• IP BLAWG

    Lucky Shot

    Beverly A. Berneman
    6/23/20

    Alex Cruz was on his way to visit his girlfriend in the Tribeca neighborhood of New York City. He heard a commotion, took out his iPhone and took a snap shot. He thought he was just taking a photo of the police subduing a crazy person. What he really caught was a picture of law enforcement taking down a suspected terrorist. Alex shared the photo with a friend who then posted the photo on Instagram.

    Cox Media, Inc. published the photo without Alex’s permission. Alex sued Cox Media for copyright infringement.

    Cox Media came up with some defenses.

    The first defense was that the photo wasn’t creative enough to be protected by copyright. Cox Media argued that Alex didn’t make any creative choices when he took the photo. The court rejected this argument. Copyright law has long recognized rights based on a bare minimum of creativity. A photograph may be original in three respects: rendition, timing, and creation of the subject. This means that almost any photograph may claim the necessary originality to support a copyright. Alex’s photo met these criteria.

    Cox Media next claimed that its publication of the photo was fair use. The court rejected the argument using four-factor test in the Copyright Act which are: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market or value of the copyrighted work. The court didn’t have to go further than the first factor. The heart of the first factor is whether the use is “transformative”. Transformative use alters the meaning or message of the first work. In other words, does the potential infringer’s use add something new with a different purpose or nature of the work? Cox Media didn’t do anything to transform Alex’s photo. It just republished it without commentary. So the court held that Cox’s use was not transformative. The court felt that buying Cox Media’s fair use defense is “antithetical to the purposes of copyright protection to allow media companies to steal personal images and benefit from the fair use defense by simply inserting the photo in an article which only recites factual information—much of which can be gleaned from the photograph itself.”

    Cox Media’s last defense was the First Amendment. The court rejected this too holding if fair use exists then First Amendment rights are protected too.

    WHY YOU SHOULD KNOW THIS. This case has two takeaways. First, the amount of creativity needed for copyright protection is often misunderstood. All that is needed is a bare minimum of creativity. It doesn’t have to be novel. It doesn’t have to be on the Annie Leibowitz level of artistry. And it isn’t measured by “sweat of the brow”. Alex didn’t have to work hard to take his photo. But he got copyright protection anyway. Second, fair use is not a catch all even for media companies. Reporting on an incident in the news isn’t a blank check to use some else’s protectable content.

  • IP BLAWG

    Star Struck is Struck

    Beverly A. Berneman
    5/26/20

    Kfir Moyal is a pop artist who has created commissioned pieces for celebrities like the Kardashians, Paris Hilton, Gloria Estefan, Flo Rida and Lil’ Kim. His signature style is to take a photograph and add a glittery sheen to it.

    Douglas Kirkland is a Hollywood photographer with a long career who has photographed celebrities like Marilyn Monroe, Elizabeth Taylor and Marlene Dietrich.

    In 2017, Kirkland sued Moyal for copyright infringement. Kirkland alleged that Moyal used some of his photographs, including one of Bridget Bardot. Moyal gave the photograph his classic treatment and titled his creation “Star Struck” (See picture). Moyal didn’t have a license from Kirkland to create the work. As the litigation went on, Moyal’s counsel withdrew from the case. Moyal didn’t appear after that and he didn’t retain substitute counsel. A default judgment was entered against him for $204,787.00 in damages along with a permanent injunction.

    Kirkland discovered that Moyal was going to open an exhibit in a gallery in the Beverly Hills Sofitel hotel. The posters for the exhibit on Instagram and Twitter appeared to feature Star Struck. Since a permanent injunction against using Moyal's version of the photo was still in place, Kirkland went to court to enforce the permanent injunction.

    Moyal says that he had no idea an injunction was entered. But that’s not going to help him.

    WHY YOU SHOULD KNOW THIS. Kirkland’s original photograph was copyrighted in the 1970s. Moyal’s Star Struck was a derivative work of Kirkland’s original photograph. The ability to create derivative works is one of the bundle of rights included in copyright ownership. So, Moyal needed Kirkland’s permission to create the work. Let’s now focus on the injunction. Even though Moyal’s attorney withdraw from the first case, Moyal couldn’t just ignore it. Even if he didn’t know about the injunction, he knew that Kirkland was objecting to his use of the Bridget Bardot photograph. So, the second suit may have more dire consequences if Moyal’s knowledge of the infringement from the prior suit is considered willful infringement. There lies a cautionary tale in two ways. First, don’t use someone else’s content without either seeking permission for the use or getting an opinion of counsel that the use will be non-infringing or fair use. Second, never ignore litigation.

  • IP BLAWG

    States’ Rights: A Loss and a Win

    Beverly A. Berneman
    5/12/20

    Two recent US Supreme Court cases give a loss for the State of Georgia and a win for the State of North Carolina.

    State of Georgia’s Loss

    The State of Georgia makes the simple text of its state statutes available to anyone who wants to look at them. Georgia hired a company to annotate the statutes featuring citations, an analysis of the statutes and opinions from the state’s attorney general. A company named Public.Resource.Org. Inc. copied and distributed the annotated version of Georgia’s statutes without paying for it. Georgia sued Public.Resource.Org for copyright infringement. The Supreme Court ruled that Georgia cannot sue for the copying and distribution of the annotated version of the state’s statutes. Chief Justice John Roberts wrote the opinion for the Court. Justice Roberts invoked the doctrine of “government edict” which means that public officials who create a governmental work cannot copyright their works. Justice Roberts pointed out that allowing a governmental unit to withhold access to government information would create a “first class” and an “economy class” of access to public information.  

    North Carolina’s Win

    In 1996, a marine salvage company found the sunken slave ship, the Revenge. North Carolina commissioned a marine salvage company to resurrect the ship. The Revenge had been captured by the famous pirate Edward Teach (Blackbeard) and he had used the ship to conduct his piratical activities for about a year. The ship ran aground off the coast of North Carolina in 1718. The salvage company hired Frederick Allen to record videos and take pictures of the operation. Frederick registered the copyright in the works. North Carolina published some of the videos and photos. Frederick sued North Carolina for copyright infringement. The US Supreme Court affirmed the dismissal of Frederick’s lawsuit on appeal. Justice Elaina Kagan, writing for the Court, explained that under the doctrine of sovereign immunity, a state cannot be sued without its permission. Frederick tried to rely on the Copyright Remedy Clarification Act of 1990 (CRCA) which was supposed to remove a state’s sovereign immunity from copyright infringement cases. But a prior case decision had held that Congress didn’t have the constitutional authority to abrogate sovereign immunity. It’s interesting to note that Justice Kagan believed that an abrogation statute, if properly drafted, could have created a right of action against a state for copyright infringement.

    WHY YOU SHOULD KNOW THIS. These two cases show parameters of copyright protection when dealing with a governmental unit. In the Georgia case, if a private company had owned the annotated statutes, it would have had the right to enforce the copyright. But Georgia owned the annotated statutes so it had to make them available to the public. In the North Carolina case, the problem was a poorly worded statute. Nonetheless, the holding stands. States don’t have to pay to use copyrighted works.

  • IP BLAWG

    Public Exposure

    Beverly A. Berneman
    4/14/20

    For your stay at home pleasure, 2020 has granted us with a whole inventory of content that is now in the public domain.

    In 1976, the Copyright Act was completely overhauled. The system of protecting copyrights changed giving longer protection and making it easier to claim a copyright. But pretty much all of the pre-1976 works were going to be treated differently. So the Copyright Act grandfathered in and extended the protection for these pre-1976 works. Originally, works created in 1923 or before were still in the public domain. On January 1, 2020, any works created from 1924 went into the public domain.

    Those works include (this list is by means exhaustive):

    Silent Films
    o Douglas Fairbank’s, Thief of Bagdad;
    o Clark Gable’s film debut, White Man;
    o Buster Keaton’s, Sherlock Jr.; and
    o The first screen adaptations of Peter Pan and The Age of Innocence.

    Music
    o George Gershwin’s, Rhapsody in Blue;
    o Giacomo Puccini’s opera, Turnadot;
    o Everybody Loves My Baby;
    o It Had to be You; and
    o I’ll See You in My Dreams.

    Literature
    o Edgar Rice Burroughs’, The Land That Time Forgot and Tarzan and the Ant Men;
    o Agatha Christie’s, The Man in the Brown Suit and Poirot Investigates;
    o W. E. B. Du Bois’, The Gift of Black Folk;
    o E. M. Forster’s, A Passage to India;
    o Emma Goldman’s, My Further Disillusionment in Russia;
    o Herman Melville’s, posthumously published Billy Budd;
    o A. A. Milne’s, When We Were Very Young; and
    o Mark Twain’s, Autobiography (posthumous).

    Plays
    o Bertolt Brecht’s, The Life of Edward II of England, adapted from Marlowe;
    o Noël Coward’s, Hay Fever and Easy Virtue; and
    o Eugene O’Neill’s, Desire Under the Elms.

    Artwork
    o Edward Hopper’s, New York Pavements;
    o Paul Klee’s, Asiatic God, Carnival in the Mountains, Flower Garden;
    o Joan Miró’s, the Head of a Catalan Peasant (first work in sequence); and
    o Diego Rivera’s fresco, Day of the Dead.

    WHY YOU SHOULD KNOW THIS. When a work falls into the public domain, it is available for copying, preparing derivative works, distribution, display and performance without having to pay royalties or a license fee. But, be careful, some works may have their own derivative works that haven’t fallen into the public domain. For instance, in a recent case involving the Sherlock Holmes books, the court held that if the characters or situations were created before 1923, they were in the public domain and could be used. But new characters or situations that Arthur Conan Doyle published after 1923 are still protected by copyright.

    IN CASE YOU WERE WONDERING: No doubt you noticed that IP News for Business has been gone for a little over a month. Not to worry. Everything’s ok. I had knee replacement surgery in the first week of March. Things are going well and I’m “back in the saddle”.

  • IP BLAWG

    Exceptions to Exceptions

    Beverly A. Berneman
    11/19/19

    The New Republic magazine published 44 film reviews written by famed film and theater critic, Stanley Kauffmann. The magazine didn’t hire Kauffmann to write the reviews. He wrote them, submitted them and the magazine printed them. The parties never really talked about who owned the articles. They never entered into a “work for hire” agreement. Over the course of the years after the reviews were published, the magazine and Kauffmann were pretty vague about copyright ownership. Kauffmann granted many licenses to a third party to publish the reviews. At one point, the magazine ‘transferred’ the copyright in some of the articles to Kauffmann. In 2004, long after the reviews were written, the magazine sent Kauffmann a letter agreement stating that both parties always knew the reviews were supposed to be “work for hire”.

    After Kauffmann passed away, the Rochester Institute of Technology published an anthology of Kauffmann’s reviews edited by Robert J. “Bert” Cardullo. Kauffmann’s estate sued the Institute for copyright infringement. The Institute argued that Kauffmann’s estate didn’t own the copyrights. The district court entered summary judgment for the Institute. The Second Circuit Court of Appeals reversed and remanded the case for further hearing. The Court held that the 2004 letter agreement was not an enforceable “work for hire” agreement. A valid “work for hire” agreement has to be executed before the work is created. The 2004 letter was signed long after the works were created. And there were no other facts that showed the parties’ intent at the time that the magazine published the works.

    In an interesting side note, it turns out that Cardullo had misrepresented to the Institute that Kauffmann’s estate granted him permission to publish the anthology. The court described Cardullo as “a serial plagiarist of writings by Kauffmann and others” who “went so far as to forge a letter purporting to be from counsel for the Estate”. Cardullo admitted everything to the attorneys in the case. He was named and remains a third-party defendant in the case.

    WHY YOU SHOULD KNOW THIS. In the law (as in grammar), there are always exceptions to the rule. Ownership of the copyright in a work belongs to the author. The exceptions are when the creator of the work is an employee or the creator signs a “work for hire” agreement before the work is created. Sometimes a tardy “work for hire” agreement can be enforceable. Here’s an example. The widow of a deceased artist was sued by Playboy Enterprises over ownership of her late husband’s artwork. Playboy alleged that it owned the paintings as “work for hire”. The widow argued that she owned the works because there was no written agreement. Playboy won. Playboy proved that it ordered the paintings for the magazine and that all of the checks cashed by the artist had a legend above the endorsement stating that the artist “assigned all right, title and interest” in the works. But, don’t rely on a Playboy type of scenario. When hiring someone to create a copyrightable work, always sign a “work for hire” agreement at the beginning.

  • IP BLAWG

    Big Little Copyright Lies

    Beverly A. Berneman
    9/24/19

    An application to register tells the Copyright Office about you, your work and why you’re entitled to register a copyright. To further this goal, the Copyright Act requires that you include only accurate information in your copyright application. Gold Value International Textile d/b/a Fiesta Fabrics learned the consequences of not following this rule the hard way.

    Fiesta registered the copyright for a group of textile designs. Fiesta had distributed samples of some of the fabric designs to get production contracts. Then it sold about 190 yards of one fabric with the design. In its copyright application, Fiesta claimed the designs were unpublished.

    Fiesta sued Sanctuary Clothing, Inc. and others for allegedly selling a blouse with an infringing textile design. Sanctuary counterclaimed seeking invalidation of Fiesta’s copyright. Sanctuary argued that Fiesta included previously published designs in its application to register an unpublished collection. Fiesta further argued that this inaccurate information regarding publication required invalidation of the registration. Fiesta argued that it didn’t consider the sample distribution and small sale of the design to be “publication”. But that argument was rejected. The District Court couldn’t get a clear handle on whether Fiesta’s inaccurate information was enough to invalidate the registration. Congress passed a law in 2008 that only invalidates the copyright if: (1) the applicant knew that the information was inaccurate; and (2) the inaccurate information would have caused the Register of Copyrights to refuse registration. So the District Court submitted an inquiry to the Register of Copyrights. The Register of Copyrights responded that she would have refused registration because a copyright registration cannot contain a mix of published and unpublished works. And if the Register had known that the application was trying to register a mix of published and unpublished works, she would have refused registration.

    The District Court held that Fiesta knowingly included inaccurate information in its copyright application that required invalidation. Not only did the District Court invalidate the copyright, it found that Sanctuary was a prevailing party and entered a judgment for attorneys’ fees in Sanctuary’s favor.

    Fiesta appealed to the Ninth Circuit Court of Appeals who affirmed the District Court’s judgment.

    WHY YOU SHOULD KNOW THIS. Copyright registration isn’t a perquisite to copyright ownership. But, your copyright has to be registered before you can sue for infringement. So, of course, you have to be careful when you fill out the application to register a copyright. If you discover an error, you can file an application for supplementary registration to correct the error. And this is better done sooner rather than later.

  • IP BLAWG

    Scrambling for Copyright Infringement Defenses

    Beverly A. Berneman
    6/11/19

    Violent Hues Productions published a tourism guide that used a stock photograph depicting the Adams Morgan neighborhood of Washington D.C. The problem is Violent Hues used it without the permission of the photographer, Russell Brammer.

    Russell sued Violent Hues. The District Court originally sided with Violent Hues saying that Violent Hues didn’t infringe because the photograph was used for “informational” purposes. The Fourth Circuit Court of Appeals reversed the decision to the relief of photographers everywhere. The Fourth Circuit rejected all of the defenses brought up by Violent Hues including, some flimsy excuses like, it was an innocent mistake and its use didn’t stop the photographer from licensing it to others. Violent Hues’ fair use defenses didn’t get anywhere. Violent Hues tried to make the case for “transformative use” because it cropped and only used half of the photograph. That doesn’t fit into the definition of transformative use. The Fourth Circuit Court’s opinion was scathing in its rebuke of Violent Hues’ defenses by holding that “fair use is not designed to protect lazy appropriators”.

    **WHY YOU SHOULD KNOW THIS. ** Finding a photograph on the Internet is easy. But using it can have harsh results. When using content from the Internet, the default should always be that the work belongs to someone and you need their permission to use it. If you need stock photographs, there are numerous stock photo websites that will license the use. The license fee is substantially less then expensive and time consuming copyright infringement litigation.

  • IP BLAWG

    No Shortcut for Copyright Plaintiffs

    Beverly A. Berneman
    3/5/19

    In my blog post of August 1, 2017, I posed the copyright litigation dilemma: “To File or Not to File”. On March 4, 2019, the US Supreme Court resolved the dilemma once and for all.

    The Supreme Court affirmed the Eleventh Circuit Court of Appeals’ decision in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC. The Eleventh Circuit held that plaintiffs must register a work with the Copyright Office before bringing suit. Applying for registration is not enough. In a unanimous ruling, Justice Ruth Bader Ginsburg, writing for the Supreme Court, confirmed that “registered” means, well, “registered” and not just to apply for registration. Fourth Estate argued that a plaintiff might lose the right to enforce a copyright while waiting for the Copyright Office to register the work. Justice Ginsberg wrote that this fear is overrated. The Copyright Office’s average processing time is down to seven months and that’s more than enough time to file suit. Justice Ginsberg acknowledged that the administrative wheels of the Copyright Office might be slower than a litigant would like. But that isn’t a problem that the Supreme Court can solve.

    Why You Should Know This. Now there’s no question that a plaintiff must register the infringed upon work with the Copyright Office before filing suit. The problem is that the infringement will continue while the plaintiff is waiting to get a registration certificate. Seven or more months of infringement is a long time to wait for a remedy. The best practice is to register a work as soon as it’s complete and not wait for the work to be infringed upon. The application process is pretty straightforward and the Copyright Office fees are very affordable ($35 to $55 per application). Failing that, the Copyright Office can expedite the process for a filing fee of $800.00 which can shorten the lead time to three weeks. Either way, copyright registration is a “need to have” for copyright owners if they want to protect their valuable works of authorship.

  • IP BLAWG

    Fun IP Facts for Halloween 2018

    Beverly A. Berneman
    10/30/18

    Even Halloween can’t escape copyright.

    Frankenstein: This year is the 200th anniversary of the first edition of Mary Shelley’s Frankenstein which means it’s in the public domain. Here are some other non-copyright fun facts. Mary Shelly’s mother, Mary Wollstonecraft, was a writer, philosopher and is credited as being the first feminist. Mary Shelley was just 17 years old when she wrote Frankenstein. The name “Frankenstein” refers to the creator of the monster and not the monster itself. In the original story, the monster is 8 ft. tall, had beautiful black hair, white teeth, yellow skin and, apparently, was really buff (see picture). 

    Movie Characters: Your favorite horror characters, Freddy, Jason, Pinhead, etc. have been copyrighted by their various studios.

    Halloween Costumes: Most costumes are considered “clothes” and are not subject to copyright. However, a costume that has a creative element unrelated to its function as clothing is copyrightable. See IP News for Business Blawg post Spooky Halloween Banana, http://gct.law/blog/113.

    Halloween Masks: Masks are copyrightable because they aren’t considered useful articles.

    Shameless Plug: I highly recommend Remy Bumppo Theater’s production of Frankenstein. It’s Jeff Recommended and has gotten rave reviews. Now playing until November 17, 2018. Visit https://www.remybumppo.org/ for more info.

    WHY YOU SHOULD KNOW THIS. Happy Halloween.

  • IP BLAWG

    Percentages Can Sink Copyright Infringement

    Beverly A. Berneman
    8/7/18

    Copyright infringement needs more than ‘sort of’ similarity. Experian Information Solutions, Inc. registered the copyright for a database containing consumer names and addresses. Experian’s employees made some selections in adding data, reconciling discrepancies, and discarding useless information. Experian licenses access to its database to companies for use in marketing campaigns. Nationwide Marketing Services Incorporated is Experian’s competitor. Nationwide is relatively new to the market and much smaller than Experian. Experian got an offer to purchase a Nationwide’s database of names of addresses. Experian tested Nationwide’s database  against its own and came up with a 97% match rate.  Experian brought suit for copyright infringement and trade secret misappropriation against Nationwide. The Ninth Circuit Court of Appeals affirmed the district court’s order for summary judgment in Nationwide’s favor on the copyright claim. The court held that the selection and arrangement process was sufficient to create minimal protection in Experian’s database. But, Experian did not prove infringement. Neither side could produce the databases as they appeared at the time of the alleged infringement. Experian could only show an 80% match rate between the current versions of the two databases. That wasn’t enough for copyright infringement. Experian’s trade secret misappropriation claim was remanded back to the district court.

    WHY YOU SHOULD KNOW THIS. Facts are not copyrightable. However, the arrangement of facts or a compilation is copyrightable. A compilation of facts has only minimal copyright protection. That’s because no matter how you look at it, you can’t own the underlying facts. Copyright infringement occurs when the infringing work is substantially similar to the original work. Now we know that 80% similarity was not enough similarity for infringement. This case also points out that if you’re going to claim copyright infringement, be sure to preserve the copyrighted works as they appeared at the time of the alleged infringement. And be sure to tell your alleged infringer to preserve its version of the works.

  • IP BLAWG

    Photos of Teeth Lack Copyright Bite

    Beverly A. Berneman
    7/24/18

    Every photo doesn’t automatically have the veneer of copyrightability. Dr. Mitchell A. Pohl is a cosmetic dentist who is very proud of his work. He posted before and after pictures of one of his patients on his website. The photos showed the patient’s unfortunate ‘before’ smile (teeth, lips and small area around the mouth) and her ‘after’ beautiful healthy smile. Dr. Pohl registered the photos with the US Copyright Office. Then Dr. Pohl found seven websites that used his photos. He sued the alleged infringer, MH SubI, LLC d/b/a Offcite, for copyright infringement. While Dr. Pohl obviously does fantastic work, his photos didn’t bridge the gap into copyrightable subject matter. The District Court for the Northern District of Florida performed the judicial version of a root canal and granted Offcite’s motion for summary judgment. The court held that Dr. Phol’s self-serving affidavit was as convincing as “plaque on a molar” and no reasonable jury could find that the photos were creative enough for copyright protection. The court later performed another extraction by denying Dr. Pohl’s motion to reconsider.

    WHY YOU SHOULD KNOW THIS. A work has to meet a minimum standard of creativity to be copyrighted. As the court noted in this case, “Meeting the standard for creativity is not like pulling teeth”. Dr. Pohl’s photos didn’t meet that minimum standard. The court noted that Dr. Pohl couldn’t identify any creative elements in the photos such as the type of camera used, decisions regarding the pose of the patient, lighting decisions, etc. Perhaps if Dr. Pohl could have described some creative decisions in taking the photos, the outcome would have been different.

    A shout out to my friend, Matthew Scott Nelles, one of the fine attorneys at Berger Singerman LLP in Ft. Lauderdale, Florida, who represented Offcite in this case.

  • IP BLAWG

    Implied License Keeps Electrical Standards Humming

    Beverly A. Berneman
    6/5/18

    An implied copyright license doesn’t need to be in writing. In Intellitech Corp., v. The Institute of Electric & Electronics Engineers, Inc. a/k/a IEEE, IEEE is a non-profit organization that was trying to set standards for electrical engineers. Intellitech contributed to the “Test Access Architecture for Three-Dimensional Stacked Integrated Circuits.” Intellitech sued IEEE for copyright infringement when IEEE tried to use Intellitech’s contributions. The court denied Intellitech’s motion for summary judgment. The court held that even if Intellitech owned the copyright in the work, IEEE had a non-exclusive implied license to use it because the parties always intended that result.

    WHY YOU SHOULD KNOW THIS. It’s always best not to rely on an implied anything, no less an implied copyright license. A written license agreement or work for hire agreement is not only preferable, it’s a must. The documents should be drafted and signed every time someone creates a work for another. In this case, the IEEE had written policies about IEEE's ability to use contributions to the standards. So Intellitech knew from the beginning that its contributions were going to be used by IEEE in its documentation.

  • IP BLAWG

    Peeling the Software Onion Can Cause Tears

    Beverly A. Berneman
    3/20/18

    Software can have lots of layers like an onion which can be trouble for an infringement lawsuit. In CSS, Inc. v. Herrington, CSS complained that the defendants infringed on three of its copyrighted software programs. The programs were made up of a lot of different components, including third party software and abstract ideas. The court’s opinion peeled the layers of CSS’s software onions to get to the decision. First, the court peeled off the function that each program performed because they were "ideas" of the programs and not their expression. Then the court peeled away the client/server architecture used by each of the programs because that was non-copyrightable industry-standard. Next came the third party components because they didn’t belong to either party. Next came the arrangement of the third party components didn’t have enough creativity for copyright protection. Then the court peeled away the layer that was the name/address algorithm because it was unoriginal and not copyrightable. Once the court got to the small onion core of protectable software that was left, the court held that CSS didn’t prove substantially similarity between CSS’s onion core and the defendants’ onion core. CSS may have had something that was protectable, but after peeling away the uncopyrightable components of its software it couldn’t prove infringement.

    WHY YOU SHOULD KNOW THIS. This opinion is a good road map for any pre-litigation due diligence involving software copyright infringement.

  • IP BLAWG

    You're a Mean One, Dr. Seuss

    Beverly A. Berneman
    12/19/17

    Dr. Seuss’ Estate doesn’t have the Christmas spirit. Matthew Lombardo wrote a play called “Who’s Holiday”. It’s a sort of sequel to Dr. Seuss’ “How the Grinch Stole Christmas” in which Cindy-Lou Who is all grown up and has issues. Dr. Seuss’ estate is aggressive about protecting the original works (See more below). So, of course, the Estate sued for copyright infringement to block Who’s Holiday. The Estate lost. The court held that “Who’s Holiday” falls squarely within the defense of fair use. Using the four prong fair use test, the court found that the nature of the use was obviously parody and weighs in favor of fair use. “The play subverts the expectations of the Seussian genre, and lampoons the Grinch by making Cindy-Lou's naiveté, Who-Ville's endlessly-smiling, problem-free citizens and Dr. Seuss' rhyming innocence all appear ridiculous. . .” The court found the second prong, the nature of the original work, didn’t play a big role in the analysis. For the third prong, the court held that parody gives a long leash to quote and refer to the original. Even though Who’s Holiday used a substantial amount of the original work, it was not excessive in relation to the purpose of parody. The fourth prong determines whether the alleged infringing work supplants the market for the original. The court found that there was virtually no possibility that someone looking to buy a children’s book would buy tickets to an adult themed play about one of the characters instead.

    WHY YOU SHOULD KNOW THIS. As you may remember, Dr. Seuss’ Estate sued ComicMix for copyright infringement. ComicMix had started a Kickstarter campaign to fund the development of a comic mashup between Dr. Seuss’ “Oh, the Places You’ll Go” and Star Trek titled “Oh the Places You’ll Boldly Go.” The Estate’s first complaint was dismissed. (June 27, 2017, “Horton Hears a Vulcan”). The Estate amended its complaint and just defeated a motion to dismiss by ComicMix. So ComicMix’s mission to boldly go to fair use places continues.

    Happy Holidays and see you next year with more IP News for Business.

  • IP BLAWG

    Viral Birth Video Gives Life to Fair Use

    Beverly A. Berneman
    8/15/17

    News and commentary about a dad’s big oops is fair use. Proud dad, Kali Kanongataa, accidently live streamed a video of his partner giving birth to their son. The video went viral. As often happens in the world of viral videos, Kanongataa’s video gave rise to a commentary by the media. Much of the commentary involved showing short clips from the 45 minute video. Kanongataa sued ABC, NBC, Yahoo and COED Media for copyright infringement. The judge dismissed the case on the basis of fair use. But, it didn’t stop there. The judge ordered Kanongataa to pay the defendants’ attorney’s fees. The judge said, "no reasonable lawyer with any familiarity with the law of copyright" would have filed the cases.

    WHY YOU SHOULD KNOW THIS. Copyright infringement is the unauthorized use of the works of another. Fair use is a defense to copyright infringement. Fair use is a necessary component of copyright law because it protects uses that are essential to open dialog and creativity. A fair use analysis isn’t always simple or straightforward. But using small clips of a video for news or commentary falls squarely within the parameters of fair use. This case points out that no matter how aggrieved one may feel about the use of their content, rushing into court without an objective fair use analysis can cost a plaintiff far more than the embarrassment of a viral video.

  • IP BLAWG

    To File or Not to File - It's no Question

    Beverly A. Berneman
    8/1/17

    No matter how right you are, you need to register a copyright before filing suit. Section 411(a) of the Copyright Act requires registration of a copyright before bringing suit. Federal Circuits are split on how to interpret this. Some circuits say filing an application is enough. Other circuits say the plain language of the statute requires actual registration. In Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, the Eleventh Circuit Court of Appeals went with registration means registration. Wall-Street licensed content from Fourth Estate. After the license expired, Wall-Street continued to post Fourth Estate’s content without permission. Fourth Estate applied for registration and then filed suit before the works were actually registered. In affirming the dismissal of the suit, the Eleventh Circuit focused on the fact that the Copyright Office had to examine the application before registration. So filing the application can never be enough.

    WHY YOU SHOULD KNOW THIS. As often happens, Fourth Estate probably didn’t have a mechanism to regularly register its copyrights. Although the application process is pretty straightforward and the Copyright Office fees are very affordable ($35 to $55 per application), many businesses see copyright registration as a “nice to have” instead of a “need to have”. If a copyright owner doesn’t have regular application process, what should the owner do when an infringement occurs? The Copyright Office has a special handling process where for a filing fee of $800, it will expedite a decision regarding registration. The usual registration process can take several months to complete. The special handling process takes one to three weeks.

  • IP BLAWG

    Horton Hears a Vulcan

    Beverly A. Berneman
    6/27/17

    A Star Trek and Dr. Seuss mashup will Live Long and Prosper. Comics legend, Ty Templeton, and Star Trek’s “Trouble with Tribbles Episode” writer, David Gerrold, collaborated on a comic called “Oh, The Places You'll Boldly Go.” The comic mashed Dr. Seuss-like drawings and dialogue with Star Trek characters. The Dr. Seuss Estate sent Templeton and Gerrold a cease and desist letter citing trademark and copyright infringement. This resulted in Kickstarter shutting down the campaign to fund the development of the comic. Litigation ensued. Victory goes to Templeton and Gerrold. A California court ruled against Dr. Seuss on the trademark claim. The court held that Templeton and Gerrold’s use of the Dr. Seuss trademarks was ‘nominative fair use’. Although the court didn’t rule yet on the copyright claims, the court indicated that the use of Dr. Seuss’ copyrighted works was sufficiently transformative to be fair use.

    WHY YOU SHOULD KNOW THIS. Fair use can be a defense to both trademark and copyright infringement. For trademarks, ‘nominative fair use’ means using the trademark of another in a non-commercial manner. In creative works, such as this one, the comic uses the trademark only to reference Dr. Seuss’ goods and services and not to sell a competing product or confuse the public as to the source of the products. For copyrights, fair use in a creative work is an important element in parody. A proper parody uses a source work in a completely new or unexpected way. This is referred to as “transformative use”. Caution. There’s always a fine line between fair use and infringing use. When in doubt, get an attorney’s opinion.

  • IP BLAWG

    Home Sweet Copyright

    Beverly A. Berneman
    6/13/17

    Copyright only protects the non-standard elements of an architectural plan. Architectural plans, by their nature, incorporate elements that have been in the public domain for centuries, such as doors, windows and types of rooms in a house. Copyright Law calls those standard elements “scènes à faire”. Home developers use a combination of standard elements to create floor plans. Sometimes, the developer comes up with a unique feature. When that happens, the developer has a copyright in the unique feature. The plaintiff in Design Basics LLC v. Lexington Homes, Inc., publishes home floor plans and licenses them on a retail basis. Design Basics sued Lexington Homes for copyright infringement of its floor plans. The 7th Circuit Court of Appeals affirmed summary judgment in Lexington Homes’ favor. The Court agreed with the District Court that a jury could not find that Lexington Homes’ plans were substantially similar to Design Basics’ plans. The graphic to the left illustrates the point by juxta positioning a Design Basics floor plan with a Lexington Homes floor plan. If you take the scènes à faire out of the equation, Design Basics seems to have very little protectable elements. But there’s more. The Court, in dicta, discussed Design Basics' litigation history and used the opportunity to criticize Intellectual Property trolls. As of April 2017, Design Basics had brought over 100 copyright infringement lawsuits. Design Basics trawled the Internet and paid employees to find "infringers". The Court expressed distaste for this type of wholesale litigation. The Court reproached plaintiffs, i.e. Intellectual Property trolls, who misuse the legal system by filing dubious lawsuits for the purpose of prompting settlements to avoid costly litigation.

    WHY YOU SHOULD KNOW THIS. There are two lessons here. First, if you are in the business of producing works that have minimal copyright protection, the chances are that you are going to have little success in bringing infringement suits. Second, the Intellectual Property troll phenomenon is on the radar of many courts. The Design Basics opinion referenced scholarly articles, news media coverage and recent opinions deploring the abuse of the court system by Intellectual Property trolls. The best way to deal with Intellectual Property trolls is to stand up to them. It may be costly but settling with Intellectual Property trolls only encourages them.

  • IP BLAWG

    Trademarks for the Humor Impaired

    Beverly A. Berneman
    1/31/17

    Louis Vuitton found nothing funny about “My Other Bag is a Louis Vuitton”. My Other Bag (“MOB”) manufactured and sold canvas bags that replicate pictures of famous and expensive brands. One of its bags replicated the Louis Vuitton bag. If you look at the picture of the bag, you can see that no one would mistake this for a real Louis Vuitton bag. The bag is meant to parody high priced leather goods and that not everyone can afford them. However, Louis Vuitton did not appreciate the humor. So it sued MOB for trademark infringement, dilution by blurring and copyright infringement. The District Court granted summary judgment to MOB stating that this was an obvious attempt at humor and is not likely to cause confusion. The Second Circuit agreed and affirmed the judgment. The Second Circuit noted that “A parody must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody”.

    WHY YOU SHOULD KNOW THIS. Parody can be the sincerest form of flattery. In fact, in the MOB case, the district court reasoned that the parody was likely to reinforce and enhance the distinctiveness and notoriety of the original brand. Understanding that parody requires a reference back to the original, how can one avoid a claim of infringement? It all boils down to the point of the use of the trademark. For instance, in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., a competitor was prohibited from using the name Charbucks for its coffee brand in order to compete with the Starbucks coffee brand. The point of Wolfe’s Borough Coffee’s Charbucks name was to compete with Starbucks. In MOB, the point was to make fun of Louis Vuitton’s luxury image.

  • IP BLAWG

    Don’t Hurt Your Fans

    Beverly A. Berneman
    1/24/17

    If you have a powerful brand, don’t use your power to alienate your fans. Last year, CBS and Paramount Studios sued Axanar Productions for copyright infringement. Using a 20 minute short film, Axanar had raised over $1 million through Kickstarter and Indiegogo to finance a full length fan fiction film (https://www.youtube.com/watch?v=1W1_8IV8uhA). The proposed film was to follow the story of Captain Kirk’s hero, Garth of Izar. CBS/Paramount, who own Star Trek, had a problem with it. This wasn’t the first fan fiction spinoff and CBS/Paramount usually encouraged it. Fan films can enlarge the universe, attract new fans and build loyalty among the current fan base. But Axanar got too close. Commentators speculate that the Axanar’s production values were too good and would have commercial potential. Star Trek fans were appalled at CBS/Paramount’s aggressive tactics. Even J.J. Abrams and Justin Lin, directors of the most recent Star Trek films, supported Axanar. CBS/Paramount tried to calm some of the bad press by coming out with guidelines for producing fan films (http://www.startrek.com/fan-films). Meanwhile, CBS/Paramount continued its lawsuit against Axanar. Last week, CBS/Paramount and Axanar announced that they have settled the dispute. In exchange for CBS/Paramount dropping the suit, Axanar has agreed to follow the fan films guidelines which include a restriction on the length of the films, requiring the use of official merchandise and keeping them family friendly.

    WHY YOU SHOULD KNOW THIS. This is not the only instance of the perils of attacking the fans. For example, Warner Bros. tried to crack down on Harry Potter fan sites that were written primarily by children. Bowing to the bad press of picking on kids, Warner Bros. withdrew their cease and desist letters. Every content owner should be able to protect its brand and copyrights. But when pursuing protection, the content owner must be cognizant of the message it sends to its fan and consumer base and not become an IP bully.

  • IP BLAWG

    All's Fair When It Comes to Briefs

    Beverly A. Berneman
    12/6/16

    A legal brief can be protected by copyright. Ezra Sutton represented Sakar International in a patent infringement case in Texas. Sakar and its co-defendant, Newegg, Inc. won at the trial level. They brought a motion for attorney’s fees which was denied. They separately appealed the denial to the Federal Circuit Court of Appeals. As time approached for filing their opening appellate briefs, Newegg agreed to provide Sutton a draft of its brief only if Sutton agreed in writing that he would only use it for reference purposes and not copy any excerpts. On the day before Newegg filed its brief, Sutton filed a brief on behalf of Sakar that was virtually identical to Newegg’s draft brief. Newegg sued Sutton for copyright infringement. Newegg brought a motion for partial summary judgment that Sutton couldn’t use fair use as a defense. The court granting summary judgment by analyzing the four fair use factors. (1) The purpose and character of the use weighed in favor of Newegg because Sutton’s brief was identical to Newegg’s brief. (2) The nature of the copyrighted work weighed in favor of Sutton because the briefs were functional presentations of law and fact. (3) The amount and substantiality of the copyrighted work used weighed in favor of Newegg because Sutton used the entire work and not just what was needed for a specific purpose. (4) The degree of harm to the potential market, weighed in favor of Sutton because Newegg couldn’t identify a market for its brief. The court tipped the balance with its own factor. Sutton could have used federal appellate rules that allow a party to either join in or adopt by reference a part of a co-party’s brief.

    WHY YOU SHOULD KNOW THIS. Generally attorneys don’t sue other attorneys for adopting their brilliant arguments. I’m sure Newegg was not pleased when Sutton took advantage of the time and attorneys’ fees involved in drafting its brief on appeal. It appears that the court was reacting to two things. First, there was a written agreement between the parties and Sutton had agreed not to copy Newegg’s brief. Second, Sutton didn’t adopt Newegg’s arguments in a way that is specifically provided in the Federal Rules of Appellate Procedure. Courts can get testy when litigants don’t follow rules; especially rules that save the court time in analyzing the arguments of the parties.

  • IP BLAWG

    Did I Say That Out Loud?

    Beverly A. Berneman
    11/8/16

    If you don’t own the rights to your content, it could go places you don’t want it to go. Actor and musician, Jared Leto’s production company, Sisyphus, hired Naeem Munaf to shoot a video of Leto’s band for promotional purposes. The parties didn’t have a written agreement. In the video, Leto made some disparaging remarks about Taylor Swift. Realizing that he had a celebrity dis gold mine, Munaf sold the offending video to TMZ.com for $2,000. Two days after TMZ.com posted the video, Sisyphus had Munaf sign a non-disclosure agreement. Sisyphus’s team then registered the video with the U.S. Copyright Office and sued Munaf for copyright infringement. The court granted summary judgment for Munaf.

    WHY YOU SHOULD KNOW THIS. Unfortunately, Sisyphus’s attempts to claim ownership of the video failed at every turn. Sisyphus didn’t own the video when it was created. Munaf, as the creator (or author) of the video, was the owner. Sisyphus couldn’t argue that the video was a work for hire because Munaf wasn’t an employee of Sisyphus. Having Munaf sign a non-disclosure agreement after the sale to TMZ.com was too little, too late. Munaf didn’t own the copyright at the time that he signed the agreement. Finally, registering the copyright didn’t help because Sisyphus never owned video. All of this could have easily been avoided if Sisyphus and Munaf had signed a written copyright assignment agreement at the time Munaf was hired.

  • IP BLAWG

    Copyright Law Levels the Sims' PlumbBob

    Beverly A. Berneman
    9/20/16

    Copyright Law may be the key to who owns the design of a video game promotional item. In the popular video game, the Sims, a green icon called a “PlumbBob” identifies the character in play. The game’s manufacturer, Electronic Arts, Inc. decided it would be a great idea to include a USB drive that looked like the PlumbBob as a promotional item to be sold with the games. EA hired Lithomania who hired Direct Tech to make up a prototype and eventually manufacture the item. Lithomania then sent the prototype to a Chinese company to manufacture the USB for less than what Direct Tech was going to charge. Lithomania didn’t tell Direct Tech. Instead, it strung Direct Tech along with a series of agreements including an agreement to assign the IP in the USB. Direct Tech didn’t realize it lost the sale when the PlumbBobs appeared in stores. Direct Tech sued Lithomania for breach of contract and they settled. Then Direct Tech sued EA for copyright infringement and trade secret misappropriation. The district court granted summary judgment to EA. The 9th Circuit Court of Appeals affirmed summary judgment on the trade secrets claim. But the Court reversed and remanded on the copyright claims. There were two issues of fact, namely: (1) whether the USB design was copyrightable because it was conceptually different from the utilitarian aspects of a USB; and (2) whether the USB design is a sufficiently original and non-trivial version of the original to be considered a derivative work.

    WHY YOU SHOULD KNOW THIS. The answers to the two questions remain to be seen. But let’s do a post-mortem on the actions of the parties. When EA retained Lithomania, their agreement should have been clear about ownership of the Intellectual Property rights to the promotional item. To further protect EA, it should have required Lithomania to get its approval on any agreements with subcontractors and agents. As to Lithomania, what can one say about its opportunism at the expense of everyone else? For Direct Tech, it’s more a matter of 20/20 hindsight. How was Direct Tech to know that Lithomania was not being candid with it? At least Direct Tech has an opportunity to recoup its lost profits using its copyright claims.

  • IP BLAWG

    A Tale of Two Structures

    Beverly A. Berneman
    5/24/16

    It looks pretty; but how protectable is it? Two recent cases highlight how different types of IP law protect the structure of a product. In one case, In DeVinci Editrice S.r.l. v. Ziko Games LLC, a court held that the structure of the “Bang!” card game cannot be protected by copyright. While the plaintiff could copyright the artwork on the cards, the game structure, mechanics and rules are not protectable. Millennium Laboratories, Inc. v. Ameritox, Ltd., a court held that the structure of medical test reports can be protected as trade dress as long as the structure isn’t functional. In this case, the owner chose the structure because it didn’t look like any of its competitors’ reports.

    WHY YOU SHOULD KNOW THIS. Functionality. That’s the key. Functionality can destroy copyright or trade dress protection. Both copyrights and trade dress protect something beyond function. Copyright requires the work have at least a minimum amount of creativity and be fixed in a tangible means of expression. An arrangement of items, a recipe or a set of instructions are primarily functional and not protectable. But add a creative element like commentary, graphics, photos or an unusual arrangement of information and you have protectable elements. For trade dress, the protectable element has to be something more than the visual appearance of a product. As discussed in the blog post of 5/3/2016, trade dress protection arises when consumers can identify a source or product by elements of the design beyond the function. So both copyrights and trade dress require the work or design to rise above functionality.

  • IP BLAWG

    Alice's Topsy Turvy IP Protection

    Beverly A. Berneman
    4/12/16

    The answer to being ousted from the wonderland of patents is to go through the looking glass to copyrights. Since SCOTUS’ 2014 decision in Alice Corp. v. CLS Bank International, over 70% of software patents have been struck down as being too "abstract". In answer to this, Synopsys registered its software code for static timing analysis (STA) with the U.S. Copyright Office. When AtopTech started selling STA that was eerily close to the one belonging to Synopsys, Synopsys sued for copyright infringement. A jury awarded Synposys over $30 million in damages against AtopTech.

    WHY YOU SHOULD KNOW THIS. The Alice decision has created a tumultuous time for software protection. Without patent protection, software developers and their counsel had to come up with other ways to protect the code. As Synopsys showed us, copyright protection is a viable alternative. But it’s not a one size fits all solution. Software might also be protectable as a trade secret. So, software needs to be evaluated on a case by case basis to determine the appropriate method of protection.