Golan v. Holder: Views on Partial Restoration

This past October 5, the Supreme Court heard oral argument in Golan v. Holder. This copyright case seeks to test the ability of Congress to grant copyright protection to foreign works that previously were deemed to be free to the U.S. public -- that is, in the U.S. "public domain."

Petitioner Larry Golan is a symphony conductor and a professor of the University of Denver's Lamont School of Music. Other petitioners are people who claim to rely on the free appropriation of work in the U.S. public domain for their livelihood. The petitioners argue that Congress did not have the power to enact the Uruguay Round Agreements Act of 1994. This legislation added new section 104A to the U.S. Copyright Act, thereby enabling the owner of an eligible foreign work that was in the public domain in the U.S., but still protected under copyright in the foreign source country, to obtain a "restored" U.S. copyright protection in the foreign work. This right to restore a U.S. copyright to a previously "free" foreign work commenced as early as January 1, 1996 if the foreign source country adhered to one of several copyright treaties (the Berne Convention, WIPO Copyright Treaty) or was a WTO member, or if the country was designated in a Presidential proclamation.

Larry Golan complains that prior to January 1, 1996 he was able to perform Prokofiev's Peter and the Wolf and Shostakovitch's Symphony 14, plus many other valuable works, freely -- without paying any royalties. This was so because many great works were created in foreign source countries at a time when the foreign source countries did not adhere to a copyright treaty. As such, these works were not eligible for protection under U.S. copyright law at the time the works were created or at the time the works were introduced into the U.S. Indeed, the current Copyright Act continues to require national eligibility. Current section 104 of the U.S. Copyright Act excludes published works from U.S. copyright protection unless on the date of publication one of the authors was a national or domiciliary of the U.S. or of a treaty country, or a stateless person, or the work was first published in the U.S. or a treaty country, plus other coverage options. So, authors first publishing their work in Ethiopia, Afghanistan, Iran, Iraq or other sourcing states who are not treaty, WIPO or WTO members continue to have their works excluded from copyright protection in the U.S. These works remain free to use today. A complete listing of countries, together with their copyright treaty status, is provided by the U.S. Copyright Office.

There are two primary types of foreign works that are subject to copyright restoration under Section 104A. The first type of work is one that was lost to the public domain because of a mess up. That is, the work is a foreign work that has copyright protection in its source country that is a copyright treaty country, but the owner of the work failed to comply with U.S. formalities. The most common formalities include the obligation to make a timely renewal filing and to include a copyright notice on the published work. The second type of work restored under Section 104A involves a foreign work that was not previously permitted to be copyright protected in the U.S. because of lack of national eligibility. If by January 1, 1996 the foreign source country was a treaty, WIPO or WTO member then this second type of foreign work could receive the benefit of U.S. protection for the first time ever.

Getting back to Larry Golan for a minute, Larry argues that he should be free to use all foreign works in the public domain without paying a royalty notwithstanding how the work came to be in the U.S. public domain in the first place. He argues that once a work is in the public domain, it remains in the public domain forever. To borrow from a religious argument, once a soul arrives in hell it remains in hell forever. This is a stark analogy to be sure, but the impact of Golan's argument on Prokofiev's copyright successors is also stark. Golan does not recognize the possibility of something less stark; such as a temporary or transitional state of purgatory where a soul resides for a period of time subject to removal.

[If the religious analogy is too harsh, then consider a comparable analogy pertaining to a person's presence in jail. A person can be present in jail in one of two ways: by placing himself or herself in jail upon commission of a crime or by being born in jail. Society has completely different interests in a person's presence in jail depending how the person came to be in jail in the first place. It seems to me that we should consider why a person is present in jail before we throw away the key.]

For Golan, the state of copyrightlessness is all or nothing. Either there is a copyright or there is not, he argues, and if there is no copyright then there cannot ever be a copyright. Hence, according to Golan, he should be permitted to conduct Peter and the Wolf, and other nonprotected works, freely without royalty or other restriction.

I do not share Golan's all or nothing views. Indeed, I have two separate views of the restoration of U.S. copyright in foreign works. I have one view as to restored foreign work that was eligible for protection in the U.S. but lost protection due to the owner's mess up -- failure to comply with formalities. I have another, opposite view as to restored foreign works that never previously had the right to U.S. protection.

If a foreign work from a treaty, WTO or WIPO member source country was eligible for copyright protection in the U.S., but if the work lost this protection for failure of the copyright owner to comply with the U.S. recording and notice laws, then I have little sympathy for the resulting public domain status. For the same reason that every person, notwithstanding his or her country of origin or immigration status, who drives a motor vehicle on a U.S. highway is required to comply with U.S. driving laws, every copyright owner was required to comply with U.S. copyright law formalities prior to January 1, 1996. What is good for a U.S. citizen should be good enough for a non-citizen. Everyone should be treated equally. If a foreign citizen does not know the U.S. rules of the road prior to driving in the U.S., then they should read up on the law. If the owner of a foreign work does not know about U.S. copyright formalities, then retain legal counsel or borrow a library book and learn about U.S. copyright law. But it is not appropriate in my view for the owner of a foreign work to bring the work into the U.S. in order to take advantage of the U.S. market and U.S. law, but then complain that the law is too harsh when it comes to failure to comply. To the extent that a foreign work was eligible for copyright protection in the U.S., but lost the protection due to the copyright owner's own conduct, then this type of work should not be given a free pass out of the public domain jail.

A foreign work that was never eligible for U.S. copyright protection, however, is in a completely different circumstance than a work that was eligible but lost protection due to failure to comply with U.S. law. Prokofiev never had an opportunity to obtain U.S. copyright law protection for Peter and the Wolf until January 1, 1996, with the addition of Section 104A to the Copyright Act. Prokofiev never lost pre-existing protection as a result of a mess up on his part. He never had protection -- ever -- because Congress never extended protection to him or to his work created in the early Twentieth Century in the Soviet Union.

I submit that the U.S. public domain should not be viewed as an end in and of itself, but rather as a condition that exists based on how a work is protected, or not protected. If a work is never protected under U.S. copyright, then the lack of any protection is not a condition of being in the "public domain" as much as a condition of non-protection. [The concept of public domain and the concept of non-protection are admittedly nuanced and, in any event, live close to a common border, but they indeed can live separate lives.] In this event, the "public domain" is not a protectable property interest owned by other users but is merely a present condition caused by a lack of protection. Congress has authority in my view to add protection where none ever existed. In this case, the lack of protection is more akin to being born in jail. This is particularly so in that the owner of the work has done nothing to cause the loss of protection. On the other hand, if there previously was protection to a foreign work, but if protection was lost due to a failure on the part of the copyright owner, then this voluntary failure to adhere to required formalities creates a permanent jail -- abandonment to the public domain.

Furthermore, the expectations of users differ depending on how a work came to be placed in the public domain. If a free user knew that the work was protected at a point in time but then lost protection due to faulty conduct by the work's owner, then the free user can be said to have a firmer expectation of continued free use. This differs from the expectation of a free user who knows that a work was never protected through no fault of the work's author. This type of free user expectation is more transitional. Enjoy it while you can, but it may not last.

Public domain need not be considered as an all or nothing proposition. If a copyright owner voluntarily placed a work into the public domain by failing to comply with formalities, or if the copyright terminated for other technical reasons, then the copyright should not be revived. But if an owner of a work never had protection to begin with, then the right to protection should begin at some point. January 1, 1996 is as good a start date as any.

It will definitely be interesting to see how the Supreme Court rationalizes the common restorative treatment that Section 104A provides to two completely different "public domain" conditions. My prediction is that Section 104A will be found to be constitutional as to restorations based on the lack of national eligibility, but unconstitutional as to restorations based on failure to comply with formalities.

James Joyce and Stephen Dedalus

Today is the 95th anniversary of the first publication in the United States in 1916 of the James Joyce classic Portrait of the Artist as a Young Man. The novel features the Joyce alter ego Stephen Dedalus in a semi-autobiographical examination and rejection of traditional Irish values. The novel is ranked by Modern Library as the third most important English novel. Joyce's other great classic, Ulysses, is ranked No. 1.

James Joyce, c. 1915

Ghost Rider Writer Sues Marvel Comics - And Loses

Yesterday’s decision by Judge Katherine Forrest of the southern district of New York federal court provides a glimpse of insight into the development and ownership of popular comic book characters. The case pits Gary Friedrich, the creator of the Ghost Rider character, against Marvel Comics, publisher of the Ghost Rider comic books.

Ghost Rider is a super hero with a skeletal head emitting fire, riding a fire emblazoned motorcycle. The character became popular, spawning video games and a 2007 Nicholas Cage movie (also starring Eva Mendes and Sam Elliot).

According to the court, Friedrich conceived and developed the Ghost Rider super hero character in the early 1970s, including additional characters of Johnny Blaze, the Ghost Rider’s alter ego, Roxanne Simpson and Crash Simpson. Friedrich conceived and wrote the text for the comic book featuring these new characters. Others also wrote and contributed to some of the episodes.

Friedrich sued Marvel for various causes including copyright infringement. The court easily found that Friedrich did not have a copyright claim in that during the period of time that he developed the Ghost Rider characters, Marvel paid Friedrich by check containing an assignment legend. Friedrich acknowledged that he endorsed the checks, and that the checks "said something about by signing over the check I gave over my rights to * * * Marvel." And then in 1978, Friedrich signed a written assignment document by which he expressly granted "to Marvel forever all rights of any kind and nature" in the work he created.

The court pointed out that whenever anyone endorses a check subject to a condition, he accepts the condition. As such, any right that Friedrich may have had in the Ghost Rider characters were assigned by virtue of his endorsement of the checks containing the assignment language. Further, the court observed that the 1978 assignment "undoubtedly conveyed whatever renewal rights he [Friedrich] may have retained, if any."

So, the bottom line is that endorsing a check with assignment language has consequences, as does the signing of a general assignment document. If you are a graphical artist or writer who creates highly valuable characters, do not endorse checks containing assignment language unless you intend to assign your rights. And do not sign a general assignment document unless you intend to fully assign all rights. If your intent is to assign only certain limited rights, and to retain the balance of the rights, then make certain that the assignment language clearly describes what is being assigned and what is being retained.

More information about Marvel Comic's Ghost Rider (Johnny Blaze) character is available here.

Resale of Artwork May Yield New Fees to Original Artists

Last week, Congressman Jerrold Nadler from New York and Senator Herb Kohl of Wisconsin introduced into the House and Senate proposed legislation that would effectively tax the resale of valuable works of visual arts (consisting of original and limited edition photographs, paintings, drawings, prints and sculpture), and harm the business of large auction houses, including Sotheby's and Christies. A copy of the jointly introduced bill is set out here. The proposed legislation would compel the payment of 7% of the sale price of visual art sold at auction following the first sale by the original artist, provided that the art sells at auction for at least $10,000, and provided that the auction house sold at auction during the previous year more than $25 million of visual art. Failure to pay the 7% would permit the copyright owner to sue for infringement and recover statutory damages up to $150,000. The fee would be payable to an artist agency with authority to pay a portion of the collected fee to the original artist, or the artist's estate, and a portion to non-profit art museums to help fund purchases of works of visual art.

This proposed legislation borrows from the European concept of droit de suite which permits a form of resale fee to the original artist. It also borrows from a similar California statute that authorizes resale royalties of art auction sales made in California (the California art resale fee is only 5%). Here is the link for the Resale Royalty Act, Cal. Civil Code §986.

It seems to me that there are some issues to be considered with the proposed legislation:

1. Since failure to pay the 7% resale fee subjects the auction house to an infringement claim, the auction house can perhaps avoid paying the fee if it has no concerns about being sued for infringement. This would be the case if the original artist waived or assigned the copyright interest in the visual art to the first purchaser, and if the waiver or copyright interest is transferred as part of each further resale of the art. In this case, there would not be a likely plaintiff with standing to bring an infringement lawsuit if the 7% is not paid. Indeed, and particularly as to lesser known artists, this proposed legislation may encourage auction houses to obtain a "compulsory" assignment of an artist's copyright interest as part of the first sale of the artwork.

2. The owner of a valuable work of visual art can avoid the 7% tariff by auctioning the work at a small auction house with preceding year sales of less than $25 million. Indeed, this legislation may encourage the development of a greater number of small auction houses specializing in a few high value pieces. One potential problem, though, is that the smaller auction houses may not generate sufficient revenue to pay for errors and omission insurance covering the risks associated with the evaluation, valuation and transfer of valuable high-end art.

3. One portion of the proposed legislation provides that visual art would not be subject to the copyright notice provisions of Section 401 of the Copyright Act. Section 401 as presently written does two things. First, it provides that a copyright notice is discretionary, not mandatory (although, prior to 1989, copyright notice was mandatory). Second, Section 401(d) provides that if the copyright notice is employed then an infringer's evidence of innocence shall be given no weight in an infringement trial. So, for new works created after 1989, the use of a copyright notice makes practical litigation sense in order to receive the evidentiary benefit of Section 401(d). Avoiding this evidentiary benefit makes no sense.

4. The task of keeping track of artists and their heirs may be difficult. The Copyright Office, copyright lawyers and copyright users have collectively encountered considerable difficulty with "orphan works." The lack of an obligation under these new bills to compel the filing of contact information for visual art artists will almost certainly cause the loss of resale payments that may come due to original artists or heirs, who may have long forgotten about a lost piece of art.

No progress has yet been made to these new bills and, given the election uproar expected in 2012, it is not completely clear how well these new bills will advance. Of further note, the artist community has not yet joined together to provide a unifying voice in favor of these bills. We will see how all this works out.

2011: An Intellectual Property Year In Partial Review

The year 2011 produced many significant IP cases, some of which were discussed in previous posts in this blog. Here are some highlights:

Georgia State University: College Course Electronic Packets ~

Cambridge University Press v. Board of Regents of University System of Georgia (08-cv-1425, N.D. Georgia). This case remains pending before Judge Orinda D. Evans in the federal court in Georgia. The plaintiffs, Cambridge University Press, Oxford University Press, Inc. and Sage Publications, Inc., seek to prevent the Georgia State University campus library from providing to university students electronic course packets of some or all of the plaintiffs’ copyrighted publications. I originally blogged about this case in my post of June 24, 2011. While Georgia State pays publishers’ royalties for print versions of course packets containing copyrighted publications, it does not obtain permission and pay royalties for electronic course packets. GSU generally argues that providing a few pages or chapters from copyrighted material in electronic form as part of a course packet is fair use in an educational context. Judge Evans conducted a bench trial this past June 2011. The parties are presently engaged in post-trial briefing and the court has not yet made a decision on the copyright merits. It will be interested to learn the court’s infringement and fair use views of copying and electronic distribution of copyrighted material for educational purposes.

Appropriation Art on Appeal: Cariou v. Prince ~

Patrick Cariou v. Richard Prince and Gagosian Gallery, Inc. (08-cv-11327, S.D.N.Y.; 11-1197, 2d Cir.) In my post of March 27, 2011 I wrote about the copyright infringement claim brought by photographic artist Patrick Cariou against well-known appropriation artist Richard Prince. Cariou sued Prince and Gagosian Gallery for infringement of his photos. According to the N.Y. trial court, some 35 photos taken by Cariou of Jamaican Rastafarians were copied and displayed, wholly or partially, by Prince, with some of the Cariou photos having been modified or painted over. Prince argued that his treatment of the Cariou photos amounted to fair use.The trial court held that Prince’s conduct was copyright infringement and that Prince’s use of the Cariou photos did not constitute fair use. The defendants appealed to the Second Circuit Court of Appeals.

To date, amicus briefs have been filed by Google, Art Museums and Association of Art Museum Directors, and The Andy Warhol Foundation for the Visual Arts, Inc. Google’s brief addresses in part the type of transformation that may be required in order to find the existence of fair use, and observes that large scale digitalization by a search engine may amount to sufficient transformation so as to constitute fair use.

The amicus brief of the art museums observes that appropriation art – the use of pre-existing work of another in the creation of new art – has enjoyed a long and admired history, including examples by Picasso, Duchamp (Mona Lisa with a mustache) and Warhol, and evolving through Dadaism and contemporary pop art. The museum amici criticize as flawed the infringement and fair use analysis of the trial court, criticize the direct and vicarious liability imposed on an art museum by the claimed infringing conduct of an artist, and criticize the trial court’s order of impoundment and destruction of Prince’s works. The museum amici argue that the trial court’s decision “could punish cultural institutions and censure educational activities that pose no threat to the original copyright holder, and it could harm the public by limiting access to significant creative works.”

The Andy Warhol amicus brief observes that it is common for artists to appropriate preexisting imagery and that the trial court employed a too narrow view of transformative conduct in finding the lack of fair use. The brief argues that “Cariou’s objective was ‘classical … portraiture.’ * * * His photographs of Rastafarians appear to celebrate the Rastafarians by depicting them respectfully in their actual environment * * *.” The brief suggests that Prince employed Cariou’s original photos for another purpose in creating Prince’s new work. “Whatever Prince’s purpose was, it was not that. Prince uses elements of Cariou’s utopian images to depict a post-apocalyptic world that exists only in Prince’s imagination.” The Warhol brief argues in part that there can be “a wide array of transformative meaning” applied to the use of existing images in creating new art with new expression. The Warhol brief criticizes the trial court’s fair use and injunction analysis.

Cariou’s opening brief will likely be filed in late January 2012 and the briefs of the defendants are not expected to be filed until next March. Oral argument has not been scheduled but may occur prior to the end of 2012. A final decision from the Second Circuit may not come down until sometime in 2013.

Betty Boop: Lost in the Public Domain ~

Fleischer Studios, Inc. v. A.V.E.L.A dba Art & Vintage Entertainment Licensing Agency. This past February 23, 2011, a three-judge panel of the Ninth Circuit issued a bejeepers, good-golly opinion holding that Fleischer Studios lost its trademark and copyright interests in the Betty Boop cartoon character. The court held that the lovable waif was ownerless with no basis for protection from defendants who, without permission, copied the cartoon image onto consumer goods. The court determined that Fleischer failed to establish the chain of title for the copyright and trademark rights. The court further held that the employment of the image of Betty Boop in consumer goods was not an impermissible trademark use, because the image was not being used as a trademark but as a functional product. Of the three judges on the panel, only Judge Susan Graber filed a dissent strongly questioning the basis for the majority decision.

But then on August 19, 2011 the Ninth Circuit panel withdrew its February opinion and issued a revised opinion. The revision did not change the decision but it did revise the trademark analysis. Rather than base the trademark holding on the concept of no trademark use due to aesthetic functionality, the opinion determined that the Betty Boop image was not inherently distinctive and that there was no proof of secondary meaning (even though Fleischer argued that the image had been used on merchandise since 1972). Judge Graber continued to strongly dissent. The Ninth Circuit refused to consider this case en banc.

So, at present the law of merchandise trademark infringement is a bit muddled in the Ninth Circuit. Boop boop be doop. Perhaps the Supreme Court will allow Fleischer’s anticipated petition for writ of certiorari.

Criminalizing an Employee's Computer Use ~

USA v. Nosal. My blog post of May 2, 2011 discussed the Ninth Circuit’s opinion that criminalizes, under the Computer Fraud and Abuse Act, what might otherwise be viewed as innocent computer usage by a company’s employees. In October, the Ninth Circuit agreed to hear en banc the extent to which an employee’s use of a work computer can constitute criminal conduct. Oral argument was held en banc on December 15, 2011. A decision is expected this coming spring. The full en banc oral argument can be watched and heard at this link.

Don't Remove That Credit! ~

Murphy v. Millennium Radio Group. The Third Circuit held that the removal of a credit from a copyrighted work may violate the Digital Millennium Copyright Act

Foreign Internet Posting Triggers U.S. Copyright Law ~

In my July 18, 2011 blog post, I discuss the Florida district court’s holding in Kernal Records Oy v. Mosley that the first publication of an Australian work on the Internet constitutes first publication in the U.S. Publishing by first posting directly to the Internet causes the U.S. Copyright Act to apply to the foreign work for purposes of determining enforceability of the foreign work in the United States.

A New York State of Mind ~

In Penguin Group (USA) Inc. v. American Buddha, an Oregon company that uploaded copyrighted images onto the Internet in Oregon was sued in New York by a New York resident - copyright owner. The New York state appellate court held that a New York copyright plaintiff alleges an injury in New York state for jurisdiction purposes when its copyrighted work is uploaded without permission onto the Internet outside of New York. Bottom line, wherever you are, you may be sued in a New York court if you upload copyright content belonging to a New York resident onto the Internet.

Hot News is now Cold ~

My post of June 20, 2011 discussed the holding in Barclays Capital Inc. v. Theflyonthewall.com, Inc. This case denied the existence of the so-called “hot news” claim, holding that there is no such thing under copyright law since copyright law cannot protect factual data, including hot, new data. In the Barclays case, a news aggregator was permitted to copy fresh news reports developed by Barclays, thereby using Barclays' own research in direct competition.

More Odds and Ends ~

There are several pending IP cases that may be resolved in 2012. One such case, presently before the Supreme Court, Golan v. Holder, will determine whether copyrights to foreign works lost in the U.S. due to failure to observe U.S. copyright technicalities (e.g., lack of renewal filings, failure to provide copyright notice, etc.) were properly restored in 1994 by the Uruguay Round Agreements Act. Oral argument occurred on October 5, 2011, and a decision is expected this coming spring. Listen to the oral arguments at this link. And, the Supreme Court will likely decide this spring the Mayo Clinic v. Prometheus patent case that posits whether the Prometheus patents underlying a blood test are protectable by patent law, thereby inhibiting a physician’s ability to treat patients. Read the oral argument transcript here. 

And let us not forget the Google book copying infringement case. Its settlement agreement was rejected by the New York trial court and its status remains unresolved.

Happy New Year, everyone.

The Copyright Office Needs Google

The U.S. Copyright Office needs help. Like an old library, the Copyright Office maintains a card catalog indexing system for its pre-1978 records. And the Copyright Office has a lot of cards, over 46 million. These index cards are housed in wooden drawers contained within row after row of wooden boxes. Updates to the cards have been made in pen directly onto the cards. Recognizing that this type of indexing system has not been in fashion for some time, the Copyright Office is now attempting to join the digital age by scanning its index cards and somehow creating a database of pre-1978 filings going back to 1790.

Maria Pallante explains it this way: "Have you ever attempted to build an electronic index and searchable database of a complex and diverse collection of 70 million imaged historical records? Neither have we. One of the largest card catalogs in the world, the U.S. Copyright Office card catalog comprises approximately 46 million cards."

The Copyright Office has established a blog to allow public comments and suggestions on how best to digitally index and document its pre-1978 records. It also provides updates on its digitization goals and status.

Note to the Register, call Google.

The Time For Mandatory Patent Assignment Recording Is Now

Something strange occurs when the U.S. Patent Office issues a patent monopoly; it does not necessarily know the identity of the monopoly recipient. U.S. patent applications are required to identify the inventors of the invention pursuant to Section 116 of the Patent Act, but they are not required to identify the owner of the application or the resulting issued patent.

The lack of an accurate database of owners of issued patents can be troubling for the public. The absence of readily accessible patent ownership information can inject an unacceptable level of mystery and risk into patent clearances and chain-of-title searches. This is particularly true if the ownership interests in a patent become fragmented among several parties, including lien holders or other creditors.

Further support for an accurate patent ownership database comes from the “bona fide purchaser for value” rule incorporated into Section 261 of the Patent Act. This section confirms that an unrecorded patent assignment or grant is void as to a subsequent purchaser or mortgagee for value and without notice of the unrecorded assignment or grant. A voided assignment can, in turn, create undesirable liability on the part of an assignor to a patent acquirer.

But, good news. The U.S. Patent Office is presently seeking comment on several rules that would mandate the disclosure of any patent assignment. Specifically, the PTO is proposing to require that disclosure of the current assignee be made:

1. At the time the patent application is filed, 
2. At the time of payment of the patent issue fee, 
3. Any time an assignment is made after the application filing date, 
4. Any time an assignment would cause the loss of entitlement to the small entity fee, 
5. In order to obtain a discount of maintenance fees. 

Provide your comments regarding the proposed mandatory disclosure of assignments prior to January 23, 2012. Send your e-mail comments to saurabh.vishnubhakat@uspto.gov. More information regarding mandatory assignment filing is available in the Federal Register.

JFK: 11-22-11

John Fitzgerald Kennedy

May 29, 1917 - Nov. 22, 1963 (12:30 p.m. CST, Dallas, Texas)

"So let us begin anew—remembering on both sides that civility is not a sign of weakness, and sincerity is always subject to proof. Let us never negotiate out of fear. But let us never fear to negotiate.

Let both sides explore what problems unite us instead of belaboring those problems which divide us."

Inaugural Address, Jan. 20, 1961

Another Veterans Day: "Sweet and Fitting"

DULCE ET DECORUM EST

by WILFRED OWEN

[Written 1917, published posthumously 1920]

Bent double, like old beggars under sacks,

Knock-kneed, coughing like hags, we cursed through sludge,

Till on the haunting flares we turned our backs

And towards our distant rest began to trudge.

Men marched asleep. Many had lost their boots

But limped on, blood-shod. All went lame; all blind;

Drunk with fatigue; deaf even to the hoots

Of tired, outstripped Five-Nines that dropped behind.

Gas! Gas! Quick, boys!---An ecstasy of fumbling,

Fitting the clumsy helmets just in time;

But someone still was yelling out and stumbling,

And flound'ring like a man in fire or lime...

Dim, through the misty panes and thick green light,

As under a green sea, I saw him drowning.

In all my dreams, before my helpless sight,

He plunges at me, guttering, choking, drowning.

If in some smothering dreams you too could pace

Behind the wagon that we flung him in,

And watch the white eyes writhing in his face,

His hanging face, like a devil's sick of sin;

If you could hear, at every jolt, the blood

Come gargling from the froth-corrupted lungs,

Obscene as cancer, bitter as the cud

Of vile, incurable sores on innocent tongues,---

My friend, you would not tell with such high zest

To children ardent for some desperate glory,

The old Lie: Dulce et decorum est

Pro patria mori*.

[* How sweet and fitting it is to die for one's country.]

The Silence of Veterans Day

In Flanders fields the poppies blow

Between the crosses, row on row,

That mark our place; and in the sky

The larks, still bravely singing, fly

Scarce heard amid the guns below.

We are the Dead. Short days ago

We lived, felt dawn, saw sunset glow,

Loved and were loved, and now we lie,

In Flanders fields.

Take up our quarrel with the foe:

To you from failing hands we throw

The torch; be yours to hold it high.

If ye break faith with us who die

We shall not sleep, though poppies grow

In Flanders fields.

By Lt. Col. John McCrae, written on May 3, 1915 upon witnessing the death in combat of his good friend Lt. Alexis Helmer, 22 years old.

Flanders Field American Cemetery and Memorial, Belgium

Nike - Joe Paterno - Child Abuse - Common Sense

The Joe Paterno Center on Nike's campus outside of Portland houses Nike's child day care facility for its staff. The Oregonian reports this morning that Nike has no present intention to change the name on this building, notwithstanding the outrageous child abuse controversy presently surrounding Paterno and his football program at Penn State. Question for Nike: Is it really appropriate to have Paterno's name associated with a child care facility? Put his name on a sporting field, a gymnasium, the snack lounge, anyplace - but not on a child care facility.

The Non-Fixed, Illusional Copyright

CTV published a report today about magic troubles involving the Dutch illusionist, Hans Klok The article explains that Klok was found liable by a Dutch court for copyright infringement of a magic trick developed by his former assistant, Magician Rafael van Herck. The magic trick that is the center of the litigation is described as involving a fight with a stubborn butler, reaching through his body to get a glass of water, and capped by smacking off his head.

Apparently, you need to see it to appreciate it.

The article explains that the Dutch court determined that the magic trick is copyright protectable because the "combination is unique."

Hans Klok

The Dutch decision granting copyright protection to a magic trick addresses an interesting issue under U.S. copyright law. That is, can a magic trick (or any performance art, for that matter) be protected by copyright? The U.S. Copyright Act, of course, establishes fixation as a central tenet of copyright. "Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression * * *." 17 U.S. §102(a). So, the lack of fixation in a tangible medium of a publicly performed magic trick causes any thought of copyright protection to disappear up the sleeve before our very eyes.

But wait.

While there may not be any copyright protection under federal copyright law, there may be protection under a particular state's copyright law. The U.S. Copyright Act preempts any conflicting state law equivalent to "the exclusive rights within the general scope of copyright." But federal preemption exists only as to "works of authorship that are fixed in a tangible medium of expression." 17 U.S. §301(a). There is no preemption under federal law for works not fixed. 17 U.S. §301(b).

Indeed, California has its own version of copyright protection for non-fixed works.Under Cal. Civ. Code §980(a)(1), the state of California grants copyright-like protection to an original work of authorship that is not fixed in a tangible medium of expression. This copyright-like coverage would certainly appear to extend to the public performance of a magic trick, particularly a trick that the Dutch court determined is unique. Indeed, what can be more non-fixed than an act of illusion?

Now you see me, now you ......................................

Where, Or Where, Did The Copyright Litigation Go?

The federal litigation statistics published by the Office of U.S. Courts reveals striking information about the litigation climate for copyrights -- it's disappearing. For several years now, the number of filed copyright cases has been dwindling. The following table contains new copyright litigation filing data from U.S. Courts statistics for the past five years (no stats yet for 2011). There has been a consistent reduction in the number of new copyright cases filed with the federal courts during that time, representing a cumulative drop in new filings since 2006 of 63.85%.
 

Year	New Copyright Cases Filed	% Change From Prior Year
2006	5488	--
2007	5074	-7.54%
2008	3346	-34.06%
2009	2780	-16.92%
2010	1984	-28.63%
Five year change		-63.85%

There may be different reasons for this trend, but the U.S. Copyright Office believes that the cost of copyright litigation, particularly for the small litigant, is one significant contributing factor. As a result, the Copyright Office is undertaking a study of the possibility of establishing a small claims resolution process for certain copyright claims. Possibilities include establishing a small claims department within the federal courts, providing for a small claims procedure through the Copyright Office, or some other small claims process. The Copyright Office wants to hear from interested persons on this issue. Its website provides information on this study, together with a link to provide comment. The comment period runs through January 16, 2012.

Odds and Ends: Oklahoma City Thunder; Blown Insurance Coverage; Marybeth Peters

Some odds and ends for Friday:

No Copyright Infringement By The Oklahoma City Thunder Basketball Team For "Go Thunder." The NBA team and its owner were sued for copyright infringement by the composer of a copyright registered song containing the words "Thunder Up," "Go Thunder," and "Let's Go Thunder," among other phrases. The composer argued that the Thunder cheer group, the team mascot, and members of the crowd often violated his registered copyright by using these words while chanting during Thunder games, plus in advertising and on banners. The composer sought up to 30% of the Thunder net gross as compensation. But, alas, the court gave the composer a slam dunk facial, pointing out that words and short phrases, including slogans, are ordinarily not copyrightable, that these common cheers do not contain minimal creativity supporting copyright protection, and that the idea embodied in these cheers merge into the common expression of the cheers. The court pointed out that merely because a copyright registration issues does not mean that there is copyright protection. Syrus v. Bennet (10th Cir., Nov. 3, 2011).

How To Void Trademark Insurance Coverage. Rockland was sued for trademark infringement, told its insurance company, GAIC, about the lawsuit some seven weeks later, and forwarded a copy of the papers to GAIC after about three months. The Second Circuit held that the obligation to provide immediate or prompt notice of claims to an insurer is breached when the purported covered party waits seven weeks to provide oral notice of a claim and three months to provide written notice of a claim. Rockland Exposition v. Great America Ins. Co. (2d Cir., Nov. 2, 2011).

Marybeth Peters Is Now A Part Of The Public Domain. Marybeth Peters, recently retired as U.S. Register of Copyrights for the past 16 years, has joined the private sector, electing to become a practicing attorney with the Oblon Spivak firm of Alexandria, Virginia. You cannot keep a good copyright lawyer down -- congratulations, Marybeth!

Eliminate Software Patents: The White House Responds

My post of September 27 explained how the White House's We The People website elicited an interesting petition, presently supported by about 15,000 signatures, to eliminate the issuance of software patents. The White House  responded to this petition, and explains its position on software patents. The White House argues that the recently enacted American Invents Act (AIA), and the resulting patent reforms, will reduce the number of overly broad business method patents that may improperly reach into unpatentable areas. The White House further points out that the PTO's renewed emphasis on quality patent review will assist in this effort. Read the entire response provided by the White House and provide your comments as to whether the AIA will reduce the prior level of perceived abuse in the issuance of overly broad method patents.

Ghouls, Goblins and Beer

On this frightful day of ghouls and goblins of all shapes and sizes, let us pause to toast a singularly important individual. Joseph Bramah of Yorkshire, England (1748-1814) on this date applied for his beer engine patent. Bramah was a proficient inventor, having devised the Bramah lock, the hydraulic press, the rotary engine, the first pumper fire truck, and other important inventions during England's Industrial Age. But he will, perhaps, best be remembered for the device that led to frothy suds, the beer engine device that became the precursor to the beer tab. England's Patent Office bestowed Patent No. 2196 on this device. Subsequent adaptations lead to the beer faucet (U.S. Patent No. 325,316, issued Sept. 1, 1885 to E.A. Byrne and J. P. Lenahan), a close cousin to today's beer tap.

There is an additional patent that Bramah obtained that in some circles closely compliments the beer engine. That is, Bramah received an English patent for the flushing toilet in 1778.

So, here's to Bramah. Tonight, let us offer up a toast!

Joseph Bramah (1748 - 1814)

More on the Computer Fraud and Abuse Act

My post of May 5, 2011 discussed the recent Ninth Circuit criminal case of US v. Nosal applying the Criminal Fraud and Abuse Act to actions by an employee that violate an employer's rules of computer usage. Two out of three members of the Ninth Circuit panel determined that an employee's violation of an employer's computer use restrictions can constitute a felony under the CFAA. In effect, the Ninth Circuit's opinion permits a private entity -- an employer -- to define what is or is not criminal liability under the CFAA. Utah District Judge Tena Campbell, sitting by designation on the Ninth Circuit panel, dissented from the majority decision, arguing that if every violation of an employer's computer use rules, including innocuous, personal usage, created felony liability under the CFAA, then the arbitrary application of the CFAA would render the CFAA unconstitutionally vague.

A majority of the rest of the Ninth Circuit must believe that Judge Campbell's view has merit. Last Thursday, the Ninth Circuit entered an order agreeing to rehear the Nosal case en banc. The prior Nosal opinion is no longer valid. More to come.

To Obtain A Trademark Registration, There Must First Be A Trademark

It sounds axiomatic that the registration of a trademark requires the existence of a trademark. Similar to giving birth, a trademark can register only after it exists. Rene Descartes said it best: Cognito ergo sum ("I think, therefore I am").

But some trademark owners claim the right to a trademark when, in fact, there is no trademark. A case in point pertains to the recent decision of the Trademark Trial and Appeal Board upholding the refusal to register the proposed trademark LOCKBACK pertaining to a folding utility knife. The examiner refused to register based on descriptiveness and the TTAB agreed. Indeed the TTAB determined that the proposed mark is generic and pointed to the product packaging provided by the applicant as proof of genericness.

The TTAB observed that the proposed mark is used on the product packaging in a manner that serves to described the product rather than in a manner that serves as a trademark.

The term “Lockback” is used to describe the type of utility knife (i.e., “Folding Lockback Utility Knife”). The term “Lockback” is not set off from the other words with which it is used.  “Lockback” is displayed in the same size, font, and style as “Folding” and “Utility Knife.”  As displayed on the package, consumers would perceive Ser No. 76679933 SHEFFIELD as a trademark, but not “Lockback.”  In this regard, applicant’s use of the federal registration symbol does not transform “Lockback” into a trademark.  See In re Aerospace Optics Inc., 78 USPQ2d 1861, 1864) (TTAB 2006); In re Brass-Craft Manufacturing Co., 49 USPQ2d 1849, 1853 (TTAB 1998); In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) (mere use of the “TM” indicator cannot transform an otherwise unregistrable term into a
trademark). 

The lesson: if you want to register a word as a trademark, then it is necessary to treat the word as a trademark. As instructed by the TTAB regarding the LOCKBACK application:

1. Don't use the proposed mark on packaging to describe the product.
2. Set off the proposed mark on the package so that it looks different from surrounding text. Use different font style, font size or graphics to create a different appearance for the proposed mark than the surrounding text.
3. Do not use another word on the packaging that appears to be the trademark, thereby creating confusion as to the true trademark.
4. Merely putting a TM symbol next to the proposed trademark does not create a trademark.

Cognito ergo sum

PTO To Critique China's Patent Enforcement

Encouraging public insight to pour forth, the PTO has requested comments from inventors regarding personal experiences in enforcing patent rights in China. The PTO will use these public comments to prepare a report on the patent enforcement landscape in China.

The PTO held a series of roundtables in several Chinese cities this past summer to develop experience-based knowledge into enforcement of patent rights in China. The specific topics of the roundtables included:

1. the ability to acquire and enforce utility model and design patents in China,
2. the process of evidence collection and preservation in Chinese courts,
3. the ability to obtain damages and injunctions in Chinese courts,
4. the enforceability of Chinese court orders, and
5. administrative patent enforcement in China.

Now, the PTO is extending an invitation to any member of the public to submit written comments of personal experiences in China dealing with each of the above five patent protection topics.The PTO notice in the Federal Register, published October 17, explains:

To ensure that the USPTO receives a wide array of views, the USPTO would like to invite any member of  the public to submit written comments on China’s patent enforcement system, including, but not limited to, the five specific issues listed above. Examples of firsthand experience using China’s patent enforcement system, and recommendations on ways to improve the system, are encouraged. Based on these comments, the USPTO intends to produce a report that details the patent enforcement landscape in China and identifies any challenges faced by U.S. innovators, together with recommendations for improving the system.

Written comments can be e-mailed no later than November 4 to IP.Policy@uspto.gov, or mailed to Mail Stop OPEA, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 USA, Attention: Elizabeth Shaw.

Creation and Protection of an Actor's Audiovisual Performance Right

As discussed in my August 4 blog post, WIPO has shown a recent and enlivened interest in developing international copyright-based protection for an actor's audiovisual performance. Further to its purpose of protecting performance rights for actors, WIPO has recently announced that it intends to convene a diplomatic conference in 2012 to finalize a treaty protecting the rights of actors in their audiovisual performances.

The preliminary drafts of the proposed WIPO Treaty for the Protection of Audiovisual Performances give the exclusive right in the first instance to actors for the download of their performances by wire and wireless means.The current draft of the treaty provides in pertinent part that "Performers shall enjoy the exclusive right of authorizing the making available to the public of their performances fixed in audiovisual fixations, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them." In other words, the treaty gives actors the exclusive right to control on-demand downloads of movies. As an alternative to granting actors exclusive rights over movie downloads on demand, the proposed treaty allows a contracting party to "establish a right to equitable remuneration for the direct or indirect use of performances."

A proposed amendment to the current draft would permit the transfer of the actor's exclusive right to the producer of the audiovisual work. "Contracting Parties may provide in their national law that once a performer has consented to incorporate his or her performance in an audiovisual fixation, the exclusive rights of authorization * * * shall be owned or exercised by the producer of the audiovisual fixation."

It will be interesting to understand how the proposed international protection of audiovisual performances will play out in the U.S. Under the U.S. Copyright Act, a motion picture or other audiovisual work is deemed to be a work for hire, meaning that the authorship (and the right to copyright in the first instance) vests with the commissioning party, provided that there is a writing signed by the parties indicating that the work is a work for hire. Since application of U.S. law stops at the border, there may be a real concern on the part of motion picture and audiovisual producers, distributors and lenders regarding an independent performance right of actors in on-demand downloads occurring outside of the U.S. If foreign law does not recognize the U.S. work for hire rule in relation to the actor's performance rights, then the work for hire principle may not have much viability for overseas on-demand downloads of audiovisual and motion picture work. In this case, producers and commissioning parties may need to re-evaluate their actor compensation models and actor assignment agreements. Importantly, given the longevity of copyright interests in motion pictures and audiovisual work, producers, distributors, commissioning parties and actors should begin planning now for the potential impact of WIPO's proposed treaty.

Is 100,000 Year Old Art Copyrightable?

The October 11th edition of Science magazine features an article concerning the discovery of an early-human "art factory" in the Blombos Cave area of South Africa. The archaeological find may provide important insight into the early development of human reasoning, including the development of creative tasks. This find also raises an interesting question in copyright. That is, if the landowner of a parcel of land on which an ancient piece of art is found outside of the U.S. becomes the lawful owner of the treasure trove, does this also mean that the landowner can claim a U.S. copyright interest in the previously unpublished art once the art is published in the U.S.?

This past week on October 5, the Supreme Court heard argument in the copyright case of Golan v. Holder. The issue in Golan involves the constitutional ability of Congress to "restore" copyright protection to a work in the public domain under Section 104A of the U.S. Copyright Act. Reports of the oral argument in Golan suggest that Justice Ginsburg may be leaning to upholding the right of Congress to allow copyright protection for a work in the public domain under the view that a foreign work may never have had protection in the U.S. in the first instance (Scotusblog contains a full set of links to the various elements of this case). If an aged, foreign work has never been protected in the U.S., then one line of thinking suggests that there should not be anything wrong with granting full protection once the aged work comes into the U.S., even if the work becomes subject to U.S. copyright law years after its creation, assuming that the work is protectable in its home country.

Which takes us back to the ancient art factory in the Blombos Cave of South Africa. Wondering out loud what Justice Ginsburg's reaction would be to a copyright claim on a piece of art that newly arrives in the U.S. from the Blombos Cave? If the owner of the Blombos Cave art seeks to protect the 100,000 year old work under U.S. copyright law, would such an event not cause Justice Ginsburg, and everyone else, a bit of heartburn, assuming that South Africa would extend copyright protection to the previously unpublished work? Just thinking out loud.

Wyden to Obama: Declare ACTA Invalid

In his October 12th letter to President Obama, Sen. Ron Wyden (Dem., Oregon) asked President Obama to declare that the United States is not bound to comply with the terms of ACTA. The U.S., through the Office of the U.S. Trade Representative, and together with seven other nations, signed on October 1st in Tokyo the Anti-Counterfeit Trade Agreement. The signing nations are: U.S., Japan, Australia, Canada, Morocco, New Zealand, Singapore and South Korea. Of note, China, India and Malaysia are among the many nations not signing this agreement. ACTA seeks to establish an international legal framework for the uniform enforcement of intellectual property rights. Sen. Wyden argues in his letter that the President does not have authority under the U.S. Constitution to bind the United States on an issue relating to intellectual property and trade -- that only Congress has this authority. No response from President Obama has been noted to date, and no other members of Congress co-signed this letter with Sen. Wyden.

Rosh Hashanah

Happy Rosh Hashanah, the Hebrew New Year. The new year begins for people, animals and legal contracts.

Xenophobic Customer Support

New York Senator Charles Schumer may be experiencing a bit of xenophobic tendencies in his newly submitted bill, S. 1536. This proposed legislation, sponsored by only two other accomplices (Sen. Casey and Sen. McCaskill) seeks to require all U.S. businesses that outsources "customer service communication," via phone or wire, to (1) require that the physical location of the customer service assistance must be disclosed at the commencement of the communication, (2) require U.S. businesses to certify compliance annually to the FTC, and (3) authorize the FTC to penalize businesses that fail to comply.

My goodness. Everyone knows that call centers are located all over the place, both inside and outside of the U.S. Does anyone really care where the call center is located? Is it not more important for consumer purposes that the call center employee communicate effectively so as to properly assist the consumer's inquiry? Frankly, I have communicated with call center employees whom I suspect are located within the U.S. yet speak poor English and are difficult to understand. I have communicated with call center employees whom I suspect are located outside of the U.S. who speak English very plainly.

I'm wondering if this type of legislation is really needed. Does this sort of bill speak more to the fear of foreign workers? The location of a call center is not important. Most people would be surprised that when they place a call to a Miami-based cruise line that they are likely speaking to a call center off a land-locked freeway interchange in Springfield, Oregon. This is but one example of how modern communication technology allows the placement of call centers anywhere in the world. The issue should not be where the call center is located. The issue, rather, should be whether the person on the other end of the line knows how to schedule a cruise, answer a question responsibly, and communicate well.

Is it scandalous? Look in the dictionary!

Is the design of a bottle, shaped to resemble a hand flipping the bird (a hand with the middle finger extended), scandalous and therefore not subject to trademark registration in the U.S.? Here is the proposed mark:

Luxuria, s.r.o. sought to register the mark depicted by the shape of the above bottle. The examining attorney took the position that this proposed mark is scandalous and not entitled to registration in the U.S. The matter was appealed to the TTAB, and the refusal to register was affirmed. The TTAB, citing existing law, confirmed that scandalous material cannot be registered, and confirmed further that vulgar material is scandalous for purposes of denying registration. Of note, the TTAB held that for purposes of defining whether material is scandalous, the PTO examiner can rely on dictionary definitions alone.

Dictionary definitions alone, if a term has no other meaning, are sufficient to satisfy the Office’s burden of showing that the mark is scandalous to a substantial composite of the general public.

Indeed, the examining attorney cited to several dictionary definitions of giving the bird to establish that, as far as lexicographers are concerned, the gesture is scandalous. So there you have it. If you can't tell whether material is or is not scandalous, look in the dictionary.

Petition to Eliminate Software Patents

The White House's website contains a We The People section, allowing common folks to petition the government via the web. The White House promises that it will respond to each petition that amasses a threshold number of e-signatures within a stated period of time. The present threshold is 5,000 e-signatures within 30 days of petition posting. There have been numerous petitions posted, but the one petition that has accumulated the most number of e-signatures in the shortest period of time (over 11,000 signatures in four days, so far) seeks to prevent the issuance of any further software patents in the U.S., and to cancel the software patents that have issued. Here is the text of the petition:

We petition the Obama administration to: 

Direct the Patent Office to Cease Issuing Software Patents 

The patent office's original interpretation of software as language and therefor patentable is much closer to reality and more productive for innovation than it's current practice of issuing software patents with no understanding of the patents being issued. 

Under the patent office's current activity, patents have been come a way to stifle innovation and prevent competition rather than supporting innovation and competitive markets. They've become a tool of antitrust employed by large companies against small ones. 

To return sanity to the software industry - one of the few industries still going strong in America - direct the patent office to cease issuing software patents and to void all previously issued software patents.

Happy Birthday, Scott -- Beat On!

F. Scott Fitzgerald was born in St. Paul, Minnesota on this date in 1896. A distant counsel of Francis Scott Key, for whom he was named, Fitzgerald could not carry a tune, but boy could he write!

Change to Blog Address

Notice: My blog address is migrating from us-ip-law.blogspot.com to us-ip-law.com. Same great blog, just at a different site.

Now You See It -- Now You Still See It!

One prerequisite to copyright protection is fixation. A work must be fixed in a tangible medium so that the embodiment is sufficiently permanent or stable to be perceived for a period of more than "transitory duration." So sayeth the Copyright Act. Under this statutory definition of fixation, is a garden filled with shrubbery and flowers fixed? The Seventh Circuit does not think so. Last February, the Seventh Circuit determined that the constant growth of plants in a garden destroyed the fixation, and thus the copyrightability, of a garden. And three weeks ago, the federal court in California (Kim Seng Company v. J. & A. Importers, Inc., CV 10-742) held that there cannot be copyright in a sculptured food dish, determining that food is perishable and, well, not fixed.

I don't know about anyone else, but I can store an arrangement of food on a plate in my refrigerator for more than a "transitory duration." I did so in college and I still do so. This is just the way it is in real life! Indeed, an examination of my refrigerator will reveal food that has been sculptured on a plate for days. Since copyright is not claimed in taste, but in appearance of food on a plate, a several day chill-out in my frig is not "transitory." As for the Chicago public garden, if the shrubs and flowers in Chicago grow as slowly as mine on the Pacific Coast, is a shrub and flower display really transitory? Just because a lawn is mowed weekly does not mean that  there cannot be a lawn sculptor, right? I mean, aren't brass statues polished periodically? Aren't old paintings touched up every decade or so? Aren't photos enhanced, cropped, stapled, mutilated and put back together?

Does the Supreme Court really need to explain the meaning of transitory to us?

Copyright Protection for Sound Recordings – Now

The Sound Recording Simplification Act (H.R. 2933) was introduced in the U.S. House last week, seeking to extend U.S. copyright protection to sound recordings fixed before February 15, 1972. Presently, §301(c) of the U.S. Copyright Act provides that federal copyright law does not preempt the common law and statutes of any U.S. state with respect to sound recordings fixed before February 15, 1972. This preemption prohibition drops out in 95 years – by February 15, 2067. The newly proposed legislation would delete this section entirely to provide exclusive Copyright Act protection to these sound recordings – now.

All the great hits of The Beatles, The Rolling Stones, Buddy Holly, Charlie Parker, The Beach Boys, The Big Bopper and more, that were fixed prior to February 15, 1972, are presently protected by local and state laws, including criminal laws, right of publicity laws, and a patchwork of other laws. This lack of uniformity, consistency and clarity in protecting this material has been a concern to librarians, historians, archivists and other users. On the other hand, the music industry has developed a comfort level, for the most past, with the present system by creating contract-based relationships and contract work-arounds.

Recorded radio broadcasts of the Four Horsemen, recorded civil rights speeches, recorded scholarly lectures and interviews by Faulkner, Einstein and others, and a host of additional historical material, would be protected in a uniform and certain manner by extending the exclusivity of the Copyright Act to these sound recordings.

Frankly, it makes sense to bring all copyrightable work under the wing of protection of uniform federal copyright law. The development of new digital technologies that permit enhanced access to new and historical works can best be regulated under a definitive and uniform national law. Since the present Copyright Act is the vehicle for national protection of all copyrightable work, except for pre February 15, 2067 sound recordings, the elimination of this singular exception will assist the uniform protection of all work in the face of new technologies.

“Where have you gone Joe DiMaggio …” 

Denton True Young

There, on this day in 1890, well before the so-called Modern Era of baseball, stood Denton True (Cy) Young, pitching for the Cleveland Stingers in his first professional game. Cy pitched in Cleveland, St. Louis and Boston before his amazing 22-year career was complete, amassing 511 wins.

Cy was elected to the Hall of Fame in 1937. The Cy Young Award, given to the best pitcher in each league, was instituted in 1956.

"Let others hunt, or fish, or sail

Afar o'er ocean's foam;

Give me the game that's played among

The sweet green fields of home.

Bases pitch on a level spot,

Beneath a smiling sky,

No sport for pleasure or for health,

With Base Ball then can vie..."


The Base Ball Song, by W.J. Bullock, 1874

New Protection For Film And Video Actors?

WIPO appears to be moving toward the revival of talks to develop a treaty to protect the performance rights of actors in audiovisual works. The potential issues in this treaty would not only extend moral rights to actors over their performance, but would extend control to actors over the ownership of their performance and the transfer or license of their performance to AV producers.

WIPO has been pressing since 1996 for some sort of performance rights protection but has not seen much movement. Its historical white paper appears here. WIPO now is exhibiting renewed energy in developing a consensus of members at this time.

The U.S. does not recognize moral rights in the same way as exists in other legal systems, although there is a limited right of attribution and integrity to authors of works of visual arts (Section 106A). Further, the U.S. has in place a "work for hire" rule in which the commissioning party in AV works receives a copyright interest without an assignment or transfer from the actors.

Any adherence by the U.S. to WIPO's proposed treaty would certainly require a re-work of both Section 106A's limited moral rights and the work-for-hire rule. It would perhaps also require new consideration of an actor's performance as a stand-alone work, separate from the AV material, together with re-thinking the early termination right.

Javier Bardem testified at a recent WIPO hearing concerning the proposed treaty, and his statement is set out here.

The Big 5 - 0 For The Big 4 - 4

Happy Birthday, Mr. President.

More On India's Missing Trademark Files

My post of last May 5th commented on the large number of trademark files that the government of India ... lost. It is now confirmed by India that some of these files have been found, but many still remain ... lost. Last week's announcement from India's Office of Controller General explains that, as of last April, some 37,046 trademark files could not be accounted for. The good news is that some 12,683 files have now been found. As for the rest, the government has been able to reconstruct some files with the aid of the registrants, the government has ignored some files since the marks had not been renewed (the files are still lost, but who cares?) and some 8,183 files continue to be ... lost.

Two comments. First, if one of the purposes of a trademark registration is to allow registrants to protect the commercial value of their marks, how does the Indian government's failure to manage its trademark files allow for commercial growth and confidence in India, and how does all of this impact U.S. business partners of Indian firms? Very scary. And second, it goes without saying that the annual fee "diversion" from the PTO raises the specter of similar burdensome administrative problems with the PTO. Another very scary concern for commercial business that relies on IP.

Bad Faith Patent Litigation is Sanctioned

The Federal Circuit provides an important review of the expected legal and professional standards for non-practicing patent plaintiffs in the pursuit of their infringement claims. The new case is Eon-Net v. Flagstar Bancorp. The opinion describes the plaintiff, Eon-Net, as being in the lawsuit business. It, or its related entities, filed over 100 lawsuits and, in almost all cases, sought to settle quickly at a small fraction of the defendant’s anticipated litigation costs. In this instance, Flagstar Bancorp refused to settle and fought hard.

Eon-Net’s patent relates to a system of extracting information originating from a hard copy document and placed into computer memory. After extensive and expensive discovery, Flagstar filed its motion for summary judgment, confirming that it did not extract customer information from a hard copy document but rather from its website. The district court granted the motion and determined that the case was exceptional and merited an award of fees. The district court further allowed defendant’s Rule 11 motion for sanctions. Significant attorneys’ fees and sanctions were awarded against Eon-Net and its counsel.

The Federal Circuit reviewed the patent and confirmed that the claims and written description “repeatedly and consistently” defined the invention as a process that derives information from hard copy documents. “[T]he term ‘hard copy document’ appears over 100 times in the common disclosure of the [three] patents.” Flagstar’s customer information came from its website and not from hard copy documents. The case was not “a close call.” “[T]he specification unequivocally compels the construction adopted by the district court.”

The Federal Circuit confirmed that an exceptional case finding to support an award of awarding attorney fees must be based on clear and convincing evidence. The Federal Circuit will not overturn a district court’s determination except upon a finding of clear error. The Federal Circuit determined that the district court’s exceptional finding was not clear error because:

Plaintiff engaged in litigation misconduct:

• It destroyed relevant documents prior to litigation.
• It intentionally did not implement a document retention plan. Indeed, plaintiff’s principal testified that “I don’t save anything so I don’t have to look.”
• It engaged in abusive litigation tactics in that it failed to engage the claim construction process in good faith, it failed to offer a construction for any disputed claim terms, it lodged incomplete and misleading extrinsic evidence and it submitted declarations that contradicted earlier deposition testimony.
• It showed lack of regard for the judicial system by testimonial statements from its principal (“I am so sick of this stuff, especially this haggling over stupidities and trivialities which is the name of the game in litigation.”

Plaintiff brought baseless infringement litigation in bad faith and for an improper purpose: 

• The plaintiff’s patent “clearly refutes Eon-Net’s claim construction.”
• The infringement claim had an “indicia of extortion” because “it was part of Eon-Net’s history of filing nearly identical patent infringement complaints against a plethora of diverse defendants, where Eon-Net followed each filing with a demand for a quick settlement at a price far lower than the cost to defend the litigation.” “[T]hose low settlement offers – less than ten percent of the cost that Flagstar expended to defend suit – effectively ensured that Eon-Net’s baseless infringement allegations remains unexposed, allowing Eon-Net to continue to collect additional nuisance value settlements.”
• As a non-practicing patent plaintiff, Eon-Net had little to lose in the litigation. “In addition to its ability to impose high costs to defend against its meritless claims, Eon-Net placed little at risk when filing suit. As a non-practicing entity, * * * Eon-Net did not face any business risk resulting from the loss of patent protection over a product or process.  Its patents protected only settlement receipts, not its own products.”

The Federal Circuit took particular point to explain the obligation of plaintiff’s attorney. While plaintiff’s attorney stated at oral argument that his client was “difficult to control,” the opinion points out the obvious; “an attorney, in addition to his obligations to his client, has an obligation to the court and should not blindly follow the client’s interests if not supported by law and facts.”

On the issue of Rule 11 sanctions, the Federal Circuit upheld the district court’s determination and observed that plaintiff’s attorney “failed to perform a reasonable pre-suit investigation.” The court confirmed that “A reasonable pre-suit investigation, however, also requires counsel to perform an objective evaluation of the claim terms when reading those terms on the accused device.”

An award of attorneys’ fees and costs of $489,150.48 was upheld, as was the Rule 11 sanction of $141,984.70.  Grand total: $631,135.18.

Sobering.