material to patentability,” which typically includes copies of scientific articles that may disclose relevant prior art. But are they required to get the copyright holder’s permission before submitting these articles? If they don’t, is it copyright infringement?
Second Circuit Reverses Convictions in Data-Theft Prosecution and Narrowly Interprets Federal Criminal Statutes with Important Intellectual Property Implications
On our sister blog, Security, Privacy and the Law, our colleague Daniel Marx reports on a recent Second Circuit case addressing the limits of criminal liability for the theft of intellectual property. It turns out that criminal liability can turn on some rather technical details – such as whether the allegedly stolen source code was copied to a flash drive or disk actually owned by the employer. Marx notes:
If Aleynikov had copied data onto a Goldman disc, he would have violated the NSPA, but instead he uploaded it to a… More
The Second Circuit has ruled that the summary judgment granted last year in favor of YouTube in a copyright suit brought by Viacom and other content owners was premature. The District Court had found that YouTube was protected by one of the Digital Millennium Copyright Act’s (“DMCA”) safe harbor provisions, namely, 17 U.S.C. § 512(c), which shields online service providers from liability for infringing content posted by users. Although it agreed with some of the District Court’s central… More
The Dark Side of Copyright Enforcement: Magistrate Judge Recommends that Suit against Copyright Owner and its Counsel Be Allowed to Proceed
Boston seems to be the venue for action at the far extremes in copyright enforcement. On the one hand, as discussed in earlier posts, a local jury found an individual, music downloader Joel Tenenbaum, liable for $675,000 in damages (following a much publicized but unsuccessful defense by a Harvard Law School faculty member), and the First Circuit followed with an owner-friendly opinion affirming the jury’s award. At the other extreme, we now have the case of Shirokov v. Dunlap, Grubb & Weaver PLLC, et al., in which a movie file downloader who received a settlement demand letter has turned… More
In a world where Facebook isn’t a social network but The Social Network, it’s difficult for a new social networking site to gain traction. Since there’s already someone out there doing it bigger, the alternative has to be better — at least in some respect. Enter Pinterest, the latest social networking site on the block. If you haven’t heard of it, you will soon. And chances are you’ll be hearing “Pinterest” and “copyright” frequently mentioned in the same breath.
The backstage drama, from the classic 1950 film All About Eve to the new television hit Smash, is an oft employed narrative convention filled with juicy melodrama between show business colleagues set to the backdrop of a spectacular stage production. The copyright infringement lawsuit filed in late 2011 by internationally acclaimed theater and film director Julie Taymor against her former co-collaborators of the hit Broadway musical Spider-Man: Turn Off the Dark proves that the cliché has strong roots in reality. Taymor, famous for her Tony-award winning stage adaption of Disney’s… More
Fruit of the Poisonous Font: Owner Seeks Destruction of Materials Created With Copyrighted Font Software
A small law firm in Brooklyn appears to be developing a cottage industry in helping digital font foundries enforce copyrights in the software programs that create their typefaces. Last month, the Martinez Group PLLC settled, on undisclosed terms, a lawsuit we have been following since last summer, in which P22 Type Foundry claimed that merchandise sold at the Wizarding World of Harry Potter theme park was created through unauthorized use of its “Cezanne” font software.
Update: Oracle Refuses Significant Damages Reduction, Still Dazzled By Potential Billion-Dollar Verdict
When last we looked in on the dispute between Oracle and SAP after SAP’s acquisition of TomorrowNow revealed some unfortunate baggage in the form of extensive copyright infringement, Oracle was flush with a $1.3 billion federal jury award, with SAP vowing to reduce the verdict by any means necessary.
After the initial jury award, SAP argued to Judge Phyllis Hamilton that the verdict should be reduced to between $28 million and $408.7 million, or that in the alternative a new trial should be ordered to assess damages based… More
Along with January’s hot activity in the race for the Republican Presidential nomination, we also saw the emergence of two more stories about the intersection of intellectual property and political ads.
One issue is “déjà vu all over again”: political fair use. We are once again confronted with the question of to what extent the fair use doctrine (http://www.copyright.gov/fls/fl102.html) allows for the use of copyrighted news clips in political advertisements. We’ve previously written about this issue here, here,… More
In the wake of last week’s web protests and media attention around pending anti-piracy legislation, leaders in both houses of Congress announced on Friday that they would indefinitely postpone further consideration of the Stop Online Piracy Act (“SOPA”) and the PROTECT IP Act (“PIPA”). Senate Majority Leader Harry Reid (D-NV) cancelled the cloture “test” vote to reopen debate on PIPA that had been scheduled for tomorrow, January 24, citing “legitimate issues raised by many” while expressing optimism “that we can reach a compromise in the coming weeks.” In response, SOPA sponsor Rep. Lamar Smith (R-TX) announced that… More
The tide may be changing in the controversy over SOPA and PROTECT IP (or “PIPA”), the anti-piracy bills that have been making their way through, respectively, the House and the Senate in recent months. Yesterday’s unprecedented 24-hour global blackout of the English Wikipedia site in protest of the legislation and the new enforcement powers it would create has acted as a lightning rod for public attention. In concert with Wikipedia, Google ran a “censored” version of its logo on… More
Millions of Foreign Works No Longer in the Public Domain: The Supreme Court Upholds 1994 Copyright Law
As the old adage goes, ask a simple question and you’ll get a simple answer. So one might think a question like “how long does a copyright last” would merit an equally concise answer like “the life of the author plus 70 years.” Of course, nothing in life is as simple as it seems and anyone even casually familiar with U.S. copyright law knows that how long a copyright lasts may depend on several factors such as when the work was written, whether it was registered or published in the United States, and whether it was the result of individual… More
Political primary season is upon us and, just like a bad hangover, one particular political speech question just keeps creating headaches. To what extent is the unauthorized use of copyrighted material in political campaign advertisements protected by the fair use doctrine? Can political ads borrow a clip from a presidential debate? From a televised sporting event? How about a photograph created by an opponent’s campaign?
We previously reported on copyright dustups over the “Miracle On Ice” ads by former U.S. Presidential candidate Tim Pawlenty, and attack ads against Canadian… More
Here’s something you probably don’t want fixed in a tangible medium of expression: revenge porn.
Twenty-five-year-old Hunter Moore (pictured, above right) is the creator of the website Is Anyone Up (www.isanyoneup.com). In essence, here’s how revenge porn works: Remember those naked pictures you took of yourself and sent to a very close friend with the explicit instruction or implicit assumption that the images would remain private? Well, just make sure you don’t give your friend cause to become a former friend. If you did, your former… More
As most readers know, the Supreme Court held in the 2006 eBay decision that injunctions were no longer to be the norm in patent cases, and irreparable harm was not to be presumed. Instead, injunctions are within the equitable discretion of the district court, and are to be granted only if the plaintiff has shown entitlement under the traditional multi-factor test.
It’s been clear for some time that the same principles now apply in copyright and trademark cases as well. The First Circuit, for instance, addressed eBay in the context of a trademark cases in the Voice of… More
Back in May, we wrote about MAFIAA Fire, a browser plug-in created by anonymous coders to counteract the government’s efforts to shut down copyright-infringing web sites by seizing the domain names.
We previously posted about Massachusetts District Court Judge Young’s order allowing copyright infringement plaintiff Liberty Media to discover (and thereby potentially reveal to the public!) the identity of 38 “John Doe” downloaders of “Amateur College Men Down on the Farm,” a pornographic film. But perhaps the most far-reaching implication of Judge Young’s opinion was a footnote. Judge Young noted that copyright protection was effectively unavailable anywhere for “obscene” material until the 1970s, and that it wasn’t entirely clear “whether pornography is in fact entitled to protection against copyright infringement” at all in… More
The recent case of Edgenet, Inc. v. Home Depot U.S.A., Inc. (7th Cir., No. 10-1335, 9/2/11) illustrates the principle that a copyright license without restrictions will be broadly construed to encompass all rights. The facts of the case were that Home Depot had contracted in 2004 with Edgenet for Edgenet to develop a classification system (called a “taxonomy”) that was to be used to organize Home Depot’s product database. For example, as the Seventh Circuit Court of Appeals suggested, a particular screwdriver part might be classified under “tools/manual/screwdriver/Phillips/bits/metal”, and that classification would form part of the taxonomy. Under the… More
BitTorrent users now have even more reason to be concerned if they are targeted in “John Doe” lawsuits for copyright infringement. In a recent case, 38 BitTorrent users, known only by their IP addresses and identified as John Does, were sued as a group. Three of the John Does sought to quash the subpoenas issued to their ISPs seeking the names and contact information of the BitTorrent users. A Boston federal court judge denied the motions, ruling that BitTorrent users do not have a reasonable expectation of privacy in the contact information that they give to their ISPs. The… More
So, I hear you are selling Halloween costumes, the designs for which you copied from another manufacturer. Well, gather around the fire, because I have a very scary story to tell you.
Chosun International was the manufacturer of impossibly cute animal costumes for children, featuring plush sculpted hoods and sleeves shaped like various animals’ heads and paws. In 2002, Chosun sued one of its competitors for copying these designs. In a very eerie opinion, the District Court dismissed the complaint for failure to state a claim, holding… More
On October 3, 2011 the U.S. Supreme Court declined a request to grant certiorari in Vernor v. Autodesk. As we reported previously, enterprising vendor Timothy Vernor, who attempted to sell second-hand (but unopened and authentic) copies of Autodesk’s AutoCAD software on eBay, was rebuffed by the Ninth Circuit, which determined that Autodesk’s customers were licensees and not owners. Thus the sale of the AutoCAD software to Vernor — which was prohibited by the AutoCAD license — was invalid, and Vernor himself, neither a licensee nor an owner, could not avail himself of the first sale doctrine…. More
Last week, Miami Herald reporter Carol Rosenberg, perhaps best known for her coverage of government activities at Guantanamo Bay, reported that the U.S. government had violated U.S. Copyright law . . . kind of. In an effort to “rebrand” its military tribunals, the Pentagon spent about $500,000 on a new website, http://www.mc.mil/. After all that effort and expense, it was only natural that some well-intended individual put the following notice at the bottom of the home page: “Copyright © 2011 Office of Military Commissions.”
Under U.S. law, a copyright holder possesses the exclusive right to copy and distribute the copyrighted work. However, after the copyright owner sells a copy, the First Sale Doctrine permits the subsequent owner to re-distribute the copy without consent or interference from the copyright holder. This is why, once you buy a book or a CD, you can give it away or resell it with no fear of being sued for copyright infringement. This seems a pretty cut and dry proposition if you stop into your local book or record store (if you are lucky enough to find one these… More
The First Circuit has kept alive a dispute, well-publicized in the Boston area and elsewhere, about what statutory damages can properly be assessed against a graduate student who illegally shared files of copyrighted music via file-sharing program Kazaa. See here for an overview of the case, as well as links to various related content and documents.
Since the defendant, Joel Tenenbaum, eventually admitted his liability for copyright infringement, damages issues predominated in the district court and on appeal. Mr. Tenenbaum was sued for improperly sharing 31 copyrighted songs (although he shared thousands more), which placed the statutory damages between… More
No, monkeys can’t own copyrights. But please read on. This relatively simple answer to a question nobody is seriously asking hasn’t prevented the emergence of a strange copyright controversy over a series of monkey-taken photographs, including the self-portrait on the left.
Wildlife photographer David Slater was visiting a North Sulawesi national park in Indonesia when he left his camera unattended. A crested black macaque grabbed the camera and managed to snap some stunning images. The photographs ended up in the July 5 edition of the UK’s Daily Mail, some of… More
Several months ago, we highlighted the Canadian Conservative party’s use of the Canadian Broadcasting Company’s copyrighted footage in political attack ads. (Not Quite Fair Use: Canada’s Fair Dealing Exception to Copyright Infringement in the Political Spotlight). In defense of its ads, the Conservative party argued by analogy that such use of copyrighted material for political purposes would be “fair use” in the United States.
ABC Sports has a chance to test that theory.
Just in time for the release of the final installment in the Harry Potter film franchise, a related branch of the Harry Potter empire finds itself involved in a curious copyright dispute. This is not another case of an obscure author claiming that J.K. Rowling stole her billion-dollar story from an earlier work. Instead, an independent font company has asserted, in a lawsuit filed on July 5 in the Eastern District of New York, that merchandise sold at Universal Studios’ “The Wizarding World of Harry Potter” theme park in Orlando makes unauthorized use of one of its typefaces.
In May 2011, a bench trial commenced in the Federal District Court for Northern Georgia which may change the way college libraries everywhere operate. In 2008, Academic publishers Cambridge University Press, Oxford University Press, and Sage Publications filed a complaint against Georgia State University, alleging copyright infringement on a grand scale by the school’s library system. No doubt with an eye towards public relations, the plaintiffs are not looking for money, but for a systemic change to the University’s copyright policy. Understood… More
The ongoing conflict between content-industry groups and “open Internet” proponents has been heating up recently in a battle over Internet sites that allegedly allow users to access pirated or counterfeit content. Since last summer, the Department of Homeland Security’s Immigrations and Customs Enforcement (ICE) division has been running a campaign it calls “Operation: In Our Sites” to seize domain names used in alleged criminal copyright infringement activities. Following seizure, visitors to affected web sites, such as www.watchnewfilms.com, see a notice stating that “This domain name has been… More
Too Little Too Late: Court Rejects Confirmatory Copyright Assignment Due To Lack Of Evidence Of Prior Transfer
A recent case in the Third Circuit, Barefoot Architect Inc. v. Bunge, Case Nos. 09-4495, 09-4600, (3d. Cir. January 14, 2011) has provided some interesting practice pointers with respect to copyright transfers. The case involved a dispute between an architect (Michael Milne of Barefoot Architects) and his clients Sarah Bunge and Thomas Friedberg. Milne had designed a house for Bunge and Friedberg, but the parties fell out before the house was completed, and Bunge and Friedberg ultimately hired a different architect to finish the project. Milne, through Barefoot Architects, sued Bunge and Friedberg for copyright infringement, amongst other wrongs…. More
This week a federal court put the brakes on Google’s plans to create a universal digital library by rejecting the company’s proposed settlement of class-action lawsuits filed by authors and publishers challenging the Google Books project. On March 22, 2011, more than a year after conducting a fairness hearing on the parties’ amended settlement agreement, judge Denny Chin rejected the plan that would have permitted Google, in exchange for royalty payments, to distribute copies of the millions of books it has scanned from the collections of some… More
In the latest episode of the hit Fox show Glee, entitled “Original Song,” the high school glee club, “New Directions,” prepares to perform the track “Sing” by My Chemical Romance in a regional competition. Out of nowhere, My Chemical Romance sends a cease and desist letter to the kids forbidding them from using the song. Although it later turns out that the letter was forged by the evil Sue Sylvester, the gang is forced to abandon their plans and write an original song to perform at the last minute. They work with diligence and passion, and miraculously and… More
Not Quite Fair Use: Canada’s Fair Dealing Exception to Copyright Infringement in the Political Spotlight
When the Canadian Conservative Party released a raft of attack ads last month against Liberal Party leader Michael Ignatieff, it was the Canadian Broadcasting Corporation (“CBC”) that led the counterattack. Why? In constructing their ads, the Conservative Party used without permission CBC’s copyrighted file footage of Ignatieff. The CBC claimed that the use of its footage in partisan ads undermined its reputation as an independent news source, and has accused the Conservatives of copyright infringement. The Conservatives responded that the ads were “free speech.” Besides,… More
Massachusetts Supreme Judicial Court Concludes Plaintiffs Can’t Use State Law Claims to Circumvent Copyright Law
The Massachusetts Supreme Judicial Court recently reaffirmed the rule that state law claims based on copyright are preempted by the preemption provisions of the Copyright Act, 17 U.S.C. § 301. In Curtis v. Herb Chambers I-95, Inc., 458 Mass. 674 (2011), Curtis, an individual who had produced advertising materials for car dealerships, filed a complaint against car dealerships and a printing and distribution business to protect his advertisement design. He had never registered a copyright for his design. Curtis based his claims on copying of trade dress under common law, a breach of the implied covenant of good faith… More
While brand owners have taken issue with the vast trademark implications of ICANN’s proposed (and at this point, likely) expansion of the domain name space to add countless new generic top-level domains (gTLDs) to the Internet, one organization has raised the specter of increased copyright infringement pursuant to domain name expansion.
The Recording Industry Association of America (RIAA), the trade organization representing the music labels and artists well known for its aggressive tactics designed to counter music piracy, has expressed concern over ICANN’s gTLD program, and specifically possible "music themed" gTLDs. In a January 5, 2011 letter… More
In what must be one of the nation’s longest-lived Internet copyright wars, Perfect10, Inc. recently opened up a new front, asserting that online publication of its Digital Millenium Copyright Act takedown notices is a copyright violation.
Perfect10, founded by former mathematics professor and professional poker player Norman Zada, is a softporn fee-based Internet site and print magazine that publishes pictures of women in various states of undress. Although Perfect10 tries to reserve these pictures exclusively for its customers, the images have a way of getting around, and are often republished online without authorization.
Most of you serious music fans have at least one. At some point, you were diving through the dollar bins of a used record store and came across an unfamiliar album by your favorite artist, bearing a label such as “Promotional Use Only – Not for Sale.” These Promotional CDs are routinely mailed in advance of their commercial release by record companies to a select group of music critics, disc jockeys and other music industry folks. What a find! But then you notice some fine print:
PROMOTIONAL USE ONLY – NOT FOR SALE. THIS CD IS THE PROPERTY OF THE… More
The Ninth Circuit’s liability determination in MDY Industries v. Blizzard, discussed in my prior post, rested not on copyright infringement, but on a violation of the Digital Millenium Copyright Act (DMCA) provisions regarding circumvention of access controls.
As discussed previously, Section 1201(a)(1) prohibits “circumvent[ing] a technological measure that effectively controls access to a work protected under” Title 17. 17 U.S.C. § 1201(a)(1)(A). Both the Fourth Circuit, in MGE UPS Systems, Inc. v. GE Consumer and Industrial, Inc. et al., and the Federal Circuit, in Chamberlin Group Inc. v. Skylink Technologies, Inc., have held that the "DMCA prohibits only… More
In Vernor, the court determined that Vernor’s sale of used copies of AutoCad was… More
‘Copyright Infringement’ costco ‘first sale doctrine’ ‘parallel imports’
Is Your Investment Structurally Sound? $1.3 Billion Copyright Verdict Illustrates the Importance of Due Diligence
Last week, a $1.3 billion verdict was handed down against SAP AG, the German software giant, after a lengthy litigation stemming from the acquisition of a company engaged in questionable — and ultimately infringing — business practices. The enormous verdict underscores the importance of pre-acquisition due diligence.
A savvy house hunter conducts a thorough inspection to identify potentially costly defects such as a leaky roof or a termite infestation. Likewise, a company seeking to acquire another company takes similar… More
The stage has been set for an issue important to brand-owners and importers alike, the importation of parallel imports or “gray market” goods, to be addressed by the Supreme Court early in the high court’s October 2010 Term. Oral argument for Costco Wholesale Corporation v. Omega, S.A., No. 08-1423 has been scheduled for Monday, November 8, 2010.
Case Summary: Omega authorized the foreign manufacture and sale of watches bearing a symbol protected by a U.S. copyright. The watches were subsequently imported into the United States without Omega’s authorization and Costco distributed them for sale. Omega then filed suit for unauthorized… More
Autodesk owns your software if you (think you) own a copy of AutoCAD, that is. In a reversal of fortune for enterprising eBay seller Timothy Vernor, the U.S. Court of Appeals for the Ninth Circuit vacated summary judgment of noninfringement, holding that Autodesk’s customers were licensees — not owners — and thus were not entitled to resell their copies under the first sale doctrine. Vernor v. Autodesk, Inc., No. 09-35969 (9th Cir. Sept. 10, 2010) (PDF) Previously discussed here, Vernor, the purchaser of four authentic, used copies of AutoCAD, attempted to sell these copies on eBay. Autodesk objected,… More
The DMCA: Less Protection Than Meets The Eye Against Circumvention Of Technological Measures To Prevent Access To Software
The anti-circumvention provision of the Digital Millennium Copyright Act, 17 U.S.C. § 1201, continues to challenge courts in the context of computer software. Section 1201(a)(1) prohibits “circumvent[ing] a technological measure that effectively controls access to a work protected under” Title 17. 17 U.S.C. § 1201(a)(1)(A). A recent decision of the Fifth Circuit Court of Appeals, relying on a 2004 Federal Circuit decision, holds that in this provision “access” means more than access.
In MGE UPS Systems, Inc. v. GE Consumer and Industrial, Inc. et al., No. 08-10521, 2010 WL 2820006 (5th Cir. July 20, 2010) (PDF), the… More
In a bid to win the hearts and minds of voters, lately political candidates have touted, among other things, their musical predilections. In at least two recent cases, candidates have sanctioned the alteration of the lyrics, but not the tune, of some of their favorite music to shore up political support. The musicians who own the copyrights in those songs weren’t exactly thrilled.
All They Want To Do Is Campaign
In April 2009, various musicians, including Don Henley, sued Charles DeVore, who unsuccessfully sought the Republican nomination for a U.S. Senate seat currently held by Senator Barbara Boxer, for, among… More
In the past few years, the Apple iPhone and its "smartphone" brethren have seen widespread adoption throughout the United States. Combining the features of computers and traditional mobile phones, along with additional features like movement detection, GPS capabilities, and over-the-air videoconferencing, smartphones have, for many people, become indispensible tools for both work and pleasure.
Sometimes, however, users find the native functionality of certain smartphones to be limited. Some smartphones incorporate operating systems that restrict or eliminate features otherwise built in to the hardware, provide limited software functionality, or restrict the ability of the end user to use the phone… More
Can You Be A Little More Specific? General Knowledge of Copyright Infringement Not Sufficient to Forfeit DMCA Safe Harbor Protection: Viacom International, Inc. v. YouTube, Inc.
Almost since the founding of YouTube in 2005, the on-line video service has been labeled by commentators as a top virtual destination for copyright-infringing material. According to a lawsuit brought by Viacom International, Inc., YouTube was aware of this alleged infringement as a general matter, and through advertising revenues profited handsomely from it. Nevertheless, a federal judge has held that YouTube’s general knowledge alone, without information about specific instances of infringement, was not enough to forfeit the protection of the Digital Millennium Copyright Act (“DMCA”).
A pending Supreme Court case may affect prevention of parallel imports, which is an important concern for trademark owners who wish to maintain their right to control the sale of goods developed for use in a particular market. Parallel imports, also known as “gray market” goods, are goods bearing a trademark protected in the United States that have been purchased through legal channels abroad and imported for unauthorized sale into the United States. These goods often can be sold by the unauthorized importer for a profit and, at times, a lower price than the trademarked goods authorized for sale in the United States… More
Many of us have, at one point or another, found ourselves overwhelmed by the amount of stuff lying around our homes, and have taken the opportunity to clean up (and make a bit of spending money in the process) by selling used books, CDs, DVDs, or VHS tapes at a yard sale, or at a pawn shop, or on an Internet site like Ebay or Craigslist. Even though these items are typically subject to copyright protection, we are allowed to sell them — or otherwise dispose of them as we see fit — because of the “first sale doctrine,” a… More
A recent decision from the Southern District of New York should be of interest to anyone responsible for registering the copyright in compilations or collective works. In Muench Photography, Inc. v. Houghton Mifflin, 09-CV-2669 (S.D.N.Y. May 4, 2010) (PDF), the court ruled that the plaintiff, which owned the copyright in certain photographs that defendant Houghton Mifflin had licensed through a stock photo company called Corbis, did not hold valid registrations and therefore had not fulfilled the 17 U.S.C. § 411 prerequisite to suit. Plaintiff MPI claimed that Corbis had registered the copyright in its photographs when it had… More
This week, the Computer & Communications Industry Association (CCIA) released the report Fair Use in the U.S. Economy (.pdf) concluding that industries that rely on the “fair use” exception in copyright law contributed $4.7 trillion or 16% of the U.S. gross domestic product in 2007, growing faster than the other sectors of the U.S. economy. The report credits the fair use of copyrighted works for the success of search engines, software developers and a number of other “new economy” industries.
A new wrinkle has recently appeared in the legal landscape surrounding Google’s Google Books project. While the parties to the authors’ and publishers’ lawsuit await a court decision on approval of their proposed settlement, a different group of plaintiffs has filed a new class action lawsuit against Google on behalf of photographers, visual artists, and other copyright owners whose pictorial works appear in the books and periodicals included in the Google Books project.
The named plaintiffs in the new case include the American Society of Media Photographers, the Graphic Artists Guild, the Picture Archive Council of America, the… More
Cleveland area radio personality and early rap artist Orrin Lynn Tolliver, Jr. is on a roll in the Southern District of New York. After finding out in 2005 that a song he recorded in 1983 had been sampled in the multi-platinum hit “My Humps” by the Black Eyed Peas (iTunes sample available here), Tolliver sued his former collaborator who licensed the composition without his permission, and won on liability at the summary judgment stage (originally in March, 2009 – here). The district court judge later allowed the defendant to add a new affirmative defense (acquiescence), but then… More
The content production and delivery world continues to wait with bated breath for a decision as to the legality of the Google Books project. Several years ago, Google announced that it was partnering with major libraries – including, among many others, the Harvard University Library, the New York Public Library, and Oxford University’s Bodleian Library – to scan the full text of books in their collections. Google’s ultimate aim is to make book text searchable online and, where possible, to allow users to access entire books online.
The library project has raised concern among authors and publishers, however, because… More
Last week, lawyers from Microsoft issued a demand under the Digital Millennium Copyright Act (DMCA) seeking the removal of leaked copies of Microsoft’s “Global Criminal Compliance Handbook” that pulled website Cryptome.org from the Internet, at least temporarily. The DMCA provides copyright owners with the ability to request that internet service providers remove infringing materials from websites. Microsoft’s DMCA demand to Cryptome’s service provider, Network Solutions, apparently resulted in removing Cryptome from the Web entirely, until Microsoft attorneys sent an email withdrawing the DMCA takedown demand.
Microsoft made this public statement:
Like all service providers, Microsoft must respond… More