March 8 was, according to questionable sources, National Retro Video Game Day in the US. As one of Foley Hoag’s several resident video game nerds, this reminded me of one of my favorite video-game-related IP disputes.
Category Archives: Copyright
Most of us were thrilled to see the calendar turn to 2021 on January 1, closing the chapter on what was an extremely challenging year around the globe. Now that we are a month into the new year, and the fireworks have faded and the noisemakers are packed away, we take a moment to highlight a few notable developments in the IP world that made a somewhat quieter entrance on the scene when the clock struck midnight.… More
On April 27, the Supreme Court took us on a stroll down memory lane in its decision in Georgia v. Public.Resource.Org, Inc., referring us back to its very first copyright case and revisiting the government edicts doctrine for the first time in more than a century. The Court, applying logic from Wheaton v. Peters, along with Banks v.… More
Benjamin Franklin famously said that “nothing in this world can be said to be certain, except death, taxes, and the entrepreneurial spirit of Americans to turn a crisis into a business opportunity.” That quote may not be entirely accurate, but the U.S. federal trademark register serves as a historical record of this entrepreneurial spirit, from the various applications related to 9/11 in the wake of that tragedy,… More
The Top 5 Most Fashionable Intellectual Property Disputes To Walk This Year’s Runways at New York Fashion Week
New York Fashion Week (NYFW) officially kicks off tomorrow, February 7, 2020, with a week’s worth of captivating runway shows from top designers. The timing, however, could not be worse, since the 92nd Academy Awards is airing on February 9th, dead smack in the middle of Fashion Week. Due to this scheduling snafu, designer Tom Ford, who styles top actresses walking the red carpet at the Oscars,… More
Reviewing Cases in 2019 to See 20-20 in 2020
Who said there’s no looking back? It is crucial to consider key takeaways from the most important IP cases from 2019 when planning ahead for the new year. Foley Hoag presents a webinar offering guidance on what we learned last year and what to prepare for in the new year.
Our speakers focus on 2019 developments in trademark, copyright,… More
Spooky Stories of Useful Bananas, Judicial Intervention in the Candy Aisle, and the Urge to Run Away and Join the Halloween Circus
It’s the most wonderful time of the year! Whatever the intent of the original song, I find it resonates most for me when cold air is just starting to move in rather than when it’s fully settled, and when yards are merrily bedecked in zombies rather than reindeer.… More
As commerce becomes increasingly electronic and decentralized, manufacturers and brand owners face new challenges in protecting and enforcing their intellectual property rights in the context of online marketplaces. IP owners, courts and the marketplaces themselves are struggling to define fair, effective and efficient approaches to protecting IP rights and consumers without hindering the free flow of online commerce.
Foley Hoag presents a webinar covering recent developments and best practices for companies seeking to protect copyrights, … More
Business is booming for cannabis ventures, but the legal landscape for related intellectual property protection and product advertising is rife with complications that demand special consideration, and companies should be paying attention to these issues out of the gate.
Foley Hoag presents a webinar covering a range of topics related to cannabis IP protection and promotion, including:
- Maximizing trademark rights at the federal and state level
- Leveraging copyright as secondary protection for brands
- Cannabis patent basics and strategies
- Advertising best practices and what not to say FDA regulation of cannabis and cannabis-derived products
We had been following on this blog the heated debates around the proposed EU Copyright Directive. These debates now belong to history since on March 27, 2019, the European parliament adopted the Directive with 348 votes against 274 and 36 abstentions.
The two most controversial provisions are Article 15 (previously 11) and Article 17 (previously 13).
Article 15: Creation of a New IP Right for Publishers of Press Publications
Article 15 addresses the issue of press publications that are circulated on the internet.… More
This decision was rendered on February 12,… More
On March 4, 2019, the United States Supreme Court held that, with certain exceptions, a copyright owner must obtain a copyright registration certificate from the Copyright Office before filing a copyright infringement suit. The unanimous opinion in Fourth Estate Public Benefit Corp. v. Wall-Street.Com, LLC, authored by Justice Ruth Bader Ginsburg, affirmed the Eleventh Circuit and resolved a split among the circuit courts of appeal.… More
If you haven’t heard already, New York Fashion Week is here! As usual, a lineup of awe-inspiring shows is expected to roll out over the next several days, as it does every September and February, highlighting the latest fashion trends of some of world’s most famous designers. One of the big stories surrounding New York Fashion Week this year is the amount of cultural diversity expected to appear on the runway. … More
If you have ever been tasked with considering what types of intellectual property protection were available for a new packaging design, copyright may not be the first thing that came to mind. After all, it is trademark law that is designed to protect the public’s association with a commercial name or logo, and in some cases the distinctive look (or “trade dress”) of a product and/or its packaging.… More
Who said there’s no looking back? It is crucial to consider key takeaways from the most important IP cases from 2018 when planning for 2019. Foley Hoag presents a webinar offering guidance on what we learned this year and what to prepare for in the new year.
Our speakers focus on 2018 developments in copyright, patent and trademark law.
You may think the phrase “million-dollar smile” is just a metaphor, but a smile could cost you millions of dollars in litigation damages if you aren’t careful, at least according to Nirvana LLC, the legal entity that owns the intellectual property rights relating to the 90’s rock band Nirvana.
Nirvana’s Smiley Face Logo
If you thought the image of a yellow smiley face was too common to be owned by anyone,… More
At the end of 2014 and beginning of 2015, the Pompidou Museum organized a retrospective of the work of Jeff Koons, which attracted thousands of visitors but gave rise to several lawsuits.
“Let’s Get Ready to Register!” Or not. Supreme Court Entertains Oral Argument Rumble on Copyright Circuit Split
Is copyright registration required before you can bring a copyright infringement suit? Everyone agrees that the answer is yes. But not everyone agrees on the definition of “registration.” That’s the question that will be under consideration by the Supreme Court at oral argument on January 8, 2019, in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC.
Registration is not required for valid copyright ownership,… More
Yes, We Have No More Extensions! Copyrighted Works Age Into Public Domain for First Time in Twenty Years
While scholars and pundits are busy listing the most important copyright rulings of 2018, a development that arguably beats them all is about to occur just as 2018 turns into 2019. On January 1, 2019, copyrighted works will start to age into the public domain for the first time in twenty years, beginning with works published in 1923.
Why did we go twenty years without anything aging into the public domain?… More
A copyright owner’s exclusive rights, codified at Section 106 of the Copyright Act, include the right to control both the reproduction and the distribution of a work. The exclusive distribution right is tempered by the “first sale doctrine,” codified at Section 109 which provides that, once you lawfully obtain a copy of something, you usually can resell the physical object (e.g., a used book) containing that copy.… More
The use of a bird’s furcula, or “wishbone,” for divination purposes dates back to the ancient Etruscans, and the ritual of two people pulling on the furcula to determine who would get married first has its origins in late medieval Europe. From there, some version of the custom likely was brought to America by the pilgrims, who would have referred to the bone as a “merrythought.” Given all that history,… More
Co-Hosted by Foley Hoag LLP and ACC – Northeast
Social media platforms present countless opportunities for companies looking to connect to consumers and clients in real time. But, like so much else in our connected age, these opportunities come with a host of risks ranging from minor public relations blips to unpleasant regulatory run-ins with government agencies, and from DMCA takedowns to right of publicity lawsuits.
Foley Hoag,… More
The first edition of Frankenstein, or The Modern Prometheus, was published in 1818, two hundred years ago. Originally offered to the public as an anonymous work, Frankenstein was both the apogee of the gothic horror novel and the birth of the science fiction genre.
We previously commented in early July on the proposed European Union (“EU”) Copyright Directive. At that time, the proposed Directive had just endured a setback before the Parliament, which decided to revise it.
After the summer break, on September 12, 2018, the EU Parliament finally adopted its “revised negotiating position.” The Parliament announced in its press release that it had added to the text “safeguards to protect small firms and freedom of expression”.… More
In theory, a corporate logo should stand just as good a chance at being eligible for copyright registration and protection as any other kind of visual art. Section 913.1 of the Compendium of U.S. Copyright Office Practices expressly provides that a logo may be registered if it satisfies “the requisite qualifications for copyright,” that is, if it “embodies some creative authorship in its delineation and form.”
But in practice,… More
The National Geographic Society is an interesting organization. Since 1888, it has published the iconic magazine National Geographic, recognizable to many by the trademark yellow border on the cover page. And yes, that border is literally a registered trademark.
Like any other magazine publisher, “Nat Geo” (as they like to call themselves these days) encounters a wide range of IP issues. … More
‘Tis the season of summer stock, music festivals, and outdoor performances. For my own part, I took in Jacob’s Pillow in the Berkshires, one of the country’s preeminent dance festivals. While an amazing piece of dance can make everyone want to join in, there are some dances no one should mimic without authorization, at least not as part of a commercial “public performance,” as that term is defined by 17 U.S.C.… More
Picture yourself at dusk along the river, walking through a massive outdoor art installation featuring tens of thousands of individually-placed spheres of light on short stalks, reminiscent of blooming flowers. Ok, now stop and answer this: what kind of intellectual property would you use to protect this installation? If you answered “trade dress,” you get a frowny-face sticker, at least according to the Eighth Circuit’s recent opinion in Munro v.… More
The “Starball” logo of the Union des Associations Européennes de Football (“UEFA”) consists of a round ball made up of black stars, with white polygons in the negative space between the stars. In 2016, UEFA filed an application with the United States Copyright Office to register the Starball as a work of two-dimensional visual art. The Copyright Office was not impressed and, on July 30,… More
If you are having trouble obtaining a federal trademark registration for a product’s packaging, some lawyer has probably mentioned to you that copyright protection is a potential alternative or supplement. This is good advice – to a point. Copyright registration is relatively cheap, nobody will pester you about secondary meaning or use in interstate commerce, and you don’t need consumer confusion evidence to prove infringement. However, when it comes to creative expression,… More
European harmonization in the field of copyright has always been challenging because the balance between authors’ rights and public interest is struck fairly differently from one country to another. The challenges of “the digital age” and how copyright should evolve considering the new possibilities offered by the internet only adds fuel to this fire.
The new Copyright Directive in the Digital Single Market is an attempt from the European Union to better allocate the revenues derived from the internet by creating new obligations for internet platforms to prevent copyright infringements and requiring them to pay for linking to articles or using snippets.… More
No, Virginia, You Can’t Just Copy Stuff You Find On the Internet, Even if You Don’t Notice the Copyright Notice
This is an exception. A recent decision by the Eastern District of Virginia may cause some individuals and non-profits to believe that it’s permissible to copy and use “publicly available” photos from the internet, as long as they don’t know whether or not the photos are protected by copyright.… More
Are automobile interior designs eligible for copyright protection? Last month, we wrote about the Copyright Office Review Board’s (CORB’s) allowance of the registration of a three-dimensional pattern for an automotive floor mat. Does this mean that every little feature of your car is now eligible for copyright protection?
What does the generalist in-house counsel need to know about protecting designs? Designs occupy a unique space in intellectual property. In the U.S., designs are protected under the patent laws, while in Europe, designs are typically protected under industrial design law. Overlapping protection for designs also exists in the U.S. and Europe through copyright law and through trademark law as it applies to trade dress.
Foley Hoag LLP presents a webinar offering guidance for in-house counsel regarding the basics of design protection from U.S.… More
By now, our readers are likely familiar with the General Data Protection Regulation (“GDPR”), the sweeping, European Union-wide legal and regulatory regime that provides enhanced protections for personal data. The GDPR, which goes in effect on May 25, 2018, is expected to reshape the digital data landscape in the EU and beyond. My colleague Catherine Muyl (from our Paris office) provided a helpful GDPR overview back in January,… More
Star Athletica and the Expansion of Useful Article Protection: Copyright Office Permits Registration of Automotive Floor Liner
The Supreme Court’s decision in Star Athletica v. Varsity Brands established a new and simplified test for determining whether useful articles can obtain copyright protection. Many have wondered, in the year since it was decided, about the practical effect of the ruling. Are there really that many items that would not have merited protection before Star Athletica, but that will get it now? … More
What does the generalist in-house counsel need to know about copyright? While patents and trademarks often receive the lion’s share of an organization’s intellectual property focus, copyrights comprise a critical third prong to a healthy overarching IP strategy – even for companies whose products and services involve little or no content creation.
It’s been a while since we felt compelled to revisit the topic of political fair use, that is, the extent to which the use of copyrighted works in political campaigns qualifies as a fair use pursuant to 17 U.S.C. § 107. Back in 2014, we discussed the Northern District of California’s holding that the use of a candidate’s photograph by her political enemies was fair use.… More
Earlier this week, the Federal Circuit Court of Appeals released its blockbuster decision in Oracle America, Inc. v. Google LLC, which held that Google’s unauthorized use of certain aspects of Oracle’s Java software was not fair use. In the past few days and in the coming weeks, nearly every lawyer who has ever had occasion to turn to Title 17 is going be writing,… More
Here’s a tip for copyright owners. Your infringement complaint is not a good place to make political distinctions between the purpose of your work and that of the defendant’s. See that buzz saw you are walking into? It’s called “fair use.”
It’s been a few years since we first wrote about the 5Pointz dispute, where graffiti artists first tried to prevent the destruction of their works by the owner of the spray-painted buildings, and then sought money damages for their destruction. Gerald Wolkoff, who initially allowed and encouraged the creation of the artwork on his buildings, is widely portrayed as the “bad guy” in this story. … More
On past Presidents’ Days, we have discussed the critical roles in the development of U.S. copyright law played by Abraham Lincoln (who extended copyright protection to photographs) and George Washington (whose correspondence was at the center of the dispute that gave rise to the fair use doctrine). This year, it’s Gerald Ford’s turn to ascend to our Mount Rushmore of Copyright.… More
Congratulations to Trademark and Copyright Law Blog co-editor Natasha Reed and author Josh Jarvis on their appointment as Co-Chairs of Foley Hoag’s Trademark, Copyright & Unfair Competition practice group. To celebrate their ascension, we asked them to interview each other about their practices, their histories, and their thoughts on trademark and copyright law.
* * * *
Natasha: First question!… More
New York Fashion Week (NYFW) 2018 kicks off on Thursday, February 8 through Friday, February 16, with a full schedule of exciting and exhilarating runway shows. This year’s designers include many of the usual faces, like Tom Ford, Ralph Lauren, and Jason Wu, to name a few. As usual, there is some controversy concerning designers that are notably missing from this year’s schedule, like Georgina Chapman’s label Marchesa.… More
In my never-ending quest to write articles that my children would read, I bring you the case of Grumpy Cat.
The guardians of Grumpy Cat (whose actual name is Tardar Sauce), through its company, Grumpy Cat Limited, developed a cottage business in commercially exploiting the likeness of Grumpy Cat for use on, among other things, T-shirts, coffee mugs, books and calendars. … More
If you are a lawyer, there is a serious danger that someone at the Super Bowl party you attend is going to want to talk about an NFL-related legal issue. Did Cowboys owner Jerry Jones really have standing to challenge Commissioner Roger Goodell’s salary package? What is the status of Colin Kaepernick’s collusion lawsuit?… More
In the European Union (“EU”), “everyone has the right to the protection of personal data concerning him or her” under the Charter of Fundamental Rights. Intellectual property is also protected as a fundamental right under the Charter, as is freedom of speech. These rights can sometimes conflict. In two previous posts on cases about linking to Playboy pictures and the inspiration for Jeff Koons’ sculptures,… More
January 15 is Martin Luther King, Jr. Day, marking what would have been the 89th birthday of the great civil rights leader and Baptist minister. Although copyright is not (and should not be) the first thing that comes to mind when we think of Dr. King, the impact of his legacy on copyright law ought to be somewhere on the list. Indeed, Dr. King’s name has popped up as the litigant,… More
As we head toward the year’s end, it’s the perfect time to consider key takeaways from the most important IP cases from 2017. In this webinar David Kluft, Peter Sullivan, and Janine Ladislaw discuss their take on the trademark,… More
Are you sick and tired of the Christmas spirit? Apparently, you are not alone. Meet Matthew Lombardo, the author of a comedic play called Who’s Holiday! Billed as “the show Dr. Seuss doesn’t want you to see,” Who’s Holiday! is a one-woman play running Off-Broadway until December 31 featuring Cindy-Lou Who as a down-and-out, hard-drinking, Who-Hash-smoking, 45-year old woman recovering from her disastrous relationship with the Grinch.… More
With many U.S. companies increasingly eyeing the global marketplace for their products and services, an understanding of U.S. intellectual property protection isn’t enough.
Joshua Jarvis, Catherine Muyl and Marion Cavalier presented a webinar offering guidance for in-house counsel regarding the basics of trademark and design protection in the European Union. Viewers will learn about the opportunities and pitfalls to be on the lookout for when looking to secure,… More
This is a tough time of year if you are an intellectual property lawyer who likes to dress up. Anyone who knows about your job will be unable to resist lame and legally incorrect jokes about your Halloween costume. If you wear a Mohawk wig, they will quip that you are infringing Mr. T’s copyright. If you wield a sword and don a fur coat, they will ask if you had permission to use the “patent” from Game of Thrones.… More
When Judge Richard Allen Posner abruptly retired from the Seventh Circuit Court of Appeals last month, we were so caught off guard that it took a few weeks to get our tribute machine up and running. Why a tribute to Posner on the Trademark and Copyright Law Blog? Well, among the many legal areas profoundly influenced by this prolific jurist and author (the list of areas he did not affect would almost certainly be shorter),… More
Last November, we wrote about the Copyright Office’s decision to ditch its paper registration system for the Digital Millennium Copyright Act (“DMCA”) safe harbor and start a new online system completely from scratch. If you have had other things on your mind since November 2016, we completely understand. However, if you run a website that hosts user content, copyright law will not understand (and you will lose DMCA safe harbor protection) unless you re-register under the new system before the end of December 2017. … More
If you are a television news producer or documentary filmmaker, you have almost certainly faced this issue: You are putting together a story about a past event, and you want to make the point that this past event was once the subject of media coverage. The easiest way to do that is to show some of that media coverage, for example, by including a short clip from the evening news or by panning across a newspaper article headline.… More
If you are going to file a copyright infringement complaint based on a cookbook, beware. Copyrights in cookbooks are considered “thinner” than copyrights in many other types of literary works. There are several reasons for this, including:
Over a decade ago, a lawyer snapped a photograph of the Indianapolis skyline, thus opening the gates to perhaps the most prolific flood of copyright litigation in the history of Indiana. Over the last five years or so, this image has been the basis for dozens of copyright infringement lawsuits against scads of defendants. However, on July 18, 2017, Southern District of Indiana Judge Richard Young cast doubt on whether the plaintiff in all those copyright cases actually ever owned the copyright in the first place.… More
Is it defamatory to falsely accuse someone of infringing intellectual property? Last month, the California Court of Appeal, in FilmOn.com v. DoubleVerify, Inc., affirmed the dismissal of a defamation action in which the defendant was accused of falsely labeling the plaintiff as a copyright infringer.
Does that mean you can just go ahead and call anyone you don’t like a copyright infringer,… More
Registration is not required for valid copyright ownership, but it is required before you can bring a copyright infringement lawsuit. Section 411(a) of the Copyright Act provides that:
No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title. In any case,… More
What In-House Counsel Needs to Know
Product configuration and packaging play an integral part in consumer choice and can often set a particular product apart from its competition on the store shelf. Because companies heavily invest in creating unique product designs and packaging that encourage brand association, business owners should also consider protecting those investments as intellectual property.
Peter Sullivan, Natasha Reed and Jenevieve Maerker presented a webinar offering guidance for in-house counsel regarding the different types of intellectual property that may protect product configurations and packaging in the United States,… More
Jeff Koons is a well-known U.S. sculptor. In 2013, one of his “Balloon Dog” sculptures was purchased for $58.4 million dollars, the highest price ever paid at auction for a work by a living artist. Koons is also famous for having faced several copyright infringement lawsuits in the U.S. and other countries.
On March 9, 2017, the Paris District Court determined that Koon’s one meter-tall porcelain sculpture,… More
On April 29, sometimes called “Duke Ellington Day,” we celebrate the life and artistic accomplishments of the great musician and bandleader, Edward Kennedy (“Duke”) Ellington, who was born in 1899 and passed away in 1974. On his 70th birthday, Ellington got a jam session at the Nixon White House and the Presidential Medal of Freedom. Now, for his 118th birthday,… More
Supreme Court Establishes Test for Copyrightability of Two-Dimensional Designs Incorporated Into Useful Articles in Star Athletica v. Varsity Brands
On March 22, 2017, the Supreme Court established a test for determining whether a design that is incorporated into a useful article is entitled to copyright protection. In its much-awaited opinion in Star Athletica, L.L.C. v. Varsity Brands, Inc., the Supreme Court affirmed the Sixth Circuit and held that the two-dimensional designs appearing on the surface of cheerleading uniforms were entitled to copyright protection because they were sufficiently separable from the utilitarian aspects of the uniform.… More
As all aspects of business inexorably shift toward online, it is not surprising that intellectual property infringement, cybersquatting, and related internet abuses abound. Luckily, there are various procedures available by which aggrieved companies can seek relief short of litigation.
On March 14, 2017, the Consumer Review Fairness Act (CRFA) will officially invalidate a whole bunch of consumer contract clauses that pertain to online reviews.
During the last decade, we started hearing reports about professionals using form contracts to prevent their clients or patients from publishing negative online reviews. Here’s an example of how it worked: You showed up for a dentist appointment and,… More
Last month, the Broadway hit-musical Jersey Boys closed its doors after a spectacular eleven-year run. As someone who hails from the great state of New Jersey and who saw the show twice, I thought it was only appropriate to give Jersey Boys a formal send off. And what better way for a copyright lawyer to honor Jersey Boys than to write about two Jersey Boys-related copyright suits?… More
It’s that time of the year again when New York City becomes the most fashionable place on the planet. While I would argue that Manhattan is always fashionable, New York Fashion Week adds a bit of extra excitement, glamour and coolness to the mix. Fashion Week kicks off this Thursday, February 9 through Thursday, February 16, and as usual, the fashion world is all abuzz over who will be the designer-to-watch. … More
Two years ago, 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 intellectual property lawsuits that sports fans assume IP lawyers know about. This anxiety led me to put together the Sue-per Bowl Shuffle I and Sue-per Bowl Shuffle II: guides to trademark, copyright, patent and other intellectual property disputes concerning the NFL during 2014 and 2015 respectively.… More
One hundred and seventy five years ago, on January 22, 1842, Charles Dickens first set foot in America, specifically in Boston, after a twenty day steamship voyage from Liverpool. Dickens, only a few days shy of his thirtieth birthday, was already an acclaimed author, and was greeted with great adulation. However, the trip was soon ruined by, and was to become best-remembered for, Dickens’ ugly spat with the American press over the issue of international copyright.… More
We are approaching the end of holiday travel season and you have likely been a visitor or had visitors over the past several weeks. If in your travels you’ve had cause to drive along interstate Route 93 just south of Boston, perhaps you noticed a large gas tank out across Dorchester Bay adorned with what seem like enormous paintbrush strokes in purple,… More
The peoples of France and the United States tend to view things very differently — Jerry Lewis, berets and processed cheese food, to name just a few. Law sometimes transcends this divide – for example, French and American intellectual property lawyers can communicate based on shared fundamental understandings about copyright, trademarks and patents, even as our cultural differences persist. In other instances, however, a shared understanding of legal concepts by lawyers of different jurisdictions is much more difficult. … More
Copyright Office Ditches Paper And Announces Electronic Renewal Requirement For DMCA Designated Agents
Since the enactment of the Digital Millennium Copyright Act (“DMCA”) in 1998, online service providers wishing to avail themselves of the DMCA’s safe harbors (from liability for copyright infringement) have been required to register the identity and contact information of a designated agent. Designated agents serve as the point of contact for copyright holders who spot infringement online and need to serve a DMCA takedown notice to get the offending content removed.… More
In the 2014 case of Octane Fitness, LLC v. Icon Health & Fitness, Inc. (and a companion case), the Supreme Court articulated a standard for courts to use when deciding whether to award attorneys’ fees in patent cases. As we reported here, Section 285 of the Patent Act authorizes an award of attorneys’ fees to the prevailing party in “exceptional” cases.… More
If you are a Star Trek fan, the name Axanar has almost certainly crossed your lips or your computer screen recently. Axanar is a film (well, at least a very good trailer aspiring to be a film) set in the Star Trek universe, which tells the back story of Garth of Izar, a character who appeared in one episode of the original Star Trek series.… More
As I turn 50 years old this week, I can’t help but think of the famous Happy Birthday song and the class action that resulted in its entering the public domain earlier this year. The class action plaintiffs in that case filed a declaratory judgment action in the Central District of California against two music companies that had been enforcing the copyright in Happy Birthday and requiring the payment of royalties in some circumstances where it had been used commercially,… More
October 9 marks the 100th anniversary of Louis Brandeis’ first session as a justice of the Supreme Court of the United States (October 9, 1916 was the second Monday in October – in 1917, the Court began meeting on the first Monday). This occasion is worthy of remembrance not only because of the historical importance of the man himself, but also because Brandeis was the first Jewish jurist (or non-Christian of any creed) to ascend to the high court,… More
This summer, the competition for popcorn popping mobile apps heated up as the creators of “Perfect Popcorn” and “iMunchies” battled over copyright infringement claims. On July 18, 2016, a judge in the Northern District of California denied a motion to dismiss the claims, allowing the question of whether or not these apps offer substantially similar virtual depictions of popcorn to go forward.
On September 8, 2016, the European Court of Justice rendered a controversial decision in GS Media v. Sanoma Media, which has been acclaimed by copyright holders and heavily criticized by internet companies.
The Dutch version of Playboy magazine, published by Sanoma, was about to publish photographs of a Dutch TV celebrity, Britt Dekker, when it learned that unauthorized copies of the images were already available on an Australian website.… More
Just in time for the Season 3 premiere, let’s take a look back at Empire’s year in IP litigation.
Like the fictional Lyon family, which is constantly beset by threats from Feds, old criminal connections, and music business competitors, their show Empire finds itself a regular target for infringement claims. As with any successful show (or family), many people want to claim credit and their own slice of a quite lucrative pie. … More
As a fan of modern art, I am looking forward to the dinner reception at next week’s Annual Meeting of the Intellectual Property Owners Association (IPO), which will be held at New York’s Museum of Modern Art. As a member of IPO’s Copyright Committee, in anticipation of the dinner I have been musing about a fascinating and complicated question: Can I take snapshots of the art while visiting the MoMA? … More
Labor Day is the wrong time to think about copyright law, especially in 2016, because this year marks the twenty fifth anniversary of the Supreme Court’s decision in Feist Publications v. Rural Telephone Service, 499 U.S. 340 (1991). That’s the case that took the “labor” out of copyright jurisprudence by ending the “sweat of the brow” doctrine.
Why was “labor” a factor in the first place? … More
Trademarks, the core legal protection for the names of companies and their products and services, are powerful and potentially timeless intellectual property rights, but are also frequently misunderstood by attorneys and laypersons alike. In-house attorneys in particular are likely to encounter trademark issues on a day-to-day basis,… More
Trademark and Copyright Law Blog author Catherine Muyl, alongside fellow Foley Hoag attorneys Christina G. Hioureas and Mélida N. Hodgson, have released a new publication discussing the potential legal implications arising from Brexit, including the impact on patents, trademarks and copyrights. You can access a free copy here.
Other Brexit-related posts appearing on this blog include:
In BWP Media USA v. Gossip Cop Media, a case sure to bring cheer to paparazzi and tabloid publishers everywhere, a judge in the Southern District of New York has found after a bench trial that a gossip website willfully infringed copyrights in photos showing celebrities Mila Kunis, Ashton Kutcher, Robert Pattinson, and Liberty Ross.
The plaintiff in the case,… More
It has been about a year since we published Harry Potter Lawsuits and Where to Find Them, my attempt at a comprehensive review of Harry Potter-related litigation. Why update the article now? Two reasons. First: The long-awaited book version of Harry Potter and the Cursed Child hits the shelves on July 31, 2016.… More
This year marks the fiftieth anniversary of the premiere of the original series of Star Trek, which first aired on NBC in September 1966. On July 22, this milestone will be marked in earnest when Paramount Pictures releases the new film, Star Trek Beyond (which sadly includes the final Chekovian performance by the recently-departed Anton Yelchin).… More
Bastille Day is a French national holiday that commemorates the storming of the Bastille on July 14, 1789, an important episode in the French Revolution. Each year, Paris celebrates the day with an elaborate military parade down the Champs Elysées. Large and small fire departments across France hold balls with music, wine and dancing; and of course fireworks are set off from the Eiffel Tower.… More
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. … More
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,… 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. … 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.
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 &… 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. … 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.
April 23,… More
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;… 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,… More
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.… 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.… 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)? … 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,… 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,… More
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?… 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,… 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.
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,… 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,… 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,… 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. … 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,… 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). … 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,… 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,… 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.… 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,… 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.… 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.… More
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.… 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.
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.… More
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,… 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.… 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.… 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,… 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,… 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.… 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.… More
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,… 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 industry,… 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.… More
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 open to all persons,… 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,… 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),… 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 —… 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.
Many five-year olds these days have a different favorite t-shirt,… More
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).… 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,… 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,… 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,… 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.… 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.… 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.… 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.… 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.… 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,… 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.… More
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,… 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;… 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,… 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,… 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,… 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,… More
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,… 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,… 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,… 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,… 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,… 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.… 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.… More
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.… 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 –… 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,… More
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?”
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.… 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.… 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.
So CrossFit did what anyone would do in this day and age.… More
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,… More
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
When Washington died in 1799,… More
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.… 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.… 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. … 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,… 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,… More
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,… 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. … 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.… More
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,… 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.… 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.
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;… 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,… 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). … 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.… 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,… 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,… 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
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,… 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. … 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,… 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,… 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,… 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. … 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. … 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.… 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,… 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,… 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,… 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,… 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. … 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. … 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,… 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,… 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.… 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. … 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 whether she failed to order the appropriate injunctive relief. … 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,… 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.… 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.… 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.
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. More
On June 25,…
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.… 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,… 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.
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.
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.… 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.… 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.… 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,… 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,… More
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.… 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.… More
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.
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.… 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,… 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.… 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,… 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.… 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?… 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.… 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,… 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.… 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,… 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.… 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.… 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,… More
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.… 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,… 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.… 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.
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.… 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.… 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,… 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,… 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,… 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,… 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.… 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,… 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.… More
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.… 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.
‘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.… 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.… 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,… 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”… 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,… 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.… 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,… More
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. … 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,… 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,… 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,… More
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.… 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,… 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,… 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,… More