Tuesday, December 31, 2013

Index of Articles in 2013

Well, 2013 turned out to be a very busy year (on a personal level, so there aren't as many articles posted here during the year!), and 2014 promises to be very interesting. Given the public debates about copyright reform, we will probably be covering copyright law more than previously. However, the 1976 version of the Copyright Act took over two decades to finalize ("In fact, former Register of Copyrights Barbara Ringer, who had worked closely with Congress for much of the 1976 revision process, later called it a 'good 1950 copyright law.'" from March 20, 2013 Speech By Maria Pallante), so I do not expect that all of the issues raised about digital publication and distribution (among others) will be resolved overnight.

We expect to see more proposals on the trademark side as well, although it's likely that members of Congress may avoid controversial issues this year. As a result, it is hard to predict whether we expect to see any revisions to the COICA/PIPA/SOPA drafts (relating to counterfeiting by predatory foreign websites), given that these proposals each had their own challenges in public debate.

I look forward to your comments in the coming year, and wish you all the best in your own practices!

Chronological Index of Articles Posted in 2013:

Wednesday, October 2, 2013

New Copyright Proposal Addresses Performance Rights

According to the BNA, Rep. Melvin L. Watt (D-NC) introduced the Free Market Royalty Act (H.R. 3219) on September 30, 2013.  See “Rep. Melvin Watt Introduces Bill to Create Performance Right for Recording Artists,” BNA’s Patent, Trademark & Copyright Journal – Daily Update, No. 191 (Oct. 2, 2013).  Rep. Watt stated that this bill provides “a ‘performance right’ that will obligate AM/FM radio stations to compensate performers for the use of their music just as cable, satellite and internet radio are obligated to do.”  Press Release, “Congressman Watt's Statement on the Introduction of H.R. 3219, the Free Market Royalty Act,” October 1, 2013.  (Note that the index of Rep. Watt’s press releases indicates that this was issued on October 1.  The release itself shows no date.  Congress.gov indicates it was introduced on September 30, and has already been referred to the House Committee on the Judiciary.)

Rep. Watt explains that under current law, when an AM or FM station plays a song, the composer and the publisher both receive royalties and the performer does not.  Press Release.  This bill proposes to level that playing field, and put compensation for music broadcasting on par with international counterparts.  Id.

As of this writing, there are no co-sponsors to the bill.  The text of the bill has not been received by the Library of Congress to post on its website, which states instead:

“As of 10/02/2013 text has not been received for H.R.3219 - To amend title 17, United States Code, to provide copyright owners in sounds recordings with the exclusive right to negotiate in the marketplace the performance of their works to the public by means of an audio transmission, and for other purposes.

“Bills are generally sent to the Library of Congress from GPO, the Government Printing Office, a day or two after they are introduced on the floor of the House or Senate. Delays can occur when there are a large number of bills to prepare or when a very large bill has to be printed.”

Undoubtedly, this lack of information is the result of the government shutdown, which took effect on October 1, 2013 at 12:01am.  (The Copyright Office has a notice on its site explaining that the site is down because of the government’s shutdown, and will not be available again until the office reopens.)  Current status, list of co-sponsors and any applicable text of the bill can be found here once it is made available by the Library of Congress.

Thursday, August 15, 2013

IPEC Victoria Espinel Steps Down

Intellectual Property Enforcement Coordinator, Victoria Espinel, has stepped down from her position, effective Friday, August 9, 2013. Andrew Ramonas, "White House IP Chief Victoria Espinel Steps Down," Corporate Counsel, Aug. 13, 2013. Until a new IPEC is officially named, Howard Shelanski, administrator of the U.S. Office of Information and Regulatory Affairs, will act as Interim IPEC. Id.
According to Corporate Counsel, "Congress created the intellectual property enforcement coordinator post in the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (text), and the Senate confirmed Espinel as the coordinator in December 2009. She previously was an IP law professor at George Mason University School of Law and the first assistant U.S. trade representative for intellectual property and innovation." Id.


It has been suggested that Ms. Espinel will be moving over to the Business Software Alliance, although no formal announcement has yet been made. See, e.g., Alex Byers, "Where will Victoria Espinel land? - NYT: NSA leaks hurt cyber plan's chances - Senators step up Bitcoin scrutiny," Politico Morning Tech, Aug. 13, 2013; The Deadline Team, "Nation's First IP Czar Steps Down," Deadline, Aug. 12, 2013; Jennifer Martinez, "Obama's intellectual property chief steps down," Hillicon Valley (The Hill's Technology Blog), Aug. 12, 2013. 
Updates from the IPEC's Office can be found here: http://www.whitehouse.gov/omb/intellectualproperty. Interestingly, this site still lists Ms. Espinel as serving as the IPEC.

Prior Posts on the Privacy and IP Law Blog about the IPEC and its reports can be found here: http://privacyandip.blogspot.com/search/label/IPEC.

Monday, July 22, 2013

USPTO Extends Deadline for Voluntary Best Practices Study

The USPTO recently requested comment from the public on the topic of "processes, data metrics, and methodologies that could be used to assess the effectiveness of cooperative agreements and other voluntary initiatives to reduce intellectual property infringement that occurs on-line—such as copyright piracy and trademark counterfeiting." See Prior Blog Post, White House Releases Second Joint Strategic Plan for IP Enforcement (June 20, 2013). The original deadline for comment was July 22, 2013.

On July 17, 2013, the USPTO extended the deadline until August 21, 2013.

Interested parties should respond to the current regulation (Fed. Reg. No. 2013-17166, see explanation in "Voluntary Best Practices Study; Extension of Comment Period") and include the information itemized in the original request (Fed. Reg. No. 2013-37210).

Sunday, July 21, 2013

Online Piracy and Counterfeiting: Ad Networks Adopt New “Best Practices Guidelines”

On July 15, 2013, the US Intellectual Property Enforcement Coordinator (IPEC), Victoria Espinel, announced the adoption of best practices for online advertising, with an aim to reduce the influx of counterfeiting or pirating conduct. The IPEC explained that these practices are aimed at "reducing the flow of ad revenue to operators of sites engaged in significant piracy and counterfeiting." Victoria Espinel, "Coming Together to Combat Online Piracy and Counterfeiting," Office of Management and Budget (July 15, 2013). The participants in this program – at least at the outset, are 24/7 Media, AOL, Conde Nast, Google, Microsoft, SpotXchange and Yahoo! Id.   While supporting and encouraging initiatives like this, the IPEC also cautioned that these activities be undertaken in the context of other interests in the Internet marketplace:

"It is critical that such efforts be undertaken in a manner that is consistent with all applicable laws and with the Administration's broader Internet policy principles emphasizing privacy, free speech, fair process, and competition. We encourage the companies participating to continue to work with all interested stakeholders, including creators, rightholders, and public interest groups, to ensure that their practices are transparent and fully consistent with the democratic values that have helped the Internet to flourish. We also encourage other participants in the online advertising space to consider adopting voluntary initiatives that protect ad networks, publishers, advertisers, creators, rightholders, and above all, consumers."

Id. The IPEC's blog post includes links to the public statements made by AOL, Google, Microsoft and Yahoo! about these best practices. A copy of the best practices themselves can be found here.

Earlier Online Advertising Initiatives

In March 2012, the IPEC announced another best practices initiative: IPEC, "Advertisers and Advertising Agencies Address Online Infringement Through Best Practices," Spotlight at 3 (Mar. 2012). Specifically, the American Association of Advertisers ("4As") and the Association of National Advertisers ("ANA") strongly encouraged their members to take affirmative steps to prevent U.S. advertisers from placing their ads on predatory foreign websites ("PFWs") – those websites based outside U.S. borders that target U.S. consumers and offer predominantly counterfeit products or pirated content. Press Release, "ANA, 4As Release Statement of Best Practices Addressing Online Piracy and Counterfeiting" (undated); Member Bulletin, "Media Matters: Statement of Best Practices to Address Online Piracy and Counterfeiting," (June 1, 2012). 

These affirmative steps include, for example, insertion of language in ad placement contracts that requires ad networks and other intermediaries involved in U.S.-originated advertising campaigns to take commercially reasonable measures to prevent ads from appearing on PFWs.  Member Bulletin (June 1, 2012). Other steps include requiring intermediaries involved in the serving of an advertisement to respond expeditiously to complaints by rights holders or advertisers and to provide remediation to advertisers whose ads have been misplaced on PFWs. Id.


The problem of online counterfeiting and piracy undertaken by PFWs causes serious damage to the U.S. economy and U.S. businesses. See, e.g., StopFakes.com, "Top 10 Ways to Protect Yourself From Counterfeiting and Piracy" (undated). Every initiative aimed at reducing the impact of these activities is welcome, assuming that other rights (such as First Amendment, privacy, competition and fundamental due process) are not sacrificed. Hopefully, we will see more initiatives from other key players in the Internet ecosystem that are not only aimed at reducing online piracy and counterfeiting, but also at effectively eliminating the incentive for PFWs to capitalize on U.S. intellectual property rights. By eliminating the incentive, perhaps the "cost" to offer pirated content and counterfeited goods will simply be too high, and these entities will choose to no longer offer them.

Thursday, June 20, 2013

White House Releases Second Joint Strategic Plan for IP Enforcement

Today, the IPEC (Intellectual Property Enforcement Coordinator) announced that the White House has released its second Strategic Plan for IP Enforcement. The IPEC's blog provides more information about what is included in the update: http://www.whitehouse.gov/blog/2013/06/20/intellectual-property-key-driver-our-economy. Among the myriad updates in this report are the following:
  • Report on private sector "voluntary" agreements to combat counterfeiting and piracy:
    1) Center for Safe Internet Pharmacies (jointly established by American Express, Discover, eNom, Facebook, GoDaddy, Google, MasterCard, Microsoft, Neustar, PayPal, Visa and Yahoo!);
    2) Joint initiative by AT&T, Cablevision, Comcast, Time Warner Cable, and Verizon along with music labels and movie studios to voluntarily reduce online piracy;
    3) Creation of best practices by payment processors such as American Express, Discovery, MasterCard, PayPal and Visa to withdraw payment services for online sales of counterfeit and pirated goods; and
    4) The Association of National Advertisers' and American Association of Advertising Agencies' joint leadership pledge not to support online piracy and counterfeiting with advertising revenue (see MPAA's report about the issuance of this pledge);
  • Of the 20 legislative recommendations made in the Administration's March 2011 White Paper on Intellectual Property Enforcement Legislative Recommendations, seven of them have become law.
The Administration re-articulated its continuing concerns about the following areas: 1) abusive patent litigation tactics that pose "a significant and growing challenge to innovation" and is seeking introduction and passage of various patent reform recommendations; 2) efforts by foreign governments to require the transfer of trade secrets or other proprietary business information as a condition of market access or the ability to do business in that country; and 3) changes in technology, social norms, business models and global distribution models that further complicate IP enforcement concerns (such as cloud computing, mobile computing, data storage, information security and 3D printing). It reports having made strides already to address these concerns, but recognizes that more work remains to be done.

The USPTO simultaneously issued a request for public comment about Voluntary Best Practices to curb online counterfeiting and piracy. A summary of the Notice and its components can be found here: http://www.regulations.gov/#!documentDetail;D=PTO-C-2013-0036-0001; the actual Federal Register Notice is here: http://www.regulations.gov/contentStreamer?objectId=09000064813341ca&disposition=attachment&contentType=pdf. According to the Notice, comments must be submitted by July 22, 2013.

The first Strategic Plan was announced in 2010. Prior Privacy and IP Law Blog posts about the IPEC and other IP enforcement initiatives/updates can be found here: IPEC.

Friday, April 12, 2013

Yankees Successfully Oppose Registration of “BASEBALLS EVIL EMPIRE” Trademark

On February 8, 2013, the Trademark Trial & Appeal Board (“TTAB”) sustained the opposition filed by the New York Yankees Partnership (“Yankees”) against the registration of “BASEBALLS EVIL EMPIRE” filed by Evil Enterprises, Inc., on likelihood of confusion grounds and on the ground that the mark falsely suggests a connection with the Yankees baseball team.  New York Yankees Partnership v. Evil Enterprises, Inc., Opp. No. 91192764 at 25 (TTAB Feb. 8, 2013) (non-precedential).  The Yankees did not succeed on its claim that the mark would be disparaging.  Id.

Evil Enterprises (the “Applicant”) filed its application for registration of the mark BASEBALLS EVIL EMPIRE in connection with clothing (Class 25) on July 7, 2008, alleging a future intent to use the mark in commerce.  On its website, Applicant indicated that the goods would be directed to consumers who were looking for Yankees-related merchandise:  “If you are passionate about the New York Yankees then you have come to the right place.”  Id. at 5.

Record evidence also indicated that the Yankees had come to be known as the “evil empire” over the years, and even played the “ominous music from the soundtrack of the STAR WARS movies at baseball games.”  Id. at 5, 12.  Since being coined by a rival baseball club to refer to the Yankees, the “term EVIL EMPIRE has . . . been taken up by the media, Yankees’ fans, and detractors as a reference to the Yankees.” Id. at 5.

It was because of this implicit adoption of the phrase by the Yankees that the portion of its opposition alleging disparagement was denied.  Id. at 25.

In connection with the claims of likelihood of confusion under § 2(d) and false suggestion of a connection between the applicant’s goods and the Yankees under § 2(a), however, the Yankees’ opposition succeeded.

Likelihood of Confusion (§ 2(d))

In its opposition, the Yankees alleged that the applicant’s mark so resembled the mark “EVIL EMPIRE which has come to be associated with opposer [the Yankees] as to be likely to cause confusion.”  Id. at 8.  The court based its analysis on the du Pont factors, noting that not all of them would be relevant in every case, “and only factors of significance to the particular mark need be considered.”  Id. (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).

The Yankees, as the Opposer, bore the burden to introduce sufficient facts to allow the fact finder to conclude that confusion, mistake or deception was likely.  Id. at 9 (citations omitted).  Notably, however, the Yankees were not required to actually use the mark in commerce in order to establish their rights to the mark.  All that was required was that the public associate that mark with their goods and services.  Id.  “[T]he public’s adoption of [the mark] to refer to [opposer] is enough to establish trade name and service mark use.”  Id. (quoting Martahus v. Video Duplication Servs., Inc., 3 F.3d 417, 27 U.S.P.Q.2d 1846, 1845 n.9 (Fed. Cir. 1993)).

In support of their position, the Yankees introduced hundreds of news articles, stories and blog entries, as well as admissions by applicant showing that the phase “Evil Empire” had come to be known by the public to refer to the Yankees Ball Club.  Id. at 11.  Applicant even included the following sales pitch on its web site:  “Baseballs Evil Empire takes pride in our merchandise and our great task of alerting all baseball fans and the like to send the message out loud that the Yankees are Baseballs Evil Empire.”  Id. at 12.

The court went on to analyze whether the mark had become famous, the level of similarity between the goods, channels of trade and classes of consumers, as well as that of the marks themselves as to “appearance, sound, connotation and commercial impression” and the remaining duPont factors.  Id. at 17.

Notwithstanding the many duPont factors weighing heavily against its position, the applicant also argued that its use of the mark was a “spoof and parody of the New York Yankees baseball club, and thus no likelihood of confusion can be established . .  .,” an argument that the court rejected when it held that “[p]arody . . . is not a defense to opposition if the marks are otherwise confusingly similar, as they are here.”  Id. at 20 (citations omitted).  The court found that a likelihood of confusion had been shown.

False Association (§ 2(a))

To establish a claim of falsely suggesting a connection between the mark and the opposer, the opposer must prove “(1) that the applicant’s mark is the same or a close approximation of opposer’s previously used name or identity; (2) that applicant’s mark would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to opposer; (3) that opposer is not connected with the goods that are sold or will be sold by applicant under its mark; and (4) that opposer’s name or identity is of sufficient fame or reputation that when applicant’s mark is used on its goods, a connection with opposer would be presumed.”  Id. at 20-21 (citations omitted).  Considering all of the evidence previously discussed in the opinion, the court concluded that the Yankees demonstrated that the mark falsely suggests a connection with the Yankees.


As mentioned above, the court concluded that there was a likelihood of confusion, that the mark falsely suggested a connection with the Yankees, and that the disparagement claim could not stand.  As a result, the court sustained the opposition on two of the three grounds, and registration was refused.

For more information about this decision, the following links may be of interest:

John L. Welch, “Yankees Win!  TTAB Sustains Opposition to BASEBALLS EVIL EMPIRE on Confusion and False Association Grounds,” TTABlog, Feb. 21, 2013.

Eric Goldman, “N.Y. Yankees Block Clothing Manufacturer's "Baseball's Evil Empire" Trademark Registration,” Techn. & Marketing Law Blog, Mar. 22, 2013.

Joan Schear, “TTAB Rules NY Yankees Baseball's Only “Evil Empire,”” Boston College Legal Eagle Blog, Mar. 22, 2013.

Wednesday, March 27, 2013

FTC Issues New Guidance on Online Advertising Disclosures

On March 12, 2013, the Federal Trade Commission (FTC) released the long-awaited, updated version of its .com Disclosure guidance.  See Press Release, “FTC Staff Revises Online Advertising Disclosure Guidelines,” Mar. 12, 2013.  These guidelines were last issued in May 2000, although FTC staff has been working on modifications since May 2011.  FTC, “.com Disclosures: How to Make Effective Disclosures in Digital Advertising” at 1 (Mar. 2013).

The basic premise of the 2000 disclosure guidelines remains true today:  advertising laws apply to every advertisement – without regard to the form in which it is communicated (print, television, telephone, radio or online).  Id. at 2.  Specifically, the following principles govern:

  1. Advertising must be truthful and not misleading;
  2. Advertisers must have evidence to back up their claims (‘substantiation’); and
  3. Advertisements cannot be unfair.
Id. at 4. However, as a result of three public comment periods and a public workshop over the past two years, the 2013 guidelines provide some additional recommendations dealing with advertisements made available through online media.  Id. at 1.  Specifically,
  1. Online disclosures must be “clear and conspicuous.”  The 2000 guidelines recommended that the disclosures appear “nearby.”  The 2013 guidelines, however, suggest placing the disclosure “as close as possible to the claim they qualify.”  Id. at 6.  The new guidelines provide a lengthy discussion of what constitutes “clear and conspicuous,” and even provide visual examples of successful and unsuccessful disclosures in the Appendix.
  2. Disclosures must be effective regardless of the type of device used to access the site.  Id. at 14.  Some browsers may display the text differently than others, and the disclosures must work regardless of the device used.  Id.  Similarly, some smartphones can only show a portion of a screen that is otherwise viewable in its entirety on a desktop PC.  Id. If the disclosure cannot be made effectively on a specific type of device, the advertisement should not be made available on that device, or it should be modified so that the disclosure is not required.  Id. at 6. 
  3. Disclosures must be visible before the consumer makes the decision to purchase the product.  Id. at 14.  If the consumer may also purchase the product at a brick-and-mortar store, the disclosures must be included in the ad itself, and not merely on the ordering screen, which brick-and-mortar shoppers would not necessarily see.  Id. at 15.
  4. Even “space-constrained” advertisements (such as through Twitter) must comply with the disclosure requirements.  Id. at 15.  Again, if “the disclosure needs to be in the ad itself but it does not fit, the ad should be modified so it does not require such a disclosure or, if that is not possible, that space-constrained ad should not be used.  Id. at 16; see also id. Ex. 15 (noting that in some cases “required disclosures can easily be incorporated into a space-constrained ad,” such as “Ad: Shooting movie beach scene.  Had to lose 30 lbs. in 6 wks.  Thanks Fat-away Pills for making it easy.  Typical los: 1 lbs/wk.”).
 Some other points of note:

  • “A disclosure can only qualify or limit a claim to avoid a misleading impression.  It cannot cure a false claim.”  Id. at 5.
  • “Simply making the disclosure available somewhere in the ad, where some consumers might find it, does not meet the clear and conspicuous standard.”  Id. at 6 (emphasis added).
  • Don’t require consumers to scroll to see the disclosure:  “Advertisers should keep in mind that having to scroll increases the risk that a consumer will miss a disclosure.”  Id.; see also id. at 9  (“Scroll bars along the edges of a screen are not a sufficiently effective visual cue” to cause a consumer to look carefully for a disclosure.).
  • Hyperlinks to disclosures are permitted, but the hyperlink itself must capture the consumer’s attention – don’t use “disclaimer” or “more information” or “terms and conditions” to indicate that the consumer should read the disclosure.  Instead use a phrase that will persuade the consumer that they need to read the linked text before making a purchase, e.g., “Service plan required” or “Restocking fee applies to all returns.”  Id. at 12 & Exs. 5, 6.
  • On a related note, do not use hyperlinked disclosures where health or safety is involved – these types of disclosures should be included within the ad itself.  Id. Ex. 4. 
  • Similarly, do not put disclosures in pop-up windows, since users can avoid them completely if their browsers use pop-up blocking software. Id. at 14.
  • If you are using a multimedia advertisement, the disclosure should appear in the same medium as the ad itself – thus, if the advertisement is in audio form, the disclosure should also be.  Written advertisements should include written disclosures.  Visual advertisements (such as appended to an online video) should be displayed for a “sufficient duration” for the consumer to read both the ad and the disclosure.  Id. at 20.
  • Avoid having visual distractions in the background that would prevent the consumer to be able to focus on the disclosure.  Id. at 19.  “On television, moving visuals behind a text message make the text hard to read and may distract consumers’ attention from the message. Using graphics online raises similar concerns: flashing images or animated graphics may reduce the prominence of a disclosure. Graphics on a webpage alone may not undermine the effectiveness of a disclosure. It is important, however, to consider all the elements in the ad, not just the text of the disclosure.”  Id.
The operative goal with these disclosures is that the consumer actually see them so that they are not confused or mislead about the promises contained in an advertisement.  It is not sufficient for the disclosure to be buried somewhere.  Instead, the disclosures have to be prominently and clearly made, in language that is easy enough for the reasonable consumer to understand.  See, e.g., id. at 6, 20-21.

Other Resources:

Lesley Fair, Fed. Trade Comm’n BCP Business Center, “FTC Reboots .com Disclosures: Four Key Points and One Possible Way to Bypass the Issue Altogether,” Mar. 12, 2013 (concluding that “Advertisers spend a lot of time and trouble dealing with disclosures.  Sometimes there may be no way around it.  But in many cases, the need for a disclosure is really a warning sign that the underlying ad claim may contain some element of deception.  Rather than focusing on fonts, hyperlinks, proximity, platforms, and the whole disclosures rigmarole, how about stepping back and reformulating the ad claim to get rid of the need for a disclosure in the first place?”).

Tuesday, March 12, 2013

Common Questions: Can I Copyright My ‘Knight in Shining Armor’ Story?

The short answer is – perhaps, at least parts of it.  Copyright law protects “original works of authorship fixed in a tangible medium of expression.”  17 U.S.C. § 102.  This protection attaches from the moment at which the expression is recorded – in other words, from the moment the pen hits the paper. 

While fictional stories can contain creative and innovative ways of expressing some common themes, the common themes themselves are not protectable.  These are standard story elements – such as a damsel in distress, who is later saved by the proverbial knight on a white horse (e.g., Rapunzel or Sleeping Beauty), the villain who seeks redemption (e.g., Star Wars), star-crossed lovers whose romance is tragic (e.g., Shakespeare’s Romeo and Juliet), an epic journey through which the hero has several adventures (e.g., The Iliad or the Odyssey), or corruption and betrayal by a close friend leading to a tragic downfall (e.g., Shakespeare’s Julius Caesar).  These story elements have existed for hundreds of years, and can be found even in Greek comedies and tragedies that we studied as students in literature classes or in theater programs. 

These basic story elements are not protected under the Copyright Act, because to prevent others from copying them would render storytelling completely impossible.  They are generic, standard building blocks in any story. 

Stories that include these elements, however, are not completely beyond the protection provided by the Copyright Act.  Instead, the way the story is told – the prose, the narrative, the alliterative descriptions that bring these story elements to life – are all the kinds of unique expression which the Copyright Act protects. 

If someone were to come along and copy verbatim several chapters of a book (or even a shorter amount), the author could still enforce his or her copyrights (subject to some defenses like fair use, expiration of copyright term or independent creation, joint ownership, etc., which are beyond the scope of this article) because of that exact duplication.  The author could not prevent other stories from being written that include a “damsel in distress” element or a “knight on a white horse” element – because those are the generic elements beyond the protection of the Copyright Act.  They can always pursue an action when exact copying of their original, creative text has occurred.

In a recent case, this dichotomy between the protection of the expression versus the lack of protection of an idea was explored further.  In Rucker v. Harlequin Enterprises Ltd., No. 4:12-cv-01135 (S.D. Tex. Feb. 26, 2013), the plaintiff – an author who had written (but not yet published) the first chapter of a romance novel – sued a book publisher for its publication of a full-length novel that allegedly copied her story about a “tall, dark and handsome,” wealthy and powerful male hero, and a beautiful red-haired heroine with green eyes, who was slender, young and strong-willed.  Rucker at 14-15.  She basically argued that the book publisher copied her idea (which she had submitted in a writing contest), put it into a full-length novel, and published it without her knowledge or consent. 

The author did not provide any evidence that the publisher had actually seen her submission, but the Court later concluded that because the works were not substantially similar, there was no need to determine whether the book publisher, in fact, had access to her work prior to its own publication.  Id. at 4 n. 2.   In her complaint, the author identified 40 instances of direct infringement in a summary form, but did not provide any specific examples of them.  Id. at 1.  Because the book publisher provided copies of both works in its motion to dismiss, the Court was able to compare both works side-by-side to determine whether a claim for infringement could survive.  Id. at 1-2.

After reviewing both works, the Court recognized that while there were some similarities between the two works, these similarities were “not in legally protected elements.”  Id. at 12.  The Court explained that “a theme or trope that has long existed is not ‘expression’ that the Copyright Act protects.  Rather, infringement requires copying of constituent elements of the work that are original.”  Id. at 13.  In addition, “material or themes commonly repeated in a certain genre are not protectable by copyright, nor are so-called scenes a faire.”  Id.  “Scenes a faire” are later defined as involving “incidents, characteristics or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic, what flows naturally from these basic plot premises.”  Id. (quoting Atari, Inc. v. N. Am. Philips Cons. Elec. Corp., 672 F.2d 607, 616 (7th Cir. 1982)). 

These elements “are not protected because they are strongly affiliated or connected with a common theme and thus are not creative.”  Id.  In other words, there are limited ways available in which these standard story elements can be described.  The Copyright Act does not preclude others from copying these same standard elements, because the ideas themselves are not copyrightable.  Id. at 9 (“Copyright law does not protect an idea, but only the expression of an idea.”) (citation omitted); see also Russ Berrie & Co. v. Jerry Elsner Co., Inc., 482 F. Supp. 980, 986 (S.D.N.Y. 1980) (“shared characteristics of both parties’ Santa toys of a ‘traditional red suit and floppy cap, trimmed in white, black boots and a white beard’ and ‘nose like a cherry’ [were] common to all Santas and not probative of copying.”) (as quoted by Rucker at 13).

Ultimately, the Rucker Court concluded that “[t]he similarities that [the author] asserts are either stock elements of romance novels or plot elements that naturally flow from the broad themes that the two works share with other works in the same genre.”  Id. at 14.  The Court held that there was no actionable similarity between the two works and dismissed the complaint.  Because the Court held that allowing the plaintiff to amend the complaint would be “futile,” the dismissal was made without leave to amend and with prejudice.

The take-away point from these cases is that unique ways of telling a story will garner protection under the Copyright Act, but one author cannot prevent others from telling stories using the same standard story elements, provided that the other authors tell the stories in their own ways and do not copy verbatim what the original author wrote.

More on the idea/expression dichotomy can also be found in these prior posts:  Common Questions: Can I Copyright My Idea?  and When is a Fictional Character Copyrightable? (and, as later updated).

Sunday, February 3, 2013

Webinar Scheduled for February 12, 2013

Please join me for a webinar to be broadcast live by Thomson Reuters on February 12, 2013, entitled “Brand Protection: Ten Tips to Managing Trademark Rights Effectively.”  In this webinar, I will be joined by two of my colleagues, Christina N. Scelsi (Scelsi Entertainment and New Media Law, PL, Port Charlotte, FL) and Sharra Brockman (Verv, Pittsburgh, PA).

Our panel will address protecting trademark rights from conception to renewal and beyond, provide audience members with a basic grounding in trademark rights in the U.S. We will discuss areas where strategic thinking and planning ahead are beneficial, and give audience members some pointers in protecting their brand portfolios. This session will include a discussion of some recent opinions from the Trademark Trial and Appeal Board to provide some examples of common pitfalls.
Our panel will address the following topics:

1. Picking a Good Brand Name
2. Pre-Application Clearance Searches
3. Benefits of Federal Registration
4. Use and Bona Fide Intent to Use
5. Corrections to a Federal Application/Registration
6. Coping with Initial Refusals
7. Continued Consistent Use
8. Abandonment
9. Proper Use of a Trademark
10. Policing for Infringement/Enforcement

I hope you can join us.  If you are interested in joining us, please register through Thomson Reuters’ official site: http://westlegaledcenter.com/program_guide/course_detail.jsf?courseId=100004202.   

Tuesday, January 1, 2013

New Year’s Resolution: Always Read Terms of Service for Social Media Networks!

You should always read very carefully the various terms of service associated with the social media networks in which you participate – particularly with respect to ownership of the material that you post and/or share on these sites.   In other words, do you know who owns what you post?

Recently, one social media site’s public announcement highlighted this question in appalling clarity.  On December 17, 2012, Instagram announced that it had the right to sell any photo that you took and uploaded using its service – in other words, to “commercialize” it.  (See CNET’s article about the change in terms: Declan McCullagh, Instagram says it now has the right to sell your photos,” CNET, Dec. 17, 2012.) 

If you are unfamiliar with Instagram, it used to be a standalone company, but was recently acquired by Facebook and is used on Facebook to share customized photos with your networks.

Here’s the rub:  the right to distribute (or not to) is actually an exclusive right set forth in the Copyright Act as being owned EXCLUSIVELY by the copyright owner.  17 U.S.C. § 106.  Not by a vendor who handles the distribution.

Unless the author has licensed its ability to redistribute an “original work of authorship fixed in a tangible medium of expression” (as an original photograph surely is) to another, any redistribution of a published work constitutes copyright infringement under 17 U.S.C. § 501, and carries certain remedies and penalties depending on the context.

The public outcry in response to this notice was apparently widespread, as Instagram immediately appeared to retract this statement, and stated that users retain the copyrights in their original photographs even when posting them using Instagram’s tools.  Declan McCullagh and Donna Tam, Instagram apologizes to users: We won't sell your photos,” CNET, Dec. 18, 2012; see also Instagram Blog, “Thank You and We’re Listening,” Dec. 18, 2012.  Its restatement of the policy suggested that Instagram believed the hue and cry to have been solely based on a misunderstanding of the revised terms of use and privacy policies. 

In this restatement, Instagram explained that ownership rights would not change as a result of this policy, and neither would any privacy settings users have already set.  Current Version of Instagram’s Privacy Policy and Terms of Use, updated Dec. 18, 2012.

The Copyright Alliance points out that this explanation does not meant that Instagram cannot commercialize your images – in fact, the text that Instagram removed was merely a disclosure of the ways in which it “can” use your photos:

“Instagram has issued a statement saying that it has heard its customer’s complaints, is removing the clause that most offended its customers, and reverting to its old terms of use. But ironically, the clause that caused the outrage, and which Instagram says it has removed, was merely a disclosure and acknowledgment by the user of how Instagram could use a customer’s images. Removing that clause alone doesn’t change the license the user grants Instagram. Moreover, even if Instagram reverts to its current terms of service, those terms of use not only permit Instagram to commercialize user posted images in virtually unrestricted ways, they pass the responsibility for paying any royalties or fees owed for such commercialization on to the user who originally posted the works.” (emphasis added).  Read the Copyright Alliance’s full article for more on this point, “Instagram Still Has the Right to Commercialize Your Work (or Why You Should Read Terms of Service Carefully),” Dec. 21, 2012.

The lesson to be learned here is to be proactive with all of your social media use – understand what Terms of Service apply to your use, and whether the company will be using your information in a way with which you are not comfortable.  Review carefully to determine whether by using their site, you automatically grant the site a license to use your content (your text, pictures, video, whatever) without specific notice or obtaining your consent to that specific use. 

And, try to stay on top of changes to these policies in case changes are made that further impose on your privacy or intellectual property rights.  Many of these policies have a “these terms can be modified without prior notice” provision, but the sites may also host blogs that announce new features or changes to their services.  You might want to subscribe to them (through RSS feeds or email) so that you are notified promptly of any advertised changes. 

Here are links to some of the more commonly-used social media sites, and their relevant blogs (if available):

·       Facebook (“Facebook and privacy”; privacy policy; terms of service)

·       MySpace (privacy policy; terms of service; “learn more”)

·       Twitter (blog; privacy policy; status)

·       LinkedIn (blog; community guidelines; privacy policy)

·      Instagram (terms of service; blog)

·       Snapfish (terms of service; privacy policy; sharing FAQ)

·       Google (which owns Google+, YouTube, Blogger, Picasa, and Instagram competitor, Snapseed)

·       Reddit (blog; privacy policy; user agreement; rules; “reddiquette”)

You might also be interested in posts from The Copyright Alliance (their article on Instagram is here) or the Electronic Frontier Foundation (their article on Instagram is here) generally, as they both cover issues like these on a regular basis.