Kamanou v. Executive Secretary (SDNY Jan. 19, 2012)

Kamanou sued the Executive Secretary of the Commission of the Economic Community of West African States (ECOWAS) for copyright infringement claiming that work she had done while an employee of ECOWAS was ‘unlawfully claimed’ as owned by ECOWAS and then sublicensed to the United Nations.

Kamanou, a citizen of Cameroon, with a PhD in Applied Statistics from U.C. Berkeley, is a well-known international expert on poverty statistics. Kamanou acknowledges that the work at issue was created within the time that she was an employee within her official duties, but states that her job description did not specifically call out the particular work. Moreover, Kamanou asserts that the work can not be a work made for hire as she ‘had no choice but to work on it due to her contractual obligations, and as there was no volitional choice that the work could not qualify for a work made for hire.

The court, in dismissing the action, held that the copyright is owned by ECOWAS who was authorized to license the work to the United Nations. The court explained that Kamanou does not own any copyright in the work. “The obligation to complete the work pursuant to an employment contract is precisely what makes the work a ‘work made for hire’.”

“Our decision in Eldred is largely dispositive of petitioners’ limited-time argument. There we addressed the question whether Congress violated the Copyright Clause when it extended, by 20 years, the terms of existing copyrights. 537 U. S., at 192–193 (upholding Copyright Term Extension Act (CTEA)). Ruling that Congress acted within constitutional bounds, we declined to infer from the text of the Copyright Clause “the command that a time prescription, once set, becomes forever ‘fixed’ or ‘inalterable.’” Id., at 199. “The word ‘limited,’ ” we observed, “does not convey a meaning so constricted.” Ibid. Rather, the term is best understood to mean “confine[d] within certain bounds,” “restrain[ed],” or “circumscribed.” Ibid. (internal quotation marks omitted). The construction petitioners tender closely resembles the definition rejected in Eldred and is similarly infirm.”

By this ruling, the court extends U.S. copyright protection to books, musical compositions and other works by foreign artists that had been available without paying royalties:

“In accord with the judgment of the Tenth Circuit, we conclude that §514 does not transgress constitutional limitations on Congress’ authority. Neither the Copyright and Patent Clause nor the First Amendment, we hold, makes the public domain, in any and all cases, a territory that works may never exit.”

This opinion ends one of the longest, continuously pending copyright disputes in the history of the United States. First filed in 2001, this case challenged the 1994 federal law passed to implement global agreements worked out in trade negotiations called the ‘Uruguay Round Agreement’. The challenge, however, failed on all points as held in today’s opinion: the law does not violate the Constitution’s Copyright Clause, it does not violate the First Amendment rights of anyone who previously had free access to creative works, and it does not deviate from any long-standing historical practice or perception, according to the decision.

Under terms of the settlement, consumers who paid 99 cents to enter a sweepstakes via their mobile phone (the free method of entry was using the computer), may submit a claim for a refund. The Plaintiffs will also receive $5.2 million. Finally, the defendants agreed to a 5 year injunction from offering a promotion where people who enter using the Premium text messaging method will not receive something of value. Presumably, NBC figures the law will change by then. We’re not so sure.

Practice Note: This case follows on the heels of a line of cases known as the “phone card” cases wherein people were given a chance to win a large cash prize if they bought a calling card (there was also a free method of entry). The problem was, the price for the calling card was outrageously high for the number of minutes a consumer received, making it clear people were merely buying a lottery ticket. Clients should be advised that the pay-to-play method of entry must confer something of reasonable value to the consumer.

Taking advantage of Sunrise A Period for companies who wish to register, not merely block, .xxx domains, PETA has registered the PETA.XXX domain name. In doing so, PETA, known for its “I’d Rather Go Naked Than Wear Fur” anti-fur advertising campaigns featuring tastefully covered nude celebrities, stated its intent to launch a nudity and erotic-based website in the name of animal rights. PETA reportedly intends to launch its own .xxx website in order to appeal to a new audience it normally does not reach and shock them with graphic images of animal cruelty – images these individuals did not expect to see when accessing a .xxx website. In addition to pornographic content, PETA adds that the site will be interspersed with undercover photos and footage of animals being mistreated, as well as vegetarian and vegan recipes. The foregoing strategy may not be an entirely surprising move for PETA. The organization has never been shy about using images or methods with shock value to create publicity –both positive and negative — to emphasize their message in favor of humane animal treatment.

The tactic is novel and worth noting as an example of how companies may use the domain name reservation process for marketing and publicity purposes. That said, it is also interesting to note that Sunrise Period A was uniquely designed for adult-industry trademark owners, not mainstream entities. As a result of PETA’s potential misuse of the process, issues will likely arise regarding reserving domain names. For example, as the .xxx domain name process is currently set up, a legitimate adult-industry trademark owner will have priority over a Sunrise Period B should the two companies register for an identical domain, regardless of who filed first. In addition, if a conflict arises between two trademark owners who have reserved the same domain during Sunrise Period A, the domain name will be auctioned among all qualified Sunrise A applicants. Accordingly, if other mainstream companies follow PETA’s example, it will be interesting to see how the Registry, as well as legitimate adult-industry trademark owners, will handle those demands and potential conflicts.
Practice Tip: Needless to say, PETA’s registration of an .xxx domain name may not necessarily be appropriate for other organizations. Many companies may not welcome the additional expense (about $300-400 per domain) or the perceived negative attention of not merely blocking but actually registering an .xxx domain. One might be concerned that PETA’s move will lead other companies and nonprofits to consider registering .xxx domains when the more appropriate action would be to simply block the domains. It is judicious to counsel clients about all the options available and their respective pros and cons with respect to the .xxx domain registration process, removed from the hype surrounding PETA’s move.

Judge Chen ordered a discovery and motion schedule that will have the case going to trial in August of 2012. Settlement discussions are expected to continue between the parties during this time. While Google attested to significant progress in the settlement discussions with the Publisher Class, talks with the Author Class are reportedly stalled. Attorneys for the authors expressed less optimism about settlement, even suggesting that Judge Chin appoint a magistrate judge or mediator to assist with negotiations. Google’s attorney rejected the offer. Interestingly, in the status conference, Judge Chin specifically inquired whether plaintiffs (including the Authors’ Guild) wished to expand their complaint beyond Google’s online display of only snippets of books. Plaintiffs accepted the offer and confirmed that their case went beyond online display of snippets, and included copying, scanning, storing and displaying the works as well. An amended complaint will be soon filed.

In a dramatic twist, three days prior to this Google Books status conference, the Authors’ Guild (together with an Australian Society of Authors, the Quebec Writers’ Union and eight individual authors) filed a new lawsuit, this time, against the HathiTrust Digital Library, the University of Michigan, the University of California, the University of Wisconsin, Indiana University, and Cornell University.

By way of background, the HathiTrust, a library partnership created in 2008 by the University of Michigan, receives digital scans of books from libraries following the works being scanned. HathiTrust then creates multiple copies of the scanned files, not simply to back up the books, but with the additional intent to offer public bibliographic information about the books and a full-text search. Unlike Google Books Search, the HathiTrust does not provide full textual results. In response to a search request, HathiTrust merely displays the page numbers where a user can find the searched terms. Should a book be in the public domain or deemed an “orphan work,” HathiTrust will allow users (including students and faculty members) to read the book online and member Universities to download the book.

The complaint alleges copyright infringement against the institutions resulting from scans made as part of the Google Books project and pooled by the Defendant Universities into the HathiTrust. The plaintiffs are seeking an injunction to prevent the HathiTrust from continuing to scan, duplicate and distribute digitized books and to impound the files already scanned (on estimated 7 million books). In addition to the injunctive relief, the plaintiffs are seeking a declaration that the HathiTrust’s scanning, duplicating and distribution of books violates copyright law.

Most interestingly, the complaint against the HathiTrust specifically targets the Orphan Works Project. Orphan works are works that are subject to copyright but for which copyright holders cannot be identified or located after a reasonable search. According to the Authors’ Guild, a simple search (including queries of standard copyright-related databases and phone calls) revealed that 4 out of 166 books identified by the HathiTrust as “orphan” were not. Accordingly, the Authors’ Guild claims that serious issues exist in the process being used by the HathiTrust to identify orphan works.

The saga is far from over. It will be interesting to see how the HathiTrust case (or the “Orphan Wars” as some have called it) plays out parallel to the Google Books case and whether Congress will finally be inclined to resume its efforts toward an orphan works bill.

Lucasfilm Ltd. (“Lucasfilm”) sued artist Andrew Ainsworth alleging that defendant infringed upon its copyright in the Star Wars Imperial Stormtrooper helmets by selling replicas of the famous helmets used in the film Star Wars Episode IV – A New Hope. The British Supreme Court unanimously upheld the ruling of the Court of Appeals in favor of Ainsworth under UK law.

The facts were as follows: Between 1974 and 1976, George Lucas worked with artists, including Ainsworth, to develop the visual concept of the Imperial Stormtrooper characters in the film, including their intimidating “fascist white armored suits” and helmets. Ainsworth produced several prototype vacuum-molded helmets for the Stormtrooper characters and, after Lucas’s approval, created 50 helmets for use in the film. Following the enormous success of the films around the world, Lucasfilm continued to earn income stemming from licensing agreements relating to Star Wars, including from licensing models of the Stormtroopers. In 2004, Ainsworth began recreating the helmets and armors from his original tools selling them to the public. Ainsworth sold between $8,000 and $30,000 of goods in the United States. Lucas sued in the U.S. and obtained a $20M judgment. Lucasfilm then commenced proceedings in the English Courts alleging claims under English and U.S. law.

Even though English law also follows a common law system of copyright, it is interesting that that the reasoning of the English court was quite different from the analysis we are familiar with under U.S. copyright law. The issue turned on whether the helmets were “sculptures” or “works of artistic craftsmanship.” Indeed, under English law, only “artistic works” (which include sculptures) are protectable under the Copyright Designs and Patents Act of 1988 regardless of artistic quality. Should the Court determine that the helmet was a “sculpture,” Ainsworth would have infringed upon Lucasfilm’s drawings by the mere fact of producing the helmets.

The High Court concluded, and the Supreme Court agreed, that the helmet was not a sculpture and that Ainsworth did not infringe upon the English copyright. The Supreme Court reviewed the legislative history of the definition of “sculpture” and found that, as opined in prior cases by the Court, not every three-dimensional representation of a concept qualified as “sculpture.” Lucasfilm argued that the helmet had no practical function and served as an artistic piece to make an impression on the filmgoer. The Court disagreed, viewing the helmet as a blend of costume and movie prop expressing the design of a character, which was a purely utilitarian expression. Rather, Court said, it is the film itself, and not the individual props, that is the work of art. Therefore, no copyright was found under English law in the iteration of the Imperial Stormtrooper helmet.

Furthermore, the Court ruled that claims under U.S. copyright laws were valid and Ainsworth infringed under U.S. copyright. The Supreme Court concluded that, should it have in personam jurisdiction over Ainsworth, then a UK court did maintain jurisdiction to try a claim for the U.S. copyright infringement.

Practice Note: This case reminds clients that international considerations are not to be neglected in protecting and enforcing copyright assets. Different strategies may work in different countries. Approaching a client’s IP portfolio with an international perspective is a prudent approach to avoid chattered expectations.

Last March, ICANN voted to approve .XXX as a new Sponsored Top Level Domain (sTLD) for the adult industry. The registry responsible for operating and managing the new sTLD is ICM Registry.

During the Sunrise Period (known as “Sunrise B”), which will be open from September 7 to October 28, 2011, owners of registered marks in current use can apply to opt-out of the .XXX process and reserve names in order to ensure that those names are not registered as .XXX domain names by others. At the close of the Sunrise Period, if no conflicting application by an adult-industry applicant has been made, the reserved name(s) will be removed from the pool of domain names available for registration. The opt-out fee is approximately $400.

Sunrise Period B is the only opportunity for trademark owners to proactively block .XXX domains containing their marks and we recommend clients consider it. It’s an easy and relatively inexpensive process that could save your company much hassle and legal fees in the long run, particularly if your trademark is well-known and attractive to cyber-squatters.

eBay purchased keywords from online advertising services, such as Google Adwords, that included registered trademarks in order to direct potential customers seeking to purchase those goods to its website.   However, the goods being sold included both legitimate goods as well as counterfeit and unpackaged goods from non-European Economic Area (EEA) countries thereby infringing upon L’Oréal’s trademarks.  eBay implemented its own precautions against infringement by incorporating a take-down notification system and operating a Verified Rights Owner Program (VERO), however L’Oréal was not a member of the VERO program and rather turned directly to eBay for assistance with handling the infringing goods.  However, unsatisfied with eBay’s response, L’Oréal pursued its action before the High Court of England and Wales which referred several questions to the European Court.

In addition to joint liability, the Court considered the extent of injunctive relief that intellectual property owners could obtain against online intermediary websites, such as eBay, whose services are used as tools to infringe upon the IP of others.  The Court found that it could impose injunctions against online marketplaces requiring them to suspend accounts of those utilizing the site to sell fraudulently-marked goods or to employ measures which would make it easier to identify infringers.  However, the injunction would not require the website to actively monitor all activity of the website or prevent the sale of all goods bearing a particular trademark.

By finding eBay liable for joint liability, the European court differs from cases upheld in the United States.

In the Tiffany (NJ) Inc. v. eBay, Inc., cases in the federal district courts in New York, the federal courts rejected Tiffany’s argument that an intermediary website may have secondary liability thrust upon it if it has “generalized” information that its website was being used to sell infringing merchandise.  The court deduced in Tiffany that even though eBay had general knowledge of infringement by various sellers, it did not require eBay to prevent the same sellers from selling goods via their eBay accounts because general knowledge of infringement is insufficient to determine that actual infringement occurred.  eBay would have been liable, based upon Inwood Labs., Inc. v. Ives Labs., Inc. 456 U.S. 844 (1982) if it continued offering its services to sellers it knew or had reason to know were infringing on the mark’s holder’s marks.

Practical Considerations

What does this decision mean for clients who operate websites used or accessed from the European Union?

This decision suggests that, in the E.U., website owners might consider taking a more active role in addressing and preventing infringement upon learning of potential infringement from a trademark holder.  Indeed,  although an exemption from liability exists under the European E-Commerce Directive, any active role by the website owner in promoting items for sale by users may negate this exemption.

The facts are straightforward. The dispute focuses on promotional pictures that the studios used to promote movies that were adaptations from the out-of-copyright books including ‘Gone with the Wind’, ‘Tom and Jerry’ and ‘The Wizard of Oz’. Art & Vintage Entertainment Licensing Agency (AVELA) got hold of movie posters, “lobby cards”, and the like that bore the images and used them as the basis for things like t-shirts, lunch boxes, and action figures. The studios sued AVELA for a permanent injunction and got one. The publicity images were not taken from film footage, but were created independently. The publicity materials, as distributed, did not comply with the 1909 Copyright Act’s notice requirements. Consequently, the materials fell into the public domain.

The Eighth Circuit reversed and affirmed. The basis of the reversal, in part, was based on the images identical to the ones on the old posters, cards, press books, and other items had that had become public domain material couldn’t provide the basis for an infringement claim.

The Eighth Circuit panel affirmed the injunction to the extent it barred AVELA from using more than just the images themselves. Adding a catch phrase, turning a two-dimensional picture into a three-dimensional figurine, and making other changes or additions, the court held, infringed the copyrights in the characters they depicted:

In essence, the panel of justices finds that the features of film characters can be copyrighted even if these characters were based on prior work. According to the decision:

“We agree with the district court’s conclusion that Dorothy, Tin Man, Cowardly Lion, and Scarecrow from The Wizard of Oz, Scarlett O’Hara and Rhett Butler from Gone with the Wind, and Tom and Jerry each exhibit “consistent, widely identifiable traits” in the films, that are sufficiently distinctive to merit character protection under the respective film copyrights…. Put more simply, there is no evidence that one would be able to visualize the distinctive details of, for example, Clark Gable’s performance before watching the movie Gone with the Wind, even if one had read the book beforehand. At the very least, the scope of the film copyrights covers all visual depictions of the film characters at issue, except for any aspects of the characters that were injected into the public domain by the publicity materials.”

Douglas asks for $75,000 in damages against Mattel.

Other celebrities have won such cases based on a clause of the Trademark Act of 1946 stating that it is illegal to use an image or likeness to make it appear the person in endorsing a product. Such celebrities include Vanna White, the wheel turner in ‘Jeopardy’ as well as Tom Waits and Bette Midler for sound-alikes. Waits sued Frito-Lay Inc. in 1992 and Midler sued Ford Motor Co. in 1988. The latter two differ in that both companies had asked the respective singer to do a song for a commercial, and when the singer refused, the company proceeded to hire a sound-alike performer.

Below are photos from the packaging. The front package alone might not trigger liability but the two side panels and backsides of the package clearly identify Douglas. Liability becomes more likely as the connection gets stronger. In her suit, Douglas says that she “continues to make public appearances in association with” her character. Mattel introduced the “Elly May” Barbie doll in December 2010, and even uses Douglas name in promotional materials for the doll. A settlement in the Elly May case looks to be prudent, especially given the amount demanded.

Lady Gaga, on the other hand, has conditioned that any photographer who asks for a press pass to Lady Gaga’s performances agree that copyright in all photographs taken during the performance shall be owned by Madonna. Here is the agreement. http://images.tbd.com/entertainment/gaga-release.pdf Not only is copyright in photographs not yet taken (expectancies) transferred, but the photographer agrees to take down from websites after four months.

This automatic transfer of copyrights is a theme in the medical arena as well. Some doctors are conditioning their providing of services upon the patient agreeing that any commentary that the patient writes is assigned to the doctor. This facilitates a speedy take down of any review that a doctor does not agree with… which some believe is unenforceable; and others believe is effectively a gag-order. The Santa Clara University High Tech Law Institute and The Samuelson Law, Technology & Public Policy Clinic at the University of California Berkeley School of Law have begun a website to address this practice: http://doctoredreviews.com/

While fair use in copyright keeps expanding, the pressure both for control of copyright content and for commercial activities using copyright content to pay full freight is stepping up.

1. Rock River Communications, Inc. v. Universal Music Group, Inc., 2011 WL 1598916 (C.D.Cal. April 27, 2011)

We’ve had the DMCA for a little over a decade now, and the case law reflects that we are beginning to chart the navigational paths through its topography. In this case, a remixer, the plaintiff, took a license from someone who purported to be the authorized licensee of the specific Bob Marley music at issue.

The defendants claim they are the correct licensor of that particular Bob Marley music; and, defendants succeeded in getting the allegedly infringing remixes removed from the market.

This case is one brought by one of those driven out of the market as retaliation for the newly remixed pieces being removed by use of Section 512. In short, the plaintiff is asserting that Section 512(f) is being incorrectly applied. The court agreed holding that (f) did not apply because the recipient of defendant’s take-down was not an ISP, but was a retailer. Section 512(f) did not apply both because iTunes wasn’t performing the functions contemplated by 512(c) and because iTunes has a financial interest, as such, the C&D letter isn’t the functional equivalent of a 512(c)(3) take-down notice.

2. Amaretto Ranch Breedables, LLC v. Ozimals, Inc., 3:10-cv-05696-CRB (N.D. Cal. April 22, 2011)

In this case of the dueling take-down letters, two virtual animal vendors on Second Life sent numerous take-down demands regarding the alleged infringement of their respective bunnies and horses. In an unorthodox procedural play, the horse vendor asked the court to enjoin Second Life from acting on the bunny vendor’s take-downs. The court threw out the predictable Section 512(f) retaliatory claim brought by the horse vendor, in this the most recent episode of this ongoing saga.

The court held that because Second Life forbore from acting on the bunny vendor’s take-down there was no standing for a Section 512(f) action. While the horse vendor may be pragmatically correct that the sending of the specious take-down should be the only condition precedent to (f) eligibility, the court read the statute literally and ruled that there is a further second condition precedent to getting standing to file the (f) action is that the recipient of the take-down actually have taken it down.

A 37 cent stamp is at the heart of this copyright dispute that has been percolating through the courts like coffee in an old stovetop pot. It began in the Court of Claims; went up to the Court of Appeals for the Federal Circuit (CAFC); was remanded and is now issuing from the Court of Claims again, but narrowly this time, solely on a determination of damages.

For those who have not been following this case here is a thumbnail summary: This is a case that arose from a sort of fairy tale with a twist. An amateur photographer visiting the Korean War Veterans’ during a snowstorm took a terrific picture. To the amateur photographer’s delight, the U.S. Postal Service paid him $1,500 for that photograph to be the subject of a stamp. Up to that point, it is sort of a sweet story of an amateur photographer getting a bit of recognition and reward.

But, then the story takes on a darker tone in that the photographer sued the postal service claiming copyright infringement; and the postal service raised the usual battery of defenses including VARA, Fair Use and others.

The photographer claimed that he was owed damages in the amount of $3,024,276.20 (three million dollars and change) as representing ten percent on the 86.8 million 37-cent stamps and related merchandise that the postal service sold in the two years between 2003 when the stamp was issued, and 2005 when the stamp was retired. The CAFC found that the postal service’s use was not protected by the fair use defense; and the issue of damages was remanded for calculation to the lower court.

The court addressed two questions. First what damages are owed to the photographer; and second, whether pre-judgment interest applies?

As to question 1, the court found that $5,000 was the amount owed. The court was governed by the relevant statute that provides for a ‘zone of reasonableness’ to determine the actual damages; and the court found compelling the testimony of U.S. Postal Service management that the postal service is barred from paying royalties by long standing policy; and that the absolute top amount ever paid in the one-time negotiations was $5,000 dollars. The court ruled that $5,000 was the amount owed to the plaintiff photographer as that amount represents the top amount that the plaintiff would have obtained in the one-time negotiations with the postal service.

Question 2 was answered in the negative. The court noted that while pre-judgment interest may be possible in private copyright suits, there is no provision for pre-judgment interest in claims against the United States unless specifically permitted by contract or by act of Congress. Pre-judgment interest on the $5,000 award was denied.

An open question is whether the plaintiff photographer is entitled to a new amount of $5,000 from the postal service or whether the postal service can offset the $1,500 paid to the plaintiff photographer in 2002.

The word ‘blog’ began as a typo, and now it’s a genre all on its own. And with the emergence of a new genre comes a category of case law that arises specifically from that genre. April 22, 2011, RightHaven failed in its effort to get a copyright infringement judgment, and instead succeeded in getting a judge to find, even a 100% republications, can be fair use.

Consistent with RightHaven’s pattern of eschewing what might be solved by a simple DMCA Take Down request, and instead, precipitously filing a federal copyright infringement action, this action was intended to halt defendant’s 100% republishing of a newspaper article discussing the Las Vegas alleged focus on minorities as illegal immigrants. The website is owned and run by the defendant non-profit and begun when a Somalian Muslim leader, the head of a mosque, was arrested in the airport. Based in Portland, Oregon, “At CIO, we are not talking about black and brown, we are talking about Somalis and Ethiopians, Congolese and Liberian, Mexican, Korean, Palestinian and Afghani community leaders working with other Latino leaders, African American leaders, and progressive white folks.” http://www.interculturalorganizing.org/

The court carefully analyzed the four factors of Section 107 Fair Use finding without reservation that fair use applies:

a. Purpose and character of the use: transformative and noncommercial.

b. Nature of the copyrighted work: informational and factual;

c. Amount and substantiality of the work used: “…although the defendants posted the work in its entirety, the amount used was reasonable in light of the purpose of the use, which was to educate the public about immigration issues.”

d. Effect on the market: “… the plaintiff has failed to allege that a “market” exists for its copyright at all, and the court declines to simply presume the existence of a market.”

Concluding, the court emphasized the fair use defense applicability and then went on to comment negatively on the plaintiff’s business model:

“The court finds that the defendant’s use of the copyrighted article in this case constitutes fair use as a matter of law. The article has been removed from its original context, it is no longer owned by a newspaper, and it has been assigned to a company that uses the copyright exclusively to file infringement lawsuits. Plaintiff’s litigation strategy has a chilling effect on potential fair uses of RightHaven-owned articles, diminishes public access to the facts contained therein, and does nothing to advance the Copyright Act’s purpose of promoting artistic creation.”

A single sentence sent to a list serve formed the basis of the copyright infringement action in this case.

Specifically, an attorney sent a single sentence seeking information regarding a certified public accounting firm which he suspected had over-billed his client. One of the recipients of the single sentence email forwarded it to the CPA firm in question. The author lawyer took umbrage that his under cover effort was revealed; filed and obtained a copyright registration and filed a copyright infringement action naming the ‘Does’ of the entire list serve as the defendants.

The single sentence, in its entirety, is this: “Has anyone had a problem with White, Zuckerman . . . CPAs including their economist employee, Venita McMorris, over-billing or trying to churn the file?”

The court in the Central District of California held that the single sentence was uncopyrightable; and went further to say that if it had been copyrightable, then the forwarding of the email would have been protected by the Fair Use Doctrine.

“This is unsurprising. In an age of blogs, listservs, and other online forum, a person’s short comment in cyberspace is frequently quoted in its entirety as others reply or forward it elsewhere. It would be strange, dangerous even, if such quotation subjected the copier to liability and a federal lawsuit. Such heavy-handed tactics are akin to using a cannon to kill a mosquito; they carry the same attendant risk of collateral damage by chilling free speech. A free and vibrant democracy depends upon the unfettered exchange of ideas.”

This is shift means that the anomalous venue because the normative one, as this article explains in greater detail.

One of the most commonly asked questions authors pose when they read their first book contract is, “What are special sales?”
The simple answer is that they are sales outside of “regular trade channels” – that is, bookstores. An example might be a fly-fishing book sold in an outdoor clothing store or a baby-naming book sold near the checkout counter of a maternity shop.
The phrase is buried in a tedious list of royalty rates applicable to marginal retail outlets. The royalty is expressed as a function of the publisher’s net receipts – as opposed to the list-price royalty paid by most trade publishers for bookstore sales. A net royalty always tells you that the cost of generating sales is higher than that for regular trade channels. In the case of special sales, those gift shops and stationery and maternity stores insist that the books they order from the publisher are not returnable. That means that publisher must slash its discount, leaving little by way of profit margin.

Practice Tip: when reviewing the publishing agreement, keep your coverage of the ‘special sales’ clear and transparent for the revenue from those non-book markets where your books are going to sell.

Max Fleischer, while in his studio of the same name, created Betty Boop in 1941. Thereafter a tangled chain of transfers followed, including a transfer to Paramount Pictures and a comprehensive campaign by the Fleischer family to gather up all the disparate assignments. The family, believing that they had regained ownership to the work, sued A.V.E.L.A who was making unauthorized use of the image for sales of t-shirts and handbags.

The Ninth Circuit affirmed the trial court’s dismissal of the case. In the copyright portion of the case, the court held that the family’s claim of ownership failed for lack of proof of one of the chains of title, and an alternative theory of complete title was nil for failing to raise that alternative theory in the opening brief.

The trademark claim is also dismissed, but for an unorthodox reason, that the trademark fails as a trademark for the reason that it is functional. The court generated this conclusion on a theory that was neither argued nor briefed. Briefly, the court held that because the consumer buys the image on the t-shirt and the handbag for the pleasing image, that rendered the image functional and not a candidate for trademark protection.

To the discomfort of any trademark professional or college logo licensing group, the court placed emphasis on the fact that the defendants’ infringement was less problematic because they did not ‘designate the merchandise as official or otherwise a affirmatively indicate sponsorship’. This is an opinion that flies in the face of 9th Circuit opinions that state that when the trademark is the very thing that is being infringed, that that infringement is not insulated by the functionality doctrine. The recent case of Automotive Gold v. Volkswagen of America (457 F.3d 1062, 9th Cir. 2006) comes to mind.

Finally, the court seems confused about where copyright ends and trademark begins. This opinion suggests that the court is simply set upon not finding a valid copyright chain of title under the mistaken thought that if it did, that copyright would go on in perpetuity: ‘If we ruled that A.V.E.L.A’s depictions of Betty Boop infringed Fleischer’s trademarks, the Betty Boop character would essentially never enter the public domain.’

This is a case that we’ll be either seeing in an en banc review or we’ll be scratching our heads about for a long time to come.

Softech holds itself out as a ‘premier provider of streaming media software platforms’, while Internet Technology characterizes Softech as ‘a rogue subcontractor who did little, but merely integrated preexisting software creating largely unusable and unused work product’.

Both agree that Softech provided seven pieces of software to IT. After paying Softech nearly 3.3 million dollars, IT was in possession of software that Softech had installed on IT’s servers with Softech reserving no right to repossess.

Softech and IT agree that IT thereafter modified the software on IT’s servers to ‘debug and make routine modifications to support existing functions or support changes in business needs.’

Softech claims such modifications were copyright infringements; IT defends stating that the modifications were an essential step both, to make the software work and to make the software worth using and helpful.

The court in the Eastern District of Virginia held that IT’s use of the Softech software was used in no other manner than that envisioned in the creation and installation of the program; and as such, the essential step defense properly applied.

This dispute began as a feud between two trucking companies regarding maps depicting marketing areas. Neilsen sued claiming that the Neilsen maps were protected by copyright as compilations; and, that Truck Ads’ display of those proprietary ads on their website was copyright infringement.

Truck Ads denies that it has posted the Nielsen ads on their website; and, in the alternative, if they did that the Nielsen maps are uncopyrightable.

The parties were focusing their dispute on whether the maps were copyrightable, but then Truck Ads took an unescalating step of filing a declaratory judgment counterclaim asserting that Nielsen is misusing their copyrights against Truck Ads.

Nielsen moved for summary judgment on the grounds that copyright misuse is a defense and not a cause of action.

Judge Rebecca Pallmeyer of The Eastern Division of the Northern District of Illinois rejected the copyright misuse defense as a vehicle for affirmative relief for the reason that the condition precedent to a copyright misuse arising is absent. The court held that there is no claim that the underlying infringement claim is wholly lacking in merit. “Plaintiff’s allegation that Defendant acted unlawfully when it chose to copy Plaintiff’s maps is not frivolous, unsupported by law, or clearly contradicted by the facts in the record, as it must be to constitute copyright misuse.”

Plaintiff’s motion to dismiss was granted.

One theory of the denial is the site-specific art like Wildflower Works is categorically excluded from protection under VARA. The other theory of denial is more interesting. It is not that Wildflower Works failed the test for originality. Chapman Kellye’s piece clearly satisfied that; but the court held that a living garden lacked the kind of authorship and stable fixation normally required to support copyright. Simply put, gardens were planted and cultivated, not authored. Further, a garden’s constituent elements were alive and inherently changeable, not fixed.

I suppose that means my law partner can’t get a copyright in her son, as he is alive and inherently changeable, too; and, maybe I’m barred from getting a copyright on our firm mascot, my dog, Brecon, for the same reason.

Defendant, Compacstone, sells marble and quartz for home, particularly kitchen, installation; and hired Plaintiff Fodere to photograph a kitchen featuring defendant’s marble and quartz. Defendant and Plaintiff, both speaking Spanish, negotiated the permissible uses that may be made of the resulting photographs. This oral license was in addition to an invoice that included a written heading “Rights Licensed” under which the words “for public relations, collateral and website usage for an unlimited time” were written.

Fodere sued for copyright infringement claiming that Compacstone’s use of the photograph in a magazine advertisement exceeded the terms of the rights license and constituted copyright infringement. She demanded one thousand dollars in compensation for the unauthorized use; and sued after her demand letter went unanswered.

Compacstone responded with the defense that Fodere had orally granted a license to advertising usage and recalled that in that conversation during which both spoke Spanish, both agreed that the photographs could be used in “para publicidad” which translates as ‘advertising’.

In a 17-page opinion, the Miami District Court lays out a comprehensive analysis of copyright infringement and focused on Fodere’s deposition testimony in which she agreed that she had that discussion and that “publicidad” translates as “advertising”. The court ruled the Plaintiff granted Defendant an oral nonexclusive license to use the photograph and that the license included the right to use the photograph in advertisements. The defendant’s summary judgement motion was granted; and the action dismissed with prejudice.