Copyright Infringement – The “Activist” Defense?

Like many almost-40-year olds with a perpetual college-aged sense of humor, I enjoy Seth Rogen’s slacker/stoner humor.  When I found out that the stars of personal-favorite Pineapple Express were reuniting for The Interview, I was excited to go see it (or at least wait until it hit my local Redbox).  However, as we all know, North Korea (allegedly) hacked into Sony’s servers and released embarrassing and confidential documents, thus setting off an international debacle worthy of, well, another Rogen/Franco movie.  Depending on whom you believe, the hackers’ warnings initially caused Sony to drop the film’s release, only to have the President of the United States dictator-shame Sony into eventually allowing the movie to be release both on theater screens and via streaming services such as YouTube and Google Play.   The sequel has literally written itself.

Once the movie was available through my Roku, my wife and I rented it on December 27, 2014.  We didn’t care if the movie was good or not, we rented it as a statement.  It was our Amurrican duty.  Fortunately, we enjoyed the movie, and it was worth the 6 bucks to be able to tell our kids and grandkids that “we were there” and even took a picture:

Interview-pause

Many others must have liked it (or at least bought into the civic-dutiness of it) as well, because by the end of December, the movie had reportedly brought in $15 million dollars from streaming alone.  That has prompted interesting case studies on how the (alleged) North Korean hack may have changed movie distribution forever.  See: http://www.newyorker.com/business/currency/interview-film-industry-case-study.

So that brings me to the point of this post.  I am being facetious regarding the movie’s value as a real statement on North Korea and dictators in general.  This is not a Michael Moore documentary.   It’s not Morgan Spurlock.  This isn’t going to be shown (or read) in classrooms like To Kill a Mockingbird.  It’s a Seth Rogen stoner flick cut from the Trey Parker/Matt Stone Team America:World Police cloth.  Does it have some message about a free press and the con of a dictatorship?  Yes.

But is it worthy of making 100,000 copies on DVD and USB drives to airdrop into North Korea?   No.  Yet that is what the Human Rights Foundation proposes to do.  This group has apparently been doing this for years with other literature and movies, including the aforementioned Team America, Titanic and Braveheart.  See: https://www.indiegogo.com/projects/hack-them-back.

It is not clear from that group’s webpage if the money is used to legally purchase the movies that are dropped (along with DVD players) into North Korea, but the AP article states that the group, which is based in the U.S., is putting The Interview on DVD and USB flash drives with Korean subtitles.

Here’s where the law-stuff comes in:  Human Rights Foundation is therefore making a derivative work of The Interview.  Unless Sony has authorized these 100,000 copies, they are likely infringing derivative works.  There is no “activist” or “humanitarian” defense, and while there could be some stretched fair use arguments, this just seems like basic copyright infringement.  Of course, every plaintiff must pick his/her/its battles.  While Sony would be foolish to publicly denounce this seemingly well-intended act, I would not be surprised if Human Rights Foundation is contacted before the Great Balloon Release gets underway.

But even if it were not copyright infringement, would the average isolated North Korean who is hit on the head with a descending DVD player and copy of The Interview really understand the context of Seth Rogen smuggling poison in his anus to eventually try and kill Kim Jong Un? Would they understand James Franco’s mild Stockholm Syndrome/he-really-gets-me bro-fest with the Supreme Leader?  I don’t know.  Perhaps if the movies contain some back-story and context, then movies like Team America and The Interview could serve some nation-(un)building purpose, and that sort of context and additional material could be just the thing to bolster a fair use argument.  However, on the surface, it appears that the Human Rights Foundation’s plan is just setting itself up for a giant copyright infringement case given its U.S. presence and stated intent to make 100,000 copies.  Should Sony be entitled to statutory damages, willful copyright infringement can subject the liable defendant to up to $150,000.  This is a per-work award, so we are not talking about 100,000 x $150,000, but it’s still a decent amount.  (Sony could also elect actual damages instead of statutory damages, but if Human Rights Foundation is only distributing the copies overseas into North Korea, I imagine that actual damages will be virtually $0.)

Ultimately, the Sony hack, the unorthodox release, and the subsequent dialog that has come about have given The Interview more stature than it would have otherwise achieved had it been simply released as any other Christmas-day film, and I look forward to seeing the ongoing ripple effects.

Taste Infringement?

I used to love the Coke Zero commercials that had the “regular Coke” workers complaining that the Coke Zero creators committed “taste infringement” due to the fact that Coke Zero tastes so much like regular Coke.  Well, as Eric Goldman writes, a pizza restaurant has tried to bring a “taste infringement” claim:

http://blog.ericgoldman.org/archives/2014/10/food-flavor-cant-be-trademarked-even-if-the-baked-ziti-is-delicious-ny-pizzeria-v-syal-forbes-cross-post.htm

 

 

Don’t Forget Domain Names When Purchasing a Sports Team

This one is kind of funny.  The Orlando Predators, which is an Arena Football team, was recently sold.  Apparently the sale did not include the domain name “orlandopredators.com” because the Orlando Sentinel is reporting that the domain is now redirecting to…drumroll…:

predators1

 

Yep – the Florida Department of Law Enforcement’s website for “predators.”  Well-played former owner, well-played.

See article HERE.

As the article states, an ICANN UDRP proceeding has been initiated.  I didn’t see it on WIPO’s or NAF’s websites this morning, but I wonder if the UDRP proceeding will even be successful.  If the sale contracts did not include the domain name, the only way that a UDRP proceeding would result in transferring the domain is if the UDRP Panel determines that the current owner registered AND used the domain in bad faith.  My guess is that the domain was registered prior to the sale for the purpose of promoting the Orlando Predators football team.  No bad faith there.  And, while it was used to promote the team, there’s probably no bad faith there, either.

So, will the act of redirecting the domain name to a website that really does contain information about Orland0-area predators be considered bad faith?  The UDRP is not designed to handle trademark infringement, just cybersquatting.  So, to the extent that the prior owner did not sell the domain and was not engaged in bad faith when he registered and used it, then the UDRP may be powerless, and this will become either a trademark infringement lawsuit or a contractual issue depending on the sale documents.  For now, redirecting to the FDLE Sexual Predators site seems like a safe move.  (Of course, there’s an argument that the redirection to a sexual predator site “dilutes” the Predators brand via tarnishment theories, but I doubt the Orlando Predators brand has attained the level of fame necessary for a federal dilution claim.  Maybe a state dilution claim though.)

This could be a very interesting proceeding, presuming it isn’t worked out between the parties.

For now, go to http://www.myorlandopredators.com for info on the football team (and not to create your own database of Orlando-area sexual predators).

predators2

SuperLawyers – 2014 Rising Stars

I’m proud to announce that for the third year in a row, I’ve been selected as a Rising Star:

 

Kevin W. Wimberly has been named to the Florida Rising Stars list as one of the top up-and-coming attorneys in Florida for 2014 in the field of Intellectual Property.  Each year, no more than 2.5 percent of the lawyers in the state receive this honor.  The selection for this respected list is made by the research team at Super Lawyers.

Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement.  The annual selections are made using a rigorous multi-phased process that includes a statewide survey of lawyers, and independent research evaluation of candidates, and peer reviews by practice area.

The Rising Stars lists are published nationwide in Super Lawyers magazine and in leading city and regional magazines across the country.

 

Congratulations are also in order for others in my firm:  Jim Beusse and Terry Sanks were named Super Lawyers in the 2014 Florida Edition of Super Lawyers Magazine in the field of Intellectual Property law, and Amber Davis was also listed as a Rising Star in the field of Intellectual Property law.

The Party Crashing Trademark Attorneys

As blogged HERE and HERE, Clown Shoes Beer changed the name of its Vampire Slayer beer due to a trademark dispute.  Rather than going gentle into the good beer-fueled night, Clown Shoes raged on and mocked the dispute by writing an article about the issue and why they handled it the way they did.  (The article is no longer on the Clown Shoes website, but an archive is HERE.) To recap, Clown Shoes handled the issue by changing the name of the beer to Undead Party Crasher (which is a sly comment on the fact that Clown Shoes’ original Vampire Slayer beer was supposed to be a celebration of Clown Shoes’ second anniversary).  Oh, and they also mocked my profession in a pretty hilarious way. So, my final update on this issue is simply this:  My local Total Wine has just about cleared its inventory of Vampire Slayer, and they have the new Undead Party Crasher in stock.  Of course, I bought a bunch for my colleagues. While I applaud the fun that Clown Shoes had with this issue, I have to disagree with Clown Shoes by answering the question “do we need the undead and trademark attorneys” with a resounding, “YES!” (as opposed to “No, Die Monsters, Die”)

undead-closeup
“Die, monsters, die!”

 

undead-pano
Panorama shot. Oooooh. Fancy.

undead-slayer

Medical Marijuana – The Wild, Wild, East(coast)

Entrepreneurs are flooding Florida as the state’s citizens prepare to vote on legalizing marijuana for medicinal purposes this November. The initiative is on the ballot, and signs are pointing toward enough support to pass the amendment to the Florida Constitution.

As with any new industry, the rush to make a buck has been swift and fierce. Medical marijuana schools are being advertised, seminars are being held at hotels, and law firms are ramping up to guide entrepreneurs through the state regulations. Of course, there are no state regulations yet, but the early bird gets the weed, and it makes sense to start consulting with your attorney of choice regarding what may happen in early 2015.

Clearly, medical marijuana is going to be a “Florida IP Trend” if it isn’t already.

But, the majority of intellectual property practice is based on federal law – the Lanham Act, the Copyright Act, and the Patent Act all arise out of either the Article I, Section 8, Clause 8 of the U.S. Constitution (copyrights and patents) or the Commerce Clause of the Constitution (granting the federal government the right to regulate interstate commerce, including interstate trademark use).

As you may have heard, marijuana remains illegal at the federal level, and trademark applications before the United States Patent and Trademark Office are being routinely rejected with essentially the same boilerplate language:

SECTIONS 1 AND 45 REFUSAL – NOT IN LAWFUL USE IN COMMERCE

Registration is refused because the applied-for mark, as used in connection with the goods and/or services identified in the application, is not in lawful use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce'”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630, 81 USPQ2d 1592, 1595 (9th Cir. 2007).  Thus, any goods or services to which the mark is applied must comply with all applicable federal laws.  See In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘”use in commerce,” means a “lawful use in commerce,” and [that the sale or] the shipment of goods in violation of [a] federal statute . . . may not be recognized as the basis for establishing trademark rights'” (quoting Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982))); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.

The Controlled Substances Act (CSA) prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.  21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”).  In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  21 U.S.C. §863.

In the present case, the application identifies applicant’s goods and/or services as follows: “Providing a web site that features informal instruction on the cultivation of medical marijuana.”

The evidence submitted with applicant’s response to the previous Office action plainly indicates that applicant’s identified services include activities that are prohibited by the CSA, namely, instruction on how to grow, cultivate, harvest and produce marijuana.

Because these goods and/or services are prohibited by the CSA, the applied-for mark, as used in connection with such goods and/or services, is not in lawful use in commerce.

 

There are currently 327 applications and/or registrations in the USPTO’s database which contain the word “marijuana” in the description of goods or services.  Of those 327, only 45 are (or were) actually registered.  While many of those 327 applications were rejected with language similar to that cited above, the few that squeaked by are either anomalies and/or the work of skilled trademark practitioners who know how to carefully craft a description of services.  (To be fair, many of the ones that have not been registered were allowed to be registered, but the applicants did not follow up with certain filing requirements, such as specimens of use.)

As an example of the division between allowable and not allowable, consider that a popular website located at http://www.leafly.com received a registration for LEAFLY for use with, among other things:

“Providing consumer information in the field of medical marijuana dispensary inventories and locations; providing links to web sites of others featuring consumer information on medical marijuana inventories and locations; providing a web site featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users; providing consumer information regarding medical marijuana dispensaries, inventories and locations”

and

“Providing health information in the field of medical marijuana, and regarding indications and effects of particular cannabis strains, and regarding medical marijuana dispensaries, inventories and locations”

Yet, an application for MARY N’ JANE for use with “Providing a web site that features informal instruction on the cultivation of medical marijuana” was rejected per the above language.  The difference is apparently that using the trademark in connection with marijuana cultivation instruction is not ok, but using the mark for general information about marijuana dispensaries is ok.  This logic is further supported by questions that USPTO Examining Attorneys are routinely asking of applicants with marijuana-based goods or services, namely:

Do the applicant’s classes, seminars, and/or workshops involve the provision of, instruction on how to grow, and/or instruction on how to obtain marijuana, marijuana-based preparations, or marijuana extracts or derivatives?

Are the applicant’s services lawful pursuant to the Controlled Substances Act?

If the answer to the first question is Yes, no registration for you.

So, what is the Florida-based medical marijuana entrepreneur to do?  State trademark registrations are an option, but Florida does not recognize “intent to use” applications like the USPTO does.  This means that even if you are planning to open a dispensary, nursery, or other marijuana-related establishment once the regulations are drafted and licenses are issued, you cannot apply for the state trademark registration now because you cannot yet legally run a medical marijuana facility in Florida.  The flood of state applications that will occur on Day 1 will be astounding, and anyone who has used Florida’s state registration system knows that this impending flood just might break the system.

Another interesting aspect of medical marijuana in Florida is that just last year our lawmakers passed the so-called Bong Ban Bill, making it illegal to sell virtually anything that can be used to smoke marijuana…but only if the seller intended for the item to be used in violation of the drug paraphernalia laws.  So, if you do not intend for people to use your hand-crafted glass pipe to smoke illegal substances, presumably you do not violate the law.  (As with everything on this blog, the preceding is not legal advice.  If you intend to sell pipes, you should consult an attorney.)  Once Amendment 2 passes and medical marijuana is legalized in Florida, I’m guessing that the “Bong Ban” will need some renovation.

 

 

 

20 Years Ago 2 Live Crew, A Rude Rap Song And The Supreme Court Helped Clear The Way For The Modern Internet

20 Years Ago 2 Live Crew, A Rude Rap Song And The Supreme Court Helped Clear The Way For The Modern Internet.

20 Years Ago 2 Live Crew, A Rude Rap Song And The Supreme Court Helped Clear The Way For The Modern Internet (via Techdirt)

A couple months ago, we had a blog post celebrating the 30th anniversary of the Supreme Court’s decision that showed the Sony Betamax was legal, an important ruling that helped clear the field for innovations that could, potentially, be used for infringement…


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