Copyrights & Trademarks

Abbott and Costello’s “Who’s on First?” brings back memories of my seventh-grade talent show where I performed the routine with Brandon Berry at Atascocita Middle School.  I can’t remember if we won second or third place — there was stiff competition at AMS and someone with real talent actually won.

Capture-Who1It’s a good thing I did not record the performance and then try to monetize it on YouTube which luckily wasn’t around in 1987.

The people involved with the Tony-nominated play “Hand to God” have other concerns. The play has a scene where the lead does the routine using hand-puppets and now the heirs of William “Bud” Abbott and Lou Costello have sued for copyright infringement.  The lawsuit is here.

So Who, What and I Don’t Know are on defense? That’s Fair.

First you have to figure out if the plaintiffs own the copyright.  According to the lawsuit, the plaintiffs state the copyright was originally held by Universal Pictures Co. after the act appeared in Universal’s One Night in the Tropics film in 1940 pursuant to a work for hire agreement with the two actors.

Then, in 1984, Universal transferred its copyright of the audio/visual depictions from the movies back to the heirs.  Because of the lack of copyright protections for pre-1972 sound records, the plaintiffs admit the sound recordings were not subject to their federal Copyright Act, but the plaintiffs claim they have a New York “common law” claim.   (see the issues facing Sirius/XM in this regard)

The most likely defense will be that the use of the routine was fair use.  Fair use is an affirmative defense to a copyright violation.  Fair use is a factually-specific inquiry and there is no bright line test. Courts consider these four factors:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Jokes and the dramatic arts have had some interesting fair use issues (the Jersey Boys use of Ed Sullivan and an entire production based on the sitcom Three’s Company for example)

According to The New York Times, the plaintiffs’ lawyer says there can be no fair use because “’Hand to God’ is using ‘Who’s on First’ not just to get laughs from the audience but also to get people to buy tickets.”

Why do I think fair use will ultimately prevail?  Because.  Maybe not Today or Tomorrow, but naturally the evidence will show that people are not going to the play just to see that one minute routine within the full production.  However, if the “The Hand of God” can use, why not everyone else which could have a big effect on the potential market for the copyrighted work.  Perhaps the unnamed right fielder should decide.

What about “I Don’t Give a Darn?” Is he in the Public Domain or at Short?

Just because the routine is available on YouTube does not mean it is in the public domain. As mentioned above, the copyright may cover just the script and limited recorded performances in the movies.  The routine has been done many times by many people.  It is not exactly clear who actually wrote the routine and Abbott allegedly performed the skit before he teamed up with Costello.

Plus, Abbott and Costello did not exactly follow a script when they performed it.  While I could almost recite it by memory, I know the version Brandon and I did was different than the one below.

This does not qualify the skit for “public domain” in the strict legal sense.  This article says some of the particularities about renewing the copyright to keep it alive may be challenged.  According to the lawsuit, the plaintiffs do license the routine for public performances, so they certainly have incentive to try and protect it.

So, who wins the game?

As usual, the lawyers will win.  I am now interested in seeing the play and have watched the Abbott and Costello video again, so maybe everyone wins and Who’s wife will come down and pick up the checks.

Kate bluebonnets

It’s Spring in Texas which means one of two things – the bluebonnets are out and in odd years, our legislature is back at work.  One makes me grateful to be in Texas and the other only meets every other year.  Here are a few bills we are watching this session:

Service of Process Via Social Media- HB 241

The Legislature is making another effort on this.

The bill provides:

Sec. 17.032.  SUBSTITUTED SERVICE THROUGH SOCIAL MEDIA PRESENCE.
(a)  If substituted service of citation is authorized under the Texas Rules of Civil Procedure, the court, in accordance with the rules adopted by the supreme court under Subsection (b), may prescribe as a method of service an electronic communication sent to the defendant through a social media presence.

(b)  The supreme court shall adopt rules to provide for the substituted service of citation by an electronic communication sent to a defendant through a social media presence.

It looks like the bill stalled in committee.

Codifying a fair reporting privilege – SB 627

The Legislature continues to show its disdain for defamation suits.  This time, they are considering a bill that would codify a sometimes-recognized common law fair reporting privilege.  The privilege allows for a fair reporting of public records and allegations as long as done in good faith.  It looks like this one may become law.

The bill provides:

(b)  This section applies to:

(1)  a fair, true, and impartial account of:

(A)  a judicial proceeding, unless the court has prohibited publication of a matter because in its judgment the interests of justice demand that the matter not be published; (B)  an official proceeding, other than a judicial  proceeding, to administer the law; (C)  an executive or legislative proceeding (including a proceeding of a legislative committee), a proceeding in or before a managing board of an educational or eleemosynary institution supported from the public revenue, of the governing body of a city or town, of a county commissioners court, and of a public school board or a report of or debate and statements made in any of those proceedings; or (D)  the proceedings of a public meeting dealing with a public purpose, including statements and discussion at the meeting or other matters of public concern occurring at the meeting; [and]

(2)  publication of allegations made by a third party regarding matters of public concern, regardless of the truth or falsity of the allegations; and

(3)  reasonable and fair comment on or criticism of an official act of a public official or other matter of public concern published for general information.

(c)  This section does not abrogate or lessen any other defense, remedy, immunity, or privilege available under other constitutional, statutory, case, or common law or rule provisions.

(d)  This section shall be construed liberally to effectuate its purpose and intent fully.

Civil Penalties for Frivolous Patent Claims – SB 1457

This bill also looks like it might be headed for passage.  The pertinent part of the bill states:

       Sec. 17.952.  BAD FAITH CLAIM OF PATENT INFRINGEMENT PROHIBITED.

(a)  A person may not send to an end user located or doing business in this state a written or electronic communication that is a bad faith claim of patent infringement.

(b)  A communication is a bad faith claim of patent infringement if the communication includes a claim that the end user or a person affiliated with the end user has infringed a patent and is liable for that infringement and:

(1)  the communication falsely states that the sender has filed a lawsuit in connection with the claim;

(2)  the claim is objectively baseless because:

(A)  the sender or a person the sender represents does not have a current right to license the patent to or enforce the patent against the end user; (B)  the patent has been held invalid or unenforceable in a final judgment or administrative decision; or (C)  the infringing activity alleged in the communication occurred after the patent expired; or

(3)  the communication is likely to materially mislead a reasonable end user because the communication does not contain information sufficient to inform the end user of:

(A)  the identity of the person asserting the claim; (B)  the patent that is alleged to have been infringed; and (C)  at least one product, service, or technology obtained by the end user that is alleged to infringe the patent or the activity of the end user that is alleged to infringe the patent.

The bill only allows for enforcement by the Attorney General and not private litigants.

We will keep on eye on these any other bills of note.

Today, we have a guest post from Gray Reed & McGraw attorney Cleve Clinton (the one on the far left).  He is one of the writers of the enlightening and entertaining blog over at Tilting the Scales where they share common sense, practical insights and a little humor, all to help clarify interesting and timely business legal issues that pop up.

Their most recent post fits in perfectly for what we cover here — intellectual property rights of out-of-sync dancing costumed sharks and 3D printing.  You can check out the original post and more of Titling the Scales here.

Left Shark and Lawsuits – Who Gets Bitten in the End?

By Cleve Clinton on February 10th, 2015 
Halftime was just the Beginning: A backup dancer in Katy Perry’s Super Bowl halftime show goes viral upstaging the singer, Tom Brady and Russell Wilson for MVP. Thanks to social media, “Left Shark” became a “thing” overnight and an enterprising entrepreneur (Frederick Sosa) sells internet 3D printed figurines to cash in on the immediate success of the carefree creature.

The Real Shark? Katy Perry’s lawyers issued a cease and desist letter claiming copyright violations and threatening a lawsuit. No surprise there.

The Victim?  Protecting some 10 sales of a $24.99 “Left Shark Desk Figurine” versus litigation threatened by a 1,000+ attorney law firm?  No contest – Frederick Sosa of Orlando. Even assuming he did have the resources to fight, it’s not worth the time or the argument. At $24.99 a pop, the economics are obvious. The good news is that Sosa got a lot of airtime for his 3-D online printing business. In the social media world he and Left Shark upstaged everyone on the big stage.

Legal Issues? Plenty to go around on Copyright Law and 3D Printing.

Copyright. Generally speaking: Can a non-generic animal costume be copyrighted? Probably. But, who owns the right to the copyright? If used before, it may be in the public domain. If not, it depends. Who designed the shark costume? What do the contracts say among any number of possible claimants – a third party designer, Perry’s team, the NFL, NBC or someone else? Finally, if it is protectable, was it properly perfected? For the real answer to any specific copyright questions, our very own Gray Reed copyright, trademark and patent experts David Lisch and David Henry can provide the right answers to the hard questions.

Last Bite? After removing the figurine for sale from Shapeways.com, Sosa put his Left Shark figurine design on MakerBot’s Thingiverse site as a free download for anyone with a 3D printer. A modified version is still available as “Blue Drunk Shark.”

3D Printing. The more novel question? Can a 3-D printing-on-demand company be liable for the infringements of its users? The 3D printing industry blog notes that federal law provides a safe harbor for websites and services that provide a platform for users to publish their own works. Manufacturing-on-demand services could be considered analogous to sites such as YouTube and Tumblr; the only real difference is that their products are physical, not virtual. Yet a federal judge ruled last year that CafePress, which makes T-shirts and coffee mugs on demand, didn’t qualify for that safe harbor, allowing a photographer’s infringement claims against the company to proceed. A year ago, Tilting wrote about 3D printing of guns, the fact that the innovative emerging ideas of 3D printing is a disruptive technology and its likely impact on copyright issues. No doubt, more to come.

Tilting the Scales in Your Favor. Evaluate the risk. Be realistic. Identify the opportunity and the near term goal. In this case, better to use sound judgment at the beginning and maximize the social media limelight, then be prepared graciously bow out.

Previous Tilting Articles: There’s a Printer for That!

 

I love college basketball.  Given that my Missouri Tigers haven’t given me much to talk about, I thought we could discuss the efforts by this upset Duke fan to have her image removed from the Internet captured during the Miami – Duke game that snapped Duke’s incredible 41-home-game winning streak.  You can read about it here.

I am not a Duke basher (nor fan) and I don’t want to pile on this poor fan.  Believe me, after what Kentucky did to Mizzou last night, I felt worse.  This does, however, raise some interesting legal questions.

How do you remove images from the Internet?

 

1. Copyright

The primary way is to use the Digital Millennium Copyright Act.  If you own the copyright to the image, it is usually pretty easy to get images removed from websites operated in the U.S. and to have the search engines de-index them.  You can read more about the DMCA here.  Generally, if you take the picture, you own the copyright.  The copyright to this image belongs to ESPN and probably the ACC or NCAA.  You know that really quick copyright notice for broadcasts – any use of images is prohibited, blah, blah, blah.  Screen shots would be included.  The fan could ask ESPN to get these images removed.  ESPN may be a little busy, however, because I think Tom Brady may have sneezed.

2.  Invasion of Privacy

There is little expectation of privacy in the stands of a nationally televised sporting event.  Do a search for certain NSFW conduct at sporting events to see how people forget this sometimes.  Also, look at the back of your ticket next time you head to a game.  There is a lot of fine print about the lack of privacy you may experience.  Nevertheless, let’s go through the common law claims of intrusion upon seclusion, publicity to private facts, appropriation of likeness and false light.

Intrusion upon seclusion.  The elements of the claim are: (1) intentional intrusion; (2) upon private affairs of another; (3) that is highly offensive to another.  Being upset at a basketball game is not a private affair.  Most states follow the stand in doctrine which provides that if the media stands where the general public could observe the events, then there is no intrusion.

Publicity to private facts.  To prevail on a claim, the information must not be a matter of legitimate public concern and its publication would be highly offense to a reasonable person.  I am not suggesting comments to a blog are true indications of what is offensive, but a quick view of them reveal that using that screenshot is not highly offensive to most.

Commercial appropriation of likeness.  This requires the (1) appropriation of one’s name or likeness; (2) for a commercial purposes.  Although ads are sold on blogs, the use of the name is not for a commercial purpose.  This cause of action usually applies to celebrities when a store tweets about them without permission or makes video games about them.  If a UNC fan used this picture to start selling t-shirts, then she may have a claim, but not for the use of the image on Twitter or blogs.

Portrayal in false light.  It requires: (1) publishing information that creates a false impression; (2) thereby casting the person in a false light; (3) creating emotional (as opposed to commercial) harm; and (4) the act is highly offensive.  I suspect there is nothing false about this fan’s feelings.  Like I said, no one saw me in my living room with a look of disgust last night, but there is nothing false impression about how she is feeling and why she is upset.

3.  Approach the websites

According to the article, the first image appeared on Twitter.  Under the Twitter Rules, posters are not supposed to abuse others, infringe on the rights of others or violate copyrights.  If you ask nicely and point out how posts violate a site’s terms, sometimes the wesbites will take it down although they may not legally have to.  In fact, in the terms of service, Twitter says it may not monitor the tweets and:

You understand that by using the Services, you may be exposed to Content that might be offensive, harmful, inaccurate or otherwise inappropriate, or in some cases, postings that have been mislabeled or are otherwise deceptive.

In addition to being at the mercy of Twitter’s whims that day, the problem is now that the image is on many other sites as well.

The Streisand Effect

We have talked about the Streisand Effect before.   It’s the name given to the phenomena resulting from increased attention to online posts, stories, websites, etc. only after someone complains about them or raises a legal issue about them.  Had the fan not asked to remove the image, I would not have read about it and would not be blogging about it. Sometimes, the wiser move is to let it go (no, I will not sing it).  It’s a bad business development strategy on my part, but is often the best advice I have ever given.

On the bright side, at least the fan was not wrongfully accused of being caught cheating on her boyfriend at the Ohio State v. Alabama game.

http://www.youtube.com/watch?v=-2QQj1n57ok

 

 

 

 

5.  Using Images Without Permission is No Monkey Business

From the Wikimedia Commons website

This was one of the more interesting stories of the year – does the photographer who set up everything to allow for a monkey to take a selfie own the copyright to that selfie?  This year we learned that no, the photographer does not.

 

 

 

4.  Infographic: The Use of Images From The Web on Your Site, Newspaper or Broadcast – Enough Said:

3.  The Law on Unpaid Interns – This post makes the list almost every year because I repost the guest post by Michael Kelsheimer of the Texas Employer Handbook every year as tech start-ups look to hire unpaid interns.  It’s a little more complicated than you may think.

2. #SMH-butnotacontestorasweepstakes – Check your online promotion hashtag or face scrutiny from the FTC – This post covered the surprise investigation of the Wandering Sole contest by Cole Haan.  The FTC basically said if you are going to have customers “endorse” your products by and through a contest, you better make sure the connection between the endorsement and contest is disclosed.  The legality of online contests is a popular topic with an older post Is Your Online Sweepstakes or Contest Legal still remaining popular.

1.  When Online Behavior Crosses the Line – The Law on Threats, Libel and Just Being Rude – Online defamation and related topics continue to be popular.  In fact, this post from 2012, remains one of the most popular on the site, How to Identify the Anonymous Online Defamer.  My suspicion is that SEO on these topics leads to more page views.  Nevertheless, it continues to be a very important issue for individuals and businesses and will likely continue in 2015.

 

Law360 reported that two competing DUI defense lawyers are fighting over the domain name www.dontblow.com (article here, but subscription required).  Well-known DUI attorney Tyler Flood is the plaintiff.  He has been using the domain name www.DoNotBlow.com for almost a decade. Mark Hull started using the similar domain name in 2011 which prompted the suit.

You can see Flood’s trademark here:

Flood has sued for trademark infringement, false designation of origin, unfair competition, injury to business reputation and dilution, cyberpiracy and unjust enrichment.

Domain Name Disputes

Focusing on the domain name, a plaintiff has two choices to challenge the use of a similar domain name by someone else–file a UDRP complaint or file an Anti-Cybersquatting Consumer Protection Act lawsuit.

UDRP

The UDRP is an online process that is decided on the papers without discovery or live testimony. As the holder of a domain, you are required to submit to a “mandatory administrative proceeding” to determine rights to the domain. Regardless of whether you participate, your domain registrar must enforce the decision of UDRP Panel. If either side elects to go to court instead, the UDRP proceedings are usually put on hold.

To prevail in a UDRP claim, you must prove: (1) you have a trademark right that is identical or confusingly similar to the domain of the infringer; (2) that the infringer has no legitimate interest in the domain name; and (3) and that the person is using the name in bad faith.

The ACPA

If litigation through the courts makes more sense, then you should pursue your claim under the Anti-Cybersquatting Consumer Protection Act (“ACPA”) which is codified at 15 U.S.C. § 1125(d). To prevail under the ACPA, you must show the infringer (1) has a bad faith intent to profit from a domain name; and (2) registers, uses or traffics in a domain name that is identical, confusingly similar or dilutes your mark. Under the ACPA, the trademark does not have to be registered, but must: (1) be distinctive at the time of the registration of the domain name; or (2) is famous at the time of registration. Violators can be fined between $1,000 to $100,000 per wrongly used domain name. A successful plaintiff can also recover lost profits, the profits of the violator and court costs.

Defenses

The immediate defense that jumps out is whether “DoNotBlow.com” is too generic to deserve trademark protection.  In UDRP complaints, you usually ignore the .”com” part. Flood may have to show that the full phrase “DoNotBlow.com” has acquired a distinctive secondary meaning apart from its original meaning that identifies his particular services.

On the other hand, “Do Not Blow” does not generally describe legal services, so it has a better chance surviving a challenge than, say, “DUIDefenselawyer.com” on a generic basis.

It will be an interesting case to watch like we did when lawyers in Wisconsin fought over the bidding on competitor’s name to trigger Google ads.

 

 

Who owns the rights to a selfie taken by a monkey?  While it sounds like a law school exam, it is based on a real story as reported here by the American Bar Association.

According to the article, a monkey picked up the photographer’s unattended camera and began taking pictures.  This is one of the images captured by the monkey.

From the Wikimedia Commons website

The nature photographer claims he owns the copyright.  Meanwhile, the Wikimedia Commons website has been distributing the picture for free and has refused to take it down.

Usually, the rule is that whoever takes a photograph owns the copyright as discussed with the famous Ellen DeGeneres Oscars selfie.  Wikimedia is claiming animals can’t own copyrights unless a human adds a significant creative element to the picture. Hence, Wikimedia says there is no copyright with the picture.

Under U.S. Copyright law, to be entitled to the copyright, you have the be the “author” of the work which is normally the person who created the work and the basis for the general rule when it comes to photographs.

The U.S. Copyright Office has a rule that the work must be of “human authorship” and works created mechanically or by random selection, without any human contribution, are not eligible for a copyright.  The photographer’s claim that the picture was a result of his hard work may not succeed under U.S. law.  It’s not the amount effort that counts, it’s the inclusion of human creative originality.

The blawgosphere is offering many opinions on this.  For example, Steve Baird suggests that perhaps the monkey is the photographer’s assistant and therefore the credit for the picture goes to the photographer.  Matthew David Bozik opines that perhaps it is a joint work.  We will have to see what tactic the photographer takes.

In the meantime, what can you do to avoid the same problem short of making the animal sign a work for hire agreement?  You can do post-production work on the photograph that provides its own original creative touch to it without releasing the original.  While it may not be a selfie if you remotely take the picture, you would still be considered the one who clicked the button.  According to the articles, the photographer went through a lot of effort to make this happen – will he get the credit?

You can read more about the case herehere,  here and here.

This morning, the U.S. Supreme Court ruled in a 6-3 decision that Aereo violates copyright law by retransmitting over-the-air programming without authorization.  This will shut down the controversial start-up or force them back to the drawing board to come up with a new system.  The sound you heard was a huge sigh of relief of all over-the-air networks, cable carriers and content creators because this would have caused everyone to re-evaluate how programming is broadcast, and more importantly, paid for.

For those not familiar with Aereo, it essentially allowed users to “rent” an antennae that would pick up a signal at a certain point.  Aereo would then take that over the air signal and send it to the user’s phone so they could stream the content from their phones.

The issue was whether this was a “public performance” of the copyrighted works.  Aereo said it was not because the users could receive the same content for free if they had antennas attached to their TV at home.  Aereo merely re-transmitted the same content to allows users to access it on their phone privately.

The networks sued Aereo almost as soon as it launched in 2012.  They argued the simultaneous broadcasts to thousands of paying customers represented an illegal retransmission of protected works — even if you called it renting an antenna.

Actually, everyone can give a sigh a relief.  Had Aereo won, the broadcast networks said they would stop providing content.  The cable companies pay the networks a lot of money to retransmit the over the air channels and this would have changed everything.

While this is a blow to Aereo and possibly innovation – at least through this specific model – the world as we knew it before Aero will continue.

 

The mid-terms are coming up, so you know there will be stories of politicians getting into clashes with artists over the use of songs and other content in ads and at rallies.  In Texas, for better or worse, the real competition is often in the Republican primary and several run-offs have already brought up some copyright issues.

But it’s a fair use!

Many ads use snippets from copyrighted TV news stories or headlines from local papers often citing fair use.   Fair use is an affirmative defense to a copyright violation meaning, it is the campaign’s burden to prove the use was fair.   Fair use is a factually-specific inquiry and there is no bright line test. Courts consider these four factors:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

A Texas Showdown Example

Dan Branch is a candidate in a run-off for Texas Attorney General.  NBC-owned Dallas station KXAS is arguing the Branch campaign used too much footage from its copyrighted newscast in this letter.

Specifically, NBC says the ad features “extensive use” of the story and features the voice and likeness of their anchor.  All but two seconds of music at the beginning is the TV news story.  NBC also says the use of the footage makes it appear the anchor and the station support the candidate and creates questions of journalistic integrity.

You can see the ad here for yourself.

NBC has demanded that the campaign cease further dissemination of the ad.  As of today, the video was still up under TexansforDanBranch on YouTube.

The run-off for the Republican primary in the race for Lt. Governor has gotten more attention including this ad:

Parody is also a defense to a copyright claim.  Yes, even bad parodies can be protected. Just think what happens when the ads start focusing on the people in the other party.

Related:

The DMCA and campaigns

We created this infographic for some of our media clients to give them a one-page cheat sheet on the analysis they need to do when trying to decide whether they can use an image from the internet in a pinch.

The infographic includes all the caveats because rarely can a legal issue be discerned down to one page with so few words.  In fact, I wrote a three-part series on this very topic last year.  

To view this as a pdf, click Use of Images InfoGraphic.