• IP BLAWG

    OMG AAMOF TXT Are Not ©*

    Beverly A. Berneman
    9/13/22

    In Brief: Copyright in fireworks text messages is invalid.

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  • IP BLAWG

    Oral Agreement = Copyright Infringement Litigation

    Beverly A. Berneman
    5/3/22

    In Brief:  Oral agreements with independent contractors fuel copyright infringement litigation.

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  • IP BLAWG

    All the Way Missing

    Beverly A. Berneman
    2/15/22

    In Brief:   It takes some work to prove up a missing copyright assignment.

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  • IP BLAWG

    Copyright Public Domain Class of 2022

    Beverly A. Berneman
    1/11/22

    In Brief:  Each year, a new crop of creative works go into the public domain.

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  • IP BLAWG

    Copyrighting a Trademark

    Beverly A. Berneman
    9/28/21

    In Brief:  A trademark has to meet minimum standards of creativity for a copyright registration.

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  • IP BLAWG

    SCOTUS Has Spoken on Fair Use

    Beverly A. Berneman
    4/13/21

    Oracle America, Inc. owns the copyright to the Java computer language. In 2005, Google LLC acquired Android and wanted to build a new software platform for mobile devices. To allow the programmers familiar with Java to help build the platform, Google copied about 11,500 lines of code from the Java program. These lines of code are part of a programming tool called that’s called an “Application Programming Interface (API)”. 

    Oracle sued for copyright infringement.

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  • IP BLAWG

    Fair Use Gets Transformed

    Beverly A. Berneman
    4/6/21

    In a recent blog post, I looked at the meaning of transformative use as it relates to fair use in a suit involving well-known photographer, Lynn Goldsmith, and The Andy Warhol Foundation for the Visual Arts, Inc. Lynn had taken some photos of the music artist, Prince. Vanity Fair magazine had licensed one of Lynn’s photos and commissioned Andy Warhol to create paintings from it for an article. Warhol then went a step further and used Lynn’s other photographs as the foundation for series of Prince paintings. Years later, Vanity Fair published an article using Warhol’s paintings. This was when Lynn learned about Warhol’s additional paintings. Lynn threatened to sue for copyright infringement. The Warhol Foundation brought a suit for declaratory judgment that the additional paintings were fair use. The district court held that Warhol’s treatment of Lynn’s photographs was transformative and therefore fair use.

    Andy Warhol’s art was innovative. But it may not have been transformative when it comes to fair use.

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  • IP BLAWG

    A Lot of Mine and Some of Yours

    Beverly A. Berneman
    3/16/21

    Hiller LLC provides plumbing, heating, cooling and electrical services to residential and commercial customers. Hiller was a member of Success Group International that offers management advice and customer service training. Success Group used licensed copyrighted training manuals owned by its predecessor, Clockwork IP LLC.

    Hiller decided to create its own training materials and hired an independent contractor who conducted a series of workshops and researched Hiller’s business. The end product was an HVAC technicians Guide. The Guide had original illustrations, its own content and its own arrangement of the information. Small portions of the Guide incorporated information that had been contained the Success Group training manuals. The independent contractor assigned the copyright in the Guide to Hiller.

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  • IP BLAWG

    Sometimes, It’s What You Don’t Say

    Beverly A. Berneman
    3/2/21

    The US Supreme Court won’t be weighing in on some interesting cases in the world of IP. Here are just a few of them by topic:
    Copy

    • rights in Fictional Characters
    • Right to Challenge Patents
    • Trademarks
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  • IP BLAWG

    A Useful Chalk Holder

    Beverly A. Berneman
    2/23/21

    In Brief:  Copyright does not protect “useful articles” and design patents don’t always protect against infringement.

    Sidewalk chalk has been around a long time. Lanard Toys Ltd. designed chalk holders that looked like No. 2 pencils. Lanard sold the chalk holders to distributors and toy store chains like Toys R Us.  Lanard sought and obtained both a registered copyright and a design patent.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • 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.

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  • IP BLAWG

    Fun IP Facts for Halloween 2018

    Beverly A. Berneman
    10/30/18

    Even Halloween can’t escape copyright. %CUT%

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  • IP BLAWG

    Percentages Can Sink Copyright Infringement

    Beverly A. Berneman
    8/7/18

    Copyright infringement needs more than ‘sort of’ similarity. %CUT% 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.

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  • IP BLAWG

    Photos of Teeth Lack Copyright Bite

    Beverly A. Berneman
    7/24/18

    Every photo doesn’t automatically have the veneer of copyrightability. %CUT% 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.

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  • 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. %CUT% 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.

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  • 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. %CUT% 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.

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  • IP BLAWG

    You're a Mean One, Dr. Seuss

    Beverly A. Berneman
    12/19/17

    Dr. Seuss’ Estate doesn’t have the Christmas spirit. %CUT% 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.

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  • 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. %CUT% 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.

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