Hey, You Got Music in My Baseball!

This evening, the Ippers went to a little going away pub crawl for a friend who’s heading off to the wonderful(?) world of SoCal.  We did the mini-version, making it through only one pub (hey, some people get to work in the mornings).  Of course, that pub had the mandatory large flat screen television airing ESPN’s Sports Center.  In the course of the repeated runnings of highlights, the image to the left caught my eye.  Probably familiar to many, this is the logo of the New York Yankees baseball team. 

This Ipper, however, is far less into baseball than she is into hip hop.  So the first thing she thought of when she saw the logo was Lil’ Wayne’s record label, Young Money Entertainment.  That logo is the one on the right.

Likelihood of confusion anyone?  Since these are both US marks, let’s play around with the Polaroid factors for likelihood of confusion.  (Assuming NY, as the longer established mark, as Plaintiffs.)

1. Strength of the plaintiff’s mark. The Yankees mark is very strong.  Probably recognizable around the world.  A google image search for “New York Yankees” brings up mostly pictures of the logo and almost no pictures of players or games.  The logo has gone beyond something used to show fan support and has practically become a brand in and of itself.  Hats bearing the logo come in ever color, including black on black, and are worn by people across the US regardless of their baseball team affiliation.  (I once saw a fan at a Giants game remove his Giants cap as soon as the game ended and put on his everyday Yankees cap to leave the stadium.  No, the Giants had not lost.)
2. Degree of similarity between the two marks. Both marks have the same font and the same layout.  In addition, the letters M and N are very similar, thus giving the two marks the same general look and feel, despite the different letters.  Although the Yankees' specific team colors are navy and white, the mark appears in many different colors, as does the Young Money mark.  Black white color combinations are very common for both marks.
3. The proximity of products or services. A baseball franchise and record label seem pretty far apart, however there is lots of overlap here.  To start with, there’s the New York Yankees Greatest Hits albums.  Then there’s the merchandising aspect.  Hip hop labels and baseball teams both deal in clothing and accessories bearing their marks.  The products and services of the two marks aren’t directly related, but do have a lot of side-overlap.  Incidentally, the Yankees mark happens to be one that is very common for hip hop artists and fans to wear.  Just another area where the marks might be seen in close proximity.  (Compare this NY bling to this YM bling.)
4. Likelihood that plaintiff will bridge the gap between markets.  As discussed above, the gap is pretty much already bridged, especially since the Yankees have put out music albums.
5. Evidence of actual confusion.  For this, I can only give my own antidotal experience.  Several times while preparing this post, I accidently copied one mark thinking I had the other one, or opened a new webpage for the mark that was on an open page instead of the one I needed.  It appears others have at least noticed the striking similarity.  Link (WARNING!!! foul language and what is best described as ‘ignent’ behavior on that link.)  That’s not much, but it’s all I’ve got.
6. Defendant’s good faith in adopting the mark.  Without asking Lil’ Wayne himself, I have no idea why he chose this mark.  I am guessing it’s partly in homage to the Yankees, but also partly because the Yankees logo is so popular in hip hop.  The style and familiarity of the logo express a message that, on some level, associate with hip hop.
7. The quality of defendant’s product or services. Judging the quality of hip hop…. I think we’re going to skip this factor this time.
8. The sophistication of the buyers.  I would guess that buyers of Yankees logo emblazoned items span the whole gauntlet of sophistication.  Purchasers of Young Money items are probably less likely to be sophisticated in the way courts would think of it, but they’re more likely to be very street smart and able to protect themselves from being ripped off by the wrong mark. (Ripped off in the sense of not getting what they thought they were paying for.)

Seems to me, the Yankees would have a decent case.  But I don’t think they would (or should) bring an action.  The mark is very strong; most people who care will know which mark they want, and a suit would probably bring nothing but bad PR.

But what do our readers think?  Likelihood of confusion?  If you were the Yankees, would you bring suit?

Did You Read That?

I actually, occasionally, read the terms of service and licensing agreements before clicking “Agree” for websites and software programs.  Apparently I’m a bit odd in that sense.  Even my Intellectual Property Licensing professor said she doesn’t read them.  Sometimes I’m just curious, sometimes I really care, sometimes I don’t have the time or energy.  One of the biggest factors in my decision to read is whether there are other options for similar services or if I can tailor my use of the site to fit only the terms to which I agree.

A Little Comparison

For example, I reluctantly joined Facebook a few months ago but my only ‘picture’ is a black box.  Why?  Because this is the Facebook Terms for users’ content include:

“you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook ("IP License")” (emphasis added)

Facebook has really cleaned up their terms of use (compare to prior), but I don’t like that “transferable” part in there.  Why does Facebook need the right to transfer the license I gave Facebook for my work?  If another company were to buy Facebook, it would want all the license rights to the content on the site, but I might not trust the new owner anymore than I trust Facebook.  [And, when I joined, Facebook’s terms included a provision allowing Facebook to use my content commercially.  I presume this was because Facebook runs ads on the side of the page, but it was a term with which I am not comfortable.]

I was able to choose not to post photos on Facebook because there is another option; Flickr.  The Yahoo! Terms of Service that govern for Flickr include this nice little tid bit:

With respect to photos, graphics, audio or video you submit or make available for inclusion on publicly accessible areas of the Yahoo! Services other than Yahoo! Groups, the license to use, distribute, reproduce, modify, adapt, publicly perform and publicly display such Content on the Yahoo! Services solely for the purpose for which such Content was submitted or made available. (emphasis added)

See that nice little “solely for the purpose of…” clause.  I love that.  Yahoo! needs the mentioned license rights in order for Flickr to do what it’s supposed to do.  But, I have no desire to give Yahoo! those rights for something like handing my photos out on flyers at a conference (unless, of course, they’re cc-licensed in a way that allows this).  Yahoo! doesn’t try to grab more rights than it needs.  Beautiful.

Surprises

Sometimes, a license agreement or terms of service can be pleasantly surprising.  Sometimes, surprising in a not so pleasant way.  The Microsoft Terms of Use are actually pretty easy to read and navigate.  On top of that, the company does a decent job of explaining the nebulous concept of fair use, explaining that “[I]n limited situations, you can use copyrighted works without permission from the copyright holder.”  But the really great, and extremely surprising, piece in the Terms of Use is the mention of and support of Creative Commons licenses.  Creative Commons and Microsoft are usually assumed to be on opposite sides of the battlefield.  It’s great to see Microsoft recognizing the value CC licenses provide:

Creative Commons licenses are a simple way for you to let people know what uses they can make of your creative works and under what conditions.

Google Chrome, on the other hand, has a not so great surprise in its terms:

“12.2 Google may at any time, terminate its legal agreement with you if: (A) you have breached any provision of the Terms (or have acted in manner which clearly shows that you do not intend to, or are unable to comply with the provisions of the Terms)”

In general, the way software licenses work is that if you use the software, you’re agreeing to the licensing terms and therefore using it with permission.  If you were to use the software without permission, you would be committing copyright infringement because of the unauthorized reproductions of the copyrighted elements of the software.  So, if you breach a provision of the Terms so that you are no longer an authorized user, you are now an unauthorized user and continued use constitutes copyright infringement.  Copyright infringement is very expensive if you are found liable.

Incidentally, Creative Commons licenses have a very similar provision in them.  “This License and the rights granted hereunder will terminate automatically upon any breach by You of the terms of this License.”  This term makes sense in CC licenses because the license is specifically granting particular copyright rights for a copyrighted work.  If the person won’t agree to the terms for these rights, then the person who owns the rights doesn’t need to grant them.  i.e. If I’ll let you sit in my chair as long as you won’t stab it with your pocket knife and you insist you want to stab it with your knife, there’s no reason I should let you sit in it.

The license agreement for a piece of software, such as Google Chrome, contains many more issues than just copyright rights.  For example, Google’s Terms include provisions about information storage, disrupting service, removing content and protections for their software that go beyond that covered by normal IP laws.  In this case it’s like I’m saying you can sit in my chair, but only if you don’t stab it with your knife, do eat potato chips tomorrow, never step on my lawn, and only cry on Thursdays.  If you happen to cry on Wednesday, you can’t sit in my chair.  Whether or not I let you sit in my chair has a great deal to do with how you’ll treat my chair; it has nothing to do with when you cry or if you step on my lawn.

Will I still use Chrome?  Yes.  Why? Because there aren’t any terms I see myself not being able to follow.  The other terms are generally agreeable to me.  And, I find Chrome to be my best option for browsers.

The key to reviewing terms of service is to know what you are willing to accept for a specific service and what will never be acceptable no matter how great the service.  And have fun reading, you never know, you might be surprised!

Oh Timbaland!

Dear Mr. Timothy Mosley,
I must say, I am a bit surprised. You’ve been in this game long enough to know better than this. You’ve been a producer nearly 15 years now, you ought to know all about sampling.

It’s not that you’re being sued (again) for copyright infringement – that happens to even the best of them – it’s your comments in response that make me shake my head. Before we take a look at those, I want to let you know that I am aware these comments are from 2007, when the video comparing your song and the Finnish song you allegedly used first appeared on YouTube. I am also aware that a Norwegian court has already dismissed a case about the two songs, which is now on appeal. It’s quite possible the Flordia court will find no substantial similarities or no access for copying – a friend of mine listened and said they didn’t sound alike – but, that still does not excuse your comments from 2007, when this whole mess started. Let’s go over those, shall we.

"That mess is so ridiculous." "I can't really discuss it because it's a legal matter. [And that is where you should have stopped.]

But that's why people don't believe it. [I’m not sure what ‘it’ is, so we’re going to leave this alone.]

It's from a video game, idiot. [Bad move, you just ruined one of your defenses. You admitted to having access to the allegedly infringed work. The person bringing the lawsuit, Glenn Gallefoss, claims the song was done for the Commodore 64. My family has one of those, it’s a computer, used to play video games. However, there is hope. If the video game you are mentioning came out before the allegedly infringed song, you might be able to show that Gallefoss (and the original creator, since Gallefoss remixed, Janne Sunni, actually took the song from a game themselves. ]

"Sample and stole is two different things. [That depends on whether or not you cleared the sample, and judging by the lawsuit, you didn’t.]

Stole is like I walked in your house, watched you make it, stole your protools, went to my house and told Nelly, 'Hey, I got a great song for you.' [Yes, that is stealing too, even without taking the protools with you.]

Sample is like you heard it somewhere, and you just sampled. [If that sample isn’t cleared, it’s still stealing. As you should well know, being a creator yourself, creators automatically get certain rights in their works, the moment the works are created. These rights – we call them copyrights - include the sole right to copy, publicly perform and make derivative works. That’s why there are things called licenses. I assume you’ve heard of licenses, and I’d bet a lot of money you frequently get paid for them from organizations like SoundExchange and (if you write as well as produce) ASCAP. Licenses are how creators arrange to let others do the things only the creators have the right to do. If I create a song and you want to make a derivative work from it, I license you that right for that work and you pay me a licensing fee.]

Maybe you didn't know who it was by because it don't have the credits listed." [This, Mr. Mosley, is called an orphan works problem. There’s been a lot of debate about orphan works lately, including in Congress. Orphan works are works for which the creator is unknown or unable to be found. Basically, the work has no parent, hence the term orphan. Just as it’s very hard to ask a parent you can’t find if his child can come out to play, it’s very hard to ask a creator you can’t find for a license to his work. Unfortunately, it does not also mean you can just use the work.
Part of the reason there are so many orphan works now floating around is the very long term of copyright and the effects of the retroactive Sonny Bono Copyright Extension Term Act. One solution to the orphan works problem would be a shorter copyright term. (Did you know it was originally only 14 years?!) But somehow, as a music producer, I’m guessing you’d be against that.]

This might sound sort of bleak, but don’t give up. There’s plenty of music out there that you can sample all you want without having to worry about lawsuits. First, there’s something called the public domain. This might be a bit hard to sample because you will only be able to use very old sound recordings of even older songs, and that’s only if the sound recording copyright owner didn’t renew their copyright (another mess from extending copyright terms.) Figuring out what’s in the public domain can be almost as much hassle as trying to license something that isn’t.

There’s an even better option. Check out ccMixter. It’s a place where people put music they want others to use and sample. You don’t have to license the music because the creators have already licensed it using Creative Commons licenses. These licenses say specifically what others can do with their work. Just don’t use anything that has an “nc” license it; that means no commercial work, and you, my friend, do commercial work.

As for the law suit, don’t worry. You’re very rich, so I’m sure you have very good attorneys. (Although, that didn’t help P.Diddy.) Just keep your mouth shut.

Sincerely,
goldenrail

Yes, Virginia, there is Piracy

Andrew Rens’ blog, Ex Africa Semper Aliquid Novi has a post today on “Piracy in Africa,” which deplores the North/South battle where the North (developed countries with large intellectual property industries) encourages the South (Africa) to prevent copyright infringement by increasing copyright enforcement.

While I agree with the author’s point that African countries should not be forced to use their limited resources to get already over-bloated (and in my opinion rather useless) foreign industries, I also believe that the post deserves some criticism.  I encourage you to check out his post; it has some good points, and it’s only fair that you see his whole side rather than just the pieces I pick at.

Piracy, there are many who have taken issue with using this term in regards to copyright infringement.  Rens briefly alludes to this at the end of his post.  In terms of the few examples of infringement mentioned by him: downloading music, copying CDs or DVDs for personal use, using a copied version of Windows, I agree, this is not piracy.  However, Africa does have levels of copyright infringement than can legitimately be called piracy.  In Nigeria, for example, huge optical disc plants churn out incredible numbers of unauthorized copies of CDs, DVDs and VCDs.  The quantities of unauthorized copies can far out-number the amount of authorized copies on the market.  These optical disc plants do this solely for the sake of profit, often times delivering less than quality goods.  This is piracy.

It is these infringing materials that prevent the real threat to copyright in Africa, not downloads (a developed-country problem).  These types of infringing materials do not hurt the “large monopolies” Rens fingers as the supposed beneficiaries of tighter enforcement laws.  These infringing materials are very often unauthorized copies of local artists’ works.  These infringing materials hurt the local industries, the barely-bourgeoning, attempting to grow, potential industries.

Rens also says, “The 547 million people living in Sub-Saharan Africa without electricity (World Bank) have no use  for CDs and DVDs.”  For a statement from someone living in Africa, this really surprised me.  Any African knows that you do not need electricity to have use for such things.  There are always work-arounds; things like small generators and car batteries.  I have seen mud huts with satellite dishes, thatched roofs with antennas reaching to the sky, for the battery powered television far down below.  The biggest problem with DVDs and CDs is not the lack of electricity, but how easily they get scratched.  But for that, there’s cassette tapes, which can also easily be reproduced.

In terms of the developed world pushing down on developing countries to enact stricter copyright laws, to spend more on enforcement, and to protect these foreign rights, Rens is correct, there are “high barriers to joining the Information Society” and they do “require us to critically examine” attempts to “impose greater barriers to access to knowledge.”  But, these laws also play an important role in local economies, for the benefit of the local people.  We cannot overlook this.

[I have completely ignored the other aspect of benefits that come with strengthening IP laws, which is of course encouraging foreign investment, in order to focus on the purely domestic aspects.  I’d be happy to explore the other side more if anyone should be interested in discussing it.]

When Rightholders Die

Yesterday and today, the internet’s abuzz with the unfolding story of Michael Jackson’s death.  Of course we at Ip’s What’s Up have no news to add about what happened; what we have are some IP related questions.

At one point Michael Jackson owned a large amount of the Beatles’ catalogue.  How much of it does he still own?  Or rather, how much of it remained and is now part of his estate?  What will happen to the rights previously held by Jackson?  Does Sir Paul have a chance to recover the rights?

There are a variety of intellectual property issues related to estates.  Intellectual property is property, and the rights given under the IP laws (with some exceptions) can be transferred just as any other property, including through trusts, through a Will or through an estate sale.  However, intellectual property also brings with it some interesting caveats.  Depending on the jurisdiction and when the work was created, rights may return to the original owner (the creator or his heirs) upon someone’s death.  Death also affects how long the rights will be valid as most copyright regimes begin counting the life of a copyright from the death of the creator.

Ip’s What’s Up will continue to report as we attempt to find out more about what’s left of Michael Jackson’s Beatles collection and what’s going to happen to it.

That Lady that Got Sued in Minnesota (Clearing up some lay-misconceptions about the Jammie Thomas trial)

One of the neat things about being an Ipper is that people know you’re interested in intellectual property.  One of the sometimes neat things about this is that they try to talk to you about whatever their idea of intellectual property is.  It’s not neat because you have to try to figure out what someone’s talking about and do some straightening out.  It is neat because you get a sort of down on the ground insiders view to the misconceptions that are out there.

Today, Ip’s What’s Up would like to clear up a few misconceptions overheard about the Jammie Thomas/RIAA trial.

• Jammie did not sue the music industry – the Recording Industry Association of America, an organization that represents a good chunk of the music industry in the United States sued Jammie.  The RIAA began a campaign of lawsuits in 2003 where they tracked down people who had shared files over the internet.  Both copying and distributing music without permission is against the copyright law.
• The ‘deal’ Jammie refused was a standard settlement offer that some view as extortion – Jammie’s case was a big deal because it was the first one where the person accused of sharing songs refused the settlement deal.  The RIAA usually offers that the person accused of sharing music pay about $5,000 and the RIAA will drop the law suit.  Some experts, such as Ray Beckerman, feel that this offer is simply the RIAA scaring people and extorting money from them.  There are questions about how accurately the RIAA can identify people it things have shared music.  There is also concern over how much of a difference there is between the $5,000 settlement offer and the $24 value of the songs supposedly shared.  (In Jammie’s case, she was accused of sharing 24 songs.)  In short, the settlement was refused on the principle of the matter.
• Jammie was not sued twice – although this was her second trial, she was not sued a second time.  The first trial was ruled a mistrial because of some problems with the instructions given to the jury.  The second trial sort of replaces the first one.

The widely publicized results of the second trial were worse for Jammie than the first trial.  In the first trial she was found to have committed copyright infringement and the RIAA was awarded $200,000 in damages.  This time, the RIAA was awarded almost $2 million.  There is talk in the copyright world of a third lawsuit; one that would challenge the constitutionality of the damages for copyright infringement.

Copyright War Summit Report: Law vs. Technology: Embracing Not Suing New Technologies

Today Ip’s What’s Up brings you our report on the last of the four BrightTalk presentations in the Copyright War Summit we attended: Law vs. Technology: Embracing Not Suing New Technologies.  E. Michael Harrington explained his four work mantra and reviewed the good, the bad and the neutral of copyright and technology.

Harrington’s Mantra

• Everything – access to all audio/visual media
• Everywhere – access in your home, on any mode of transportation, anywhere you might go
• Anytime – access any and all the time
• Anyway – including using media to create derivative works and using whatever device you please to access and change media

The realization of Harrington’s mantra is currently blocked by both law and technology.  Copyright law prevents ‘everything’ and ‘anyway.’  Technology, with its proprietary protections, can prevent ‘anyway’ as well.  ‘Anytime’ and ‘everywhere’ are pretty well covered now, being allowed (to some extent) by both technology and the law.  Harrington’s good/bad/neutral list helps explain how technology and the law both hinder and help in the achievement of Harrington’s Mantra.

Copyright and Tech – The Good, the Bad and the Neutral

The Good

• The Sony Betamax case from 1984, introducing “substantial noninfringing use” and “time shifting” as key copyright terms (also mentioned by Howard Knopff during his presentation)
• Audio Home Recording Act of 1992 (AHRA), allowing consumers access to blank digital media (and imposing a levy on specific blank digital media, paid to the recording industry)
• RIAA v. Diamond Multimedia case from 1999, allowing consumers access to mp3 players
• introduction of the iTunes music store in 2003, allowing consumers a legal and easy way to download music
• Amazon introducing DRM-free mp3s in 2008

The Bad

• Telecommunications Act of 1996, deregulated the broadcast industry so that it was ok for a single company to own many, many stations (for plenty of commentary on why this is bad and where it’s led, see Inside Music Media)
• Digital Millennium Copyright Act [pdf] in 1998, made circumventing technologies put in place by media owners a crime in itself, regardless of legality of use of the media
• UMG v. Mp3.com case in 2000, Mp3.com was the first of the ‘store your own music in the cloud’ music lockers; Universal’s lawsuit shut down the service
• A&M v. Napster case in 2001, the infamous case that changed the face of Napster.  Harrington pointed out that there were “so many reasons why [turning Napster into something the industry could use] should have worked”
• Closing of Tower Records in 2006, the beginning of the end of brick and mortar record stores

The Neutral

• Marketplace
• New technology
• Litigation
• Legislation

For more details on Harrington’s mantra or his list of good, bad and neutral aspects of technology and the law, or to explore some reasons why people break the law, check out Harrington’s full presentation.  Even if you’re not that interested in the topics, you will be entertained.

Copyright War Summit Report: ACTA, WIPO and in Canada

Howard Knopf, of Excess Copyright, did a presentation for the BrightTalk Copyright War Summit that summed up three important copyright topics: the ever-top-secret Anti-Counterfeiting Trade Agreement (ACTA), the World Intellectual Property Organization (WIPO), and that horrible den of copyright infringement – according to the USTR Special 301 Report – Canada.  (Readers, please be sure tongue is properly inserted in cheek when reading that last part.)

ACTA

Much talk and speculation have surrounded ACTA since leaks of its existence first began to surface.  Knopf does not get into any of the meat of ACTA (meat can be found here).  Instead, he focuses on the very important issues surrounding the agreement.

One of the biggest concerns is the plurilateral nature of the agreement, the absence of major international organizations like WIPO and the World Trade Organization.  These two organizations traditionally handle international intellectual property treaties, yet they are completely uninvolved with ACTA.  Also missing from the negotiations: developing countries.  There are more developing than developed countries in the world; they are important.

ACTA’s secretiveness comes down to one thing.  It is a lobby-driven effort being propelled forward by music, film and software industries.  These industries don’t want to protect against fake drugs or other ‘counterfeits’; they want ex officio border control measures, customs officials who check iPods for illegally obtained music, and 3 strike ISP rules.

[For more information on the ACTA part of Knopf’s presentation and ACTA in general, see IP JUR.]

WIPO

WIPO has had its fair share of trials and tribulations during the past decade.  The Treaty for the Protection of the Rights of Broadcasting, Cablecasting and Webcasting Organizations is still just ‘proposed.’  The Audiovisual Performances Treaty is dead in the water.  And the Treaty for Improved Access for Blind, Visually Impaired and other Reading Disabled Persons has met with some unexpected opposition.

Yet, Knopf appears hopeful that WIPO is on the mend.  The new Director General, Francis Gurry brings a lot of energy and integrity back to the organization.  Committees continue to meet and move forward on their individual projects and the Treaty for the Blind is still on the table.

Canada

Knopf believes (and this Ipper thinks there’s a lot of sense in his argument) that Canada has one of the best IP regimes.  Like Baby Bear’s bed, Canada’s IP laws are not too hard and not too soft.  Canada has a tax on blank media, which compensates rightsowners for media sharing.  There is also wide Fair Dealing (similar to US concept of Fair Use) for educators and librarians, outlined in Canada Supreme Court case CCH 2004.

Knopf also gave a short summary of important marks in copyright’s history: the Statute of Anne, Apollo v. White Smith, introduction of the first portable computers, Sony, Napster, Grokster.

If you’re interested in more about the superiority of Canadian IP law, WIPO’s strength going forward or the controversy surrounding ACTA, you can check out Howard Knopf’s excellent and informative presentation in full at BrightTalk.

Copyright War Summit Report: The Future of Google Book Search

Google Policy Analyst Derek Slater presented on Google Book Search and its future.  In addition to explaining the Google Book Settlement (discussed here, with follow-ups here and here), Slater clarified the underpinnings of Google Book Search itself.  He also provided some interesting statistics on orphan works and the public domain.

For those following the Google Book Search Settlement controversy, the most interesting part of the presentation would probably be Slater’s discussion of how the Settlement makes competition easier rather than eliminating it (one of the biggest criticisms of the Settlement Agreement).

Book Search Sources

The books contained in Google Book Search come from two different projects.  One of these projects is undisputedly legit.  It is a Partnership Program in which authors and publishers contribute to Book Search by sending copies of their works to Google for scanning.  The authors and publishers have agreements with Google where they share the revenue from any advertising displayed alongside views of the scanned books.  Slater confirmed over 1.5 million books have been added to Google Book Search in this way.

The Library Project is a partnership not with publishers and authors, but with a number of libraries around the world.  Basically, the agreement is that Google scans the books and the libraries receive digital copies of their collections.  Google separates works in this project into two subdivisions: out of copyright and in copyright.  The in copyright books scanned from the Library Project are the cause of the controversy that led to the law suit and subsequent Settlement Agreement.

Facilitating Competition

Slater argues that the Google Book Search Settlement actually facilitates competing with Google Book rather than giving Google a monopoly.  In short, this is because Google is doing all the heavy leg work.  Google is helping to fund the registry that will contain information about who is willing to license and who is not, or under what circumstances someone is willing to license (assuming the settlement is approved). 

Google’s work will lead to less orphan works problems by increasing the number of claimed works.  This will help open up access to currently orphaned works for others wishing to compete.  Google’s work will also help clarify the status of older works, works whose creation date falls into the 40 year grey period created by various changes to the US Copyright Act.  Google believes that a great number of these works are actually in the public domain.  Once the status of a book is known, possible competitors will have an easier time accessing the book.

Google is also facilitating access for potential competitors by making copyright renewal records available for download.  Slater’s arguments address many of the concerns raised by those fearful of a monopoly of knowledge, except for one big one: competitors access to original copies of the books to scan.  Perhaps Google assumes competitors will just have to go through libraries as Google has for out-of-print works.  Will libraries be willing to partner with lesser-knowns or start-ups?

The full presentation goes into more detail and does a good job of explaining the Settlement and its perceived benefits.  If you are interested in details of the Settlement or the statistics on copyright and books, it’s worth a view.

Copyright War Summit Report: Recording Industry vs. The People

Recording Industry vs. The People, presented by attorney and author of the blog Recording Industry vs. The People, Ray Beckerman
Beckerman discusses how the RIAA has proceeded in their law suits thus far, highlighting the biggest problems with the RIAA's tactics.  Some of these problems include: unlicensed investigators, insufficient evidence, and violations of various rules governing Federal Court procedures (Federal Rules of Civil Procedure). 

Most interesting is the missing proof of registration.  Under US copyright law, registration is not required for copyright protection, but it is required in order to recover statutory damages in an infringement case.  Most RIAA cases settled, and for the few that went to court, none investigated the required registrations.  But it looks like that’s about to change in the new Thomas retrial.

Another surprising element to the RIAA cases (or not-so-surprising, depending on how you’re looking at it) is that the RIAA has not gone after anyone who has used bitTorrent types of services.  Hmm… seems to me that’s like only chasing after pirates who don’t have boats.

If you’re interested in the RIAA’s lawsuits, have ever downloaded  music or even ever thought of sharing music online, Beckerman’s presentation is well worth a watch.

Copyright War Summit on BrightTalk

A bullet-less, death-less war sounds like it should be a dream come true. Too bad it's only a poorly named threat to some large industries. The Copyright War is often discussed like some big blockbuster series, complete with rampaging pirates. Today, BrightTalk hosted a Copyright War summit, bringing together webanair presentations from a variety of people in a variety of locations. Topics ranged from the RIAA and ACTA to Creative Commons and Google Book Search.

Unlike the summits, panels and seminars we usually discuss on Ip’s What’s Up, the Copyright War Summit is unique in that you can still see the actual presentations. And they’re free. Originally presented live, the slide shows and accompanying audio were recorded by BrightTalk and remain available on the BrightTalk website. goldenrail was able to attend four of the seven presentations in the summit. Ip’s What’s Up will present small summaries of these presentations over the next few days.

Here is a full list of the presentations and presenters

• Recording Industry vs. The People - Ray Beckerman
  The Future of Google Book Search – Derek Slater
• Anti-Counterfeiting Trade Agreement (ACTA), WIPO and in Canada – Howard Knopf
• Law vs. Technology: Embracing Not Suing New Technologies – E. Michael Harrington
• Successfully Defending Software Audits – Robert J. Scott
• Creative Commons: The Sharing Standard – Fred Benenson
• HADOPI – David-Irving Tayer

[fyi: There’s a few places in the presentations where slides get a little mixed up or presenters get flustered. Many of the presenters were new to BrightTalk and ran into various technical issues. Just bear with them and enjoy!]

US Developments in Internet Trademark Usage

Today, Ipper goldenrail had the opportunity (thanks to a friend at IP Society) to attend an interesting panel discussion on trademark law and the internet: Marked for Confusion: Has the Internet Changed Trademark Law?

Various Bay Area attorneys and other IP enthusiasts gathered in the early morning hours at Bingham's Silicon Valley office* for a special treat.  (And not just the fresh fruit and delicious tea.)  What they received was a well-done discussion with expert panelists Eric Goldman, of Santa Clara University Law School, and Mary Huser of eBay.  Moderator  Tom Kuhle, of Bingham McCutchen, added more experience and plenty of witty fun to the presentation.  The entire event was like a superbly done law school text book, using cases to illustrate basic elements of trademark law and the new developments within those elements.  A list of the cases used and some special points on each are listed below.

Several parts of the event deserve special praise: 1) the panel started at exactly 8:30, as promoted; 2) the panel ended at exactly 10:00, as promoted; 3) despite the local nature of the presentation, there was plenty of international focus with an emphasis to the audience of how important international law and cases are when dealing with anything on the internet.  This Ipper was impressed and thinks some fellow bloggers might have preferred this session to a certain "International" session dealing with the internet and trademarks.

Cases Used in Discussion

• 1-800 Contacts v. When U (2005): a staple of any Trademark text book, 1-800 Contacts was one of the first cases involving internet advertising and trademarks in the behind-the-scenes part of the web.  In this case, the 2nd Circuit held that using trademarks in the internal workings to bring up information about competitors was not "use in commerce," something required by the Lanham Act for trademark infringement.
  
  Be careful, the panel warned that Rescuecom may have limited 1-800 Contacts to its facts, and its facts involve outdated technology no longer in use.
  
• Rescuecom v. Google, 562 F. 3d 123 (April 3, 2009): this time the Second Circuit found that trademark words in the internal workings of a search engine did equal "use in commerce."  The reason: google sells the keywords.
  
  The court did not decide whether or not the use was infringing as this is an appellate decision overturning the lower court's dismissal of the case.
  
• Hearts on Fire v. Blue Nile 2009 WL 794482 (D. Mass. Mar. 27, 2009) (summary and analysis): another keyword "use in commerce" case.  This case is a battle between two competitors rather than the usual company x verses a search engine.  Again, the court said there was use in commerce; this time because the defendant purchased trademark words as keyword terms.  The court denied the motion for dismissal.
  
  As Eric pointed out, Blue Nile faces a massive tidal wave of litigation costs if it chooses to defend its use.  It will be interesting to see whether this case moves forward or settles.
  
• Beltronics v. Midwest Inventory Distribution (April 9, 2009): a confusion case with a first sale defense.  Midwest was selling Beltronics radar detectors below retail cost on eBay with a non-manufacturer's warranty.  The Tenth Circuit held that the possibility of creating confusion by selling legitimate products with a different warranty was enough for Beltronics to "demonstrate a substantial likelihood of success on the merits," the standard needed to grant the preliminary injunction at issue.  The court did not decide the actual matter of confusion.
  
  The panel members had strong feelings about this case, mostly negative.  Eric sees no real confusion and Mary sees one of many recent cases using trademark law in an attempt to keep prices uncompetitively high.
  
• Babyage.com v. Leachco, M.D. Pa. Jan. 12, 2009: deals with the newer "initial confusion".  This is the type of confusion that might lead a customer to the wrong website but not to buying the wrong product.  Here a search for Leachco led customers to Babyage where Leachco products were compared with Babyage products.  The court held there was a question of fact as to whether or not this created initial confusion and denied summary judgment for Babyage.  Another case that will be interesting to watch if it continues to trial.
  
• Mary Kay, Inc. v. Webber, 2009 WL 426470 (N.D. Tex. Feb. 20, 2009) (summary and analysis): another failing of the first sale defense.  The court decided that discontinued and expired beauty products were different than actual Mary Kay products and therefore the first sale doctrine did not apply to the case.  Summary judgment was denied.
  
  As an Independent Beauty Consultant myself, I am a bit confused as to why this is a trademark infringement case and not a breach of contract case.  Beauty Consultants are not allowed to sell products below the suggested retail price, as this Beauty Consultant was doing on eBay.  Makes one wonder if Mary was on to something when she again mentioned brand owners attempting to use trademark law to protect anti-competition measures.
  
• Tiffany v. eBay (pdf), 576 F. Supp.2d 463 (S.D. N.Y. 2008): a rather well-known case in the TM field.  The court in Tiffany held that eBay was not liable for the few non-legit 'Tiffany' pieces that slipped through eBay's extensive infringement-stopping process.  The case is now going up for appeal, where the key issue will be whether the correct standard of knowledge for liability is specific or general.
  
  Mary stressed that one of the most important things in this case was eBay's putting before the judge all the information about what eBay does to help prevent against infringing sales on its platform.  The court was then able to compare all the work eBay had done with Tiffany's simple statement than any seller selling more than five Tiffany items must be selling counterfeit items.  Tom recommended the courts opinion as excellent reading because it goes through eBay's process in detail.
  
  Eric pointed out that many courts have written decisions in which they praise third-party platforms for their involvement in helping to protect brand-owners and sellers.  He contrasted this with the common position from the 1990s where third-party platforms wanted as little involvement as possible with any of the other parties in order to lessen their liability.

* The event was sponsored both by Bingham McCutchen and by the High Tech Law Institute at Santa Clara Law School.

Butter, but No Rolls

As you can see, Ip's What's Up is going through a face lift and a little url-liposuction.  You can now find us at www.ipswhatsup.com (http://ipswhatsup.blogspot.com will still redirect you here).

We've got this pretty new butter color background, which is much easier to read than the old navy and some easier to navigate sidebars.  However, it turns out the Ippers aren't great at plastic surgery - don't ask us for a new nose, you might lose it altogether.  In the process of creating our new, improved look, we lost the old blog rolls.  We will be redoing the blog rolls in the coming weeks.  If you know of a blog that was on the old blog roll, or should have been, and you don't see it on the new one, please let us know. 

Thanks!
~ the Ippers

Do You Know What Your Field Is?

Intellectual Property is a fascinating area and those working in it can get quite caught up in the glamour of copyright, trademarks and patents.  However, just as intellectual property is constantly moving in on all areas of life, those areas are also moving in on IP.  This was the topic addressed by an INTA panel this week.  (The panel was poorly advertised and not particularly well executed, but the information was important.)

Those working in the intellectual property law field must now also be acutely aware of defamation, free speech and media law issues.  During the panel, Rachel Matteo Boehm explained how these two formerly separate areas of law can sometimes conflict with each other.  Intellectual property laws, especially copyright and trademarks, are viewed in the United States as tolerable encroachments of free speech.  Media law focuses mostly on the protection of free speech.

While we tend to speak of these conflicting issues in terms of the First Amendment in the US, the issues are not particular to one country.  For example, defamation and liable are particularly important when dealing with the UK.

This particular Ipper doesn’t know much more about the particulars of this intersection (and found the panel extremely hard to follow), but she does know this: if you are in a intellectual property field or planning to be in one, you should at least be able to recognize when media law issues arise.  It’s better to get outside help for the problems you can’t address than to not realize they are there in the first place.

Some Good in ACTA?

Sometimes us copyright enthusiasts (on either side of the battle) get so caught up in the fervor of the copyright/copyleft war that they miss some sort of key part of the puzzle.  Ipper goldenrail found herself quite guilty of this during the opening remarks at this year’s INTA (International Trademark Association) meeting when the INTA President mentioned benefits of ACTA.

Several blogs have reported on ACTA, the Anti-Counterfeiting Trade Agreement being worked out in secret between big countries under the influence of big companies.  Most of the posts deal with the copyright and enforcement implications of  the new trade agreement.  (example) 

As it turns out, ACTA might actually have some benefits, it might deal with, gasp, anti-counterfeiting!  Although the trademark battle against counterfeit goods is in the title of the trade agreement, this aspect has often been overlooked.  Anti-counterfeiting protection is important on a different level than copyright protections.  Copyright protections protect right holders.  Anti-counterfeiting measures protect brand owners and the public.

The purpose of a trademark is to let consumers know at a glance what they can expect from a protect.  Consumers associate brand names with certain levels of quality and expect consistency.  Counterfeit goods destroy this reliance and can jeopardize the health and safety of consumers.  The public welfare concerns implicated by counterfeit goods make tougher anti-counterfeit rules a plus for everyone except the counterfeiter. 

[*note: sometimes people confuse counterfeit and generic, especially in regards to pharmaceuticals.  These are not the same thing; generics do not pose the same risks.]

It would be nice to take a look at the anti-counterfeiting provisions in ACTA to see specifically how the trade agreement might help protect against counterfeit goods.  Unfortunately, the secrecy about which many scholars have bitterly (and rightly) complained prevents us from taking a close look.

Happy Thoughts Series: Idea/Expression Dicotomy

Although some argue the idea/expression dicotomy in US Copyright law is a bad thing and others argue it no longer exists, Ip's What's Up would like to add the idea/expression dicotomy to the list of good things about copyright law.

The essence of the idea/expression dicotomy is that an author can copyright his own expression of something but not the underlying idea itself.  For example, if I were to paint a picture of an apple, I would have copyright over that particular apple picture but not over all paintings of apples.  The idea to paint the apple is not protected by copyright.

This dicotomy can sometimes be tricky, but it is still a plus in the US copyright system.  It allows authors to create freely from their surroundings and influences in their lives without risking infringing on someone else's work.  Some ideas are common and shared among communities, others may be thought of by more than one person.   Different authors may both create television series about a space ship and its crew of different species traveling through space, encountering aliens, visiting strange places and engaging in battles.  Some viewers may prefer this idea in a fairly serious drama expression, other viewers may prefer the idea in the form of a relaxed, and sometimes vulgar, comedy.  The idea/expression dicotomy allows authors to express this space crew idea in both these forms and many more.

By protecting only the expression of the idea, copyright law allows a greater amount of creations.  Authors produce different works based on similar things.  Members of society have the ability to choose the expression they like best.  Authors get more freedom.  Society gets more choices.  That's a happy outcome.

Souter's Mark on IP

United States Supreme Court Justice David Souter announced last week that he will be retiring from the Court at the end of next month. Justice Souter authored several important opinions in the field of IP, including Markman, Grokster, and Campbell.

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) changed the face of patent litigation. Markman challenged the Court with the question of whether interpreting patent claims was a question of law or a question of fact. This is an extremely important question because in American court cases, questions of law are decided by the judge but questions of fact are decided by the jury. The Court in Markman held that the interpretation of patent claims was a question of law to be decided by the judge. This led to the development of mini-trials now generally referred to as Markman Hearings. During these hearings, the judge basically determines the meaning of the patent. Sometimes the judge's determinations may lead to a settlement of the case or the plaintiff dropping the case completely, because of how the judge has interpreted the claims of the patent at issue. The value and appropriateness of Markman hearings remain much debated issues. [Some views on Markman hearings here and here.]

MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005), is the case that put an end to the popular post-Napster file sharing programs. Grokster, like Napster, was a program made for people to share files. However, in an attempt to avoid the same fate as Napster, Grokster allowed file sharing without owning or running any of its own servers. Grokster was strictly peer to peer. However, in Grokster, the Court held that one who distributes a device or program with the object of promoting copyright infringement may be held liable for the resulting infringement by third parties. Thus, Grokster could be held liable for the infringement of its users. Like Napster before it, Grokster became a set of blue prints for the development of the next stage of file sharing software, eventually leading to BitTorrent and the recently litigated Pirate Bay.

Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) firmly established parody, whether commercial or not, as a fair use of copyrighted material. In this rather infamous case, publishing company Acuff-Rose claimed 2 Live Crew's rap song "Pretty Woman" infringed on their rights in the Roy Orbison hit "Oh, Pretty Woman." The Sixth Circuit had found that 2 Live Crew did commit copyright infringement because of the commercial nature of their song. The Supreme Court overturned this decision, saying that all of the fair use factors need to be considered, not just the commercial nature of the new work. Parody is considered as an aspect of free speech, something American jurisprudence holds in high regard. This case gets the best lawyering award because both Ippers and many scholars do not think Pretty Woman was actually a parody. But it was close enough that the legal argument won the day at the USSC.

Despite his simple lifestyle and his brief, rather uncontroversial, time on the Court, Souter has made a large impact on intellectual property law in the United States and the future of technology development in the country.

Nigeria and the Special 301 Report 2009

Last November, Ip's What's Up did a special two-part segment on Nigeria and the United States Trade Representative (USTR) Special 301 Report.  (Part 1, Part 2.)  Nigeria has never appeared on the Special 301 report, and this year, the country continued its good work.

The International Intellectual Property Alliance (IIPA) submits a list of recommendations to the USTR each year.  Despite IIPA's inclusion of Nigeria on their "Special Watch List," the USTR did not feel problems in Nigeria warrant inclusion on the Special 301 list.  This is certainly good news for Nigeria!

[The IIPA report on Nigeria basically contains the same information as previous years' reports.  It is available here.

Infringing Cakes

Last week we looked at whether cakes are copyrightable.  We had several great comments, including one from brandyk, who pointed out that cakes are useful articles.  If viewed as such, then cakes are outside of the realm of copyright.  However, the case law on useable items and copyright is less than crystal clear.  As promised, today we are going to look at how one might infringe a copyrighted cake.  [Justen and Tony got into this a bit in last week's comments, so we'll try to include some of their ideas here.]

Copy Cake

A cake is not something you easily copy by photocopying or uploading to Kazaa.  In order to copy the cake, you would need to bake it and make it look exactly the same.  That is a very difficult task.  Frosting colors may come out slightly different; people have different handwriting; you might not have the right shaped-pan, etc.  For this reason, it is highly unlikely that a cake would be infringed by a direct copy.

What about substantial similarity, as Tony mentioned in last week's comments?  Let's say you walk into a bakery and see a cake you like.  You go home and decide to try making it yourself.  It doesn't come out exactly the same, but you're satisfied with the cake.  (We have to use you as the example instead of me, because my cake would not come out close enough to the bakery cake to be satisfactory.)  Did you infringe on the original cake?

This Ipper would argue no.  (Though she is open to reading other's ideas in the comments.)  There are many similar cakes that are all based on the same concept.  (example)  They may even be based on each other.  If you go to the bakery and see a cake you like and attempt to recreate at it home, you are taking the idea of the cake and making your own cake based on this idea.  Ideas are not copyrightable.

As discussed in last week's post, many of the elements of cake decorations are so common, they are necessary parts to decorating a cake.  There are also common ways in which these elements are arranged on cakes.  Both these elements and their arrangements would have such thin copyright protection, it would be hard to infringe upon them without making an exact replica.  Even then, the arrangement may be too common for protection.

Photographs

A photograph of a cake has its own copyright, but here we are looking at whether the photograph is infringing the cake in the photo.  17 USC 101 defines derivative work:

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”

A photograph is not really a recasting or transformation of the cake, although it is a different medium.  A photograph seems unlikely to change the cake any more than gluing cards on ceramic tiles changes the pictures on the cards.  (See Lee v. A.R.T. Co.)  The photo is just capturing the scene at the grocery store, not recasting the cake.

Even if we assume a cake is copyrightable, it seems nearly impossible to actually infringe on the copyright.

Copyrighting Cakes?

Jen over at Cakewrecks runs a very popular blog called, well, Cakewrecks.  Her blog is so popular, that it has led to a book deal.  Obviously, the photos used on her blog and in her upcoming book are protected by copyright.  (Thank you Burrow-Giles Lithographic Company v. Sarony.)  But what about the cakes?

A recent Cakewrecks comment said "There is now a "Copyright" sign up about taking photos and recreating their cakes!"  But are cakes really protected by copyright?  A search for US case law about cakes and copyright infringement led to nothing.  The closest case, Kitchens of Sara Lee v. Nifty Foods Corporation (266 F.2d 541), is about covers for frozen cakes.  However, there are apparently a lot of recording artists attempting to "have their cake and eat it, too."

Unable to find case law directly on topic, this Ipper has decided to do her own little analysis on the copyrightability of cakes under the US Copyright Act.

Analyzing Cake

Copyrightable?

Cake certainly is a fixed in a tangible medium of expression.  (Yummy one, too, usually.)  Otherwise, how would we get to eat it? 

Subject matter (Sec. 102): If a cake fits anywhere here, it would fit under (5) "pictorial, graphic, and sculptural works."  Some cakes are indeed sculptural masterpieces.  Some cakes are the regular geometric shapes, but involve very artistic pictorial and graphical designs on the tops.  (That link may not be the best example since many of the cakes could potentially be copyright infringements themselves, but you'll get the idea.)  Then there are the regular cakes:  "Happy Birthday,"  "Merry Christmas," "It's Legal in Iceland, etc.  These are still pictorial or graphical works.

But, are the cakes original works of authorship?  Of course, this is one of those questions a judge would have to answer in regards to a particular cake in court.  In general, cakes are creations of the baker/decorator.  Some cakes are based on designs that appear in books.  If these designs are copied exactly, then there would be no originality.  Other cakes consist of elements common to cake decoration, sort of scenes-a-fair of cakes.  These are usually not considered copyrightable because they are common and necessary parts to creating the art.  However, even if cakes are based off of a picture, or use only common elements, they can still be very unique (as those links show).

It appears, by this analysis, that cakes are copyrightable.  Although, some with very slim protection.  This Ipper, however, doesn't really like that answer and would much prefer a different one.  So please, feel free to explain why the entire analysis is wrong ;)

The real question though is, even if cakes are copyrightable, does it matter?  How would one infringe a cake?  We'll explore that later.