I had the pleasure of guest-lecturing a Copyright Law class at Barry University School of Law on September 21. It’s always nice to return to school to give the students some real-world examples from my practice while hopefully inspiring them to persevere and pursue an IP career. I focused on the registration precondition to filing suit, the Digital Millennium Copyright Act (“DMCA”), preliminary injunctions, and the way that copyright prosecution intersects with copyright litigation. Looking forward to my next classroom experience.
Following news of Prince’s death, the USPTO posted the following image on Facebook about Prince’s intellectual property portfolio:
That was an interesting post, and kudos to the USPTO for posting it. Who knew Prince had a design patent for a keytar?
Sadly, Chyna was not mentioned. She also died within the last 24 hours, and she had some IP. Well, actually, the registered trademarks for CHYNA were owned by the WWF/WWE, her former employer. Even more sad is that they all appear to be “dead” marks, meaning that they were not renewed for some reason:
When a company no longer uses a brand, it makes sense to stop paying the few-hundred dollars in fees between the 5th and 6th years of registration and every 10 years thereafter. In fact, if a company has no intention of continuing to use a mark, and if they have in fact stopped using it, then it would be improper to renew the registrations. In this case all of the registrations were initiated around 2001, and they were all abandoned in 2009. At that point she has already started the next phase of her career – adult film and reality TV. But there is something morose about seeing the abandoned trademark registrations in the wake of her death when there were rumors that Chyna would wrestle again one day, or at least be inducted into the wrestling hall of fame.
From the graphic above, here are the links to the various registrations:
For “CLOTHING, NAMELY, SHIRTS”
I read about a recently-published patent application from Apple that will allow an audio device (presumably an i-Device) to “self-censor” explicit content. The application is titled “Management, Replacement and Removal of Explicit Lyrics during Audio Playback,” and you can read the application HERE.
Here is the abstract from the application:
Unwanted audio, such as explicit language, may be removed during audio playback. An audio player may identify and remove unwanted audio while playing an audio stream. Unwanted audio may be replaced with alternate audio, such as non-explicit lyrics, a “beep”, or silence. Metadata may be used to describe the location of unwanted audio within an audio stream to enable the removal or replacement of the unwanted audio with alternate audio. An audio player may switch between clean and explicit versions of a recording based on the locations described in the metadata. The metadata, as well as both the clean and explicit versions of the audio data, may be part of a single audio file, or the metadata may be separate from the audio data. Additionally, real-time recognition analysis may be used to identify unwanted audio during audio playback.
That description immediately reminded me of an old copyright infringement case that was brought on behalf of Hollywood movie directors who objected to a service called “CleanFlicks.” CleanFlicks would purchase DVDs of movies, edit out the “objectionable” content, and then sell or rent the “clean” versions. Ultimately, this practice was considered copyright infringement. Here’s a brief analysis of the case from the Copyright Office. From the analysis:
The court held that public distribution of edited versions of plaintiffs’ films for the purpose of eliminating objectionable content did not constitute fair use. It ruled that the edited film versions were not transformative because they added nothing new to the originals. It further held that the “amount and substantiality” factor weighed against a finding of fair use because the movies were copied in their entirety for non-transformative use. Regarding the fourth factor, plaintiffs claimed that there was no adverse effect on the market for the films because they maintained a one-to-one ratio between original and edited films, and that but for their editing, the defendants would not have sold those particular original copies. The court, however, stated that this argument ignored the defendants’ “right to control the content of the copyrighted work,” and further remarked that “[w]hether these films should be edited in a manner that would make them acceptable to more of the public … is a question of what audience the copyright owner wants to reach.” The court also found that editing the versions as a form of comment or criticism was a public policy argument that was not appropriately raised in the copyright context.
But, Apple’s technology might not be making a new copy of a song to then censor, rather, it’s merely bleeping or silencing-out a portion, so there is a decent argument that this will not be a copyright issue. “Moral rights,” which can protect the integrity of (or cursing in) a work, are generally not recognized in the U.S., so the mere act of censoring a work isn’t necessarily copyright infringement. But, Apple’s technology is similar to the facts of a 1970’s case wherein ABC was sued by the people behind the Monty Python program based on ABC making edits to Monty Python re-broadcasts. There, the court found that ABC might actually be violating the Lanham Act, which forms federal trademark and unfair competition law. By editing the episodes, ABC misrepresented the source of the episodes. That is, by screwing around with the way that Monty Python’s writers intended the episodes to look, ABC damaged Monty Python because viewers might think that the edited, “less good,” episodes originated with Monty Python. This is similar to a line of cases where Rolex has successfully sued after-market jewelers who add “bling” to Rolex watches. Rolex argues that they would never add a dial full of diamonds or other tacky embellishments, and when jewelers do so, they damage the Rolex brand because consumers might think that Rolex was the source of the tackiness.
In sum, Apple may not even bring this technology to market, and even if they do, I would imagine that for artists to have their music on iTunes (the patent anticipates use in streaming environment), they will have to agree to allow the use of the technology. But at the end of the day, this may not be legally actionable anyway. Artists typically create a “clean” mix of a song. I wonder if Tipper Gore would have approved?
Apple’s full application may be downloaded HERE.
(Bonus thoughts: the idea of piecing a song together from multiple audio streams located at different sources is interesting. The patent application doesn’t just address adding a “beep” in place of a dirty word. The “clean” music can be seamlessly spliced into the song on-the-fly. As we’ve recently seen with Kanye tinkering around with edits and mixes of songs from The Life of Pablo after its release, this technology may have some positive creative merit – i.e. custom MP3/audio files depending on what time of day the audio is streamed or downloaded.)
I’ve been meaning to post the slides from my Trademark Law – 2015 Update CLE that I presented at the Orange County Bar Association’s Intellectual Property Committee meeting back in May.
So, here they are in PDF format: Trademarks – OCBA CLE 2015.
I went over the following topics:
1) A Trademark Trial and Appeal Board (“TTAB”) proceeding which sought to cancel the registration for Gerber Childrenswear’s “ONESIES” trademark. Since giving the CLE, the TTAB proceeding has been terminated because the party seeking to cancel the ONESIES registration has withdrawn the petition for cancellation. Given that the petitioner’s website still uses the “onesies” term/mark, I’m guessing that Gerber has given the petitioner a free license or some other incentive to abandon its efforts to cancel the registration. Even though I’m a trademark attorney, as a new dad, I admit to using the term “onesie” in a generic sense. All baby bodysuits are “onesies” to me even though I know it’s a registered trademark and should not be used generically. I still think Gerber will lose this registration at some point. It might be many years from now, but ONESIE’s days as a registered trademark seem limited to me.
2) The Supreme Court’s B&B Hardware case, which addressed issue preclusion – i.e. does a TTAB finding of likelihood of confusion preclude a subsequent district court from finding otherwise? (Answer: It depends. If the issues raised in the TTAB proceeding are identical to the issues in the district court litigation such that traditional collateral estoppel rules are triggered, then the TTAB decision can preclude a contrary district court decision.)
3) The Supreme Court’s Hana Financial case, which addressed whether or not “tacking” is a question of fact for a jury or if it is a question of law for the court. (Answer: it is a factual issue which “falls comfortably within the ken of a jury.”)
4) A federal case in Maryland involving campaign signs. I’ve blogged about campaign signs and trademarks on several occasions (HERE, HERE), so this one interested me for that reason as well as for the case’s analysis of another Supreme Court case – the Lexmark case with addressed standing in false advertising claims. In this case, the Hershey chocolate company was upset that Mr. Steve Hershey was using the Hershey’s familiar trade dress – brown background, similar block letter typeface, etc.
The court found that Mr. Hershey does not have a fair use or First Amendment right to use the Hershey’s trade dress. Given how many local campaign signs I see in Orlando which play on famous trademarks, this case should serve as a warning.
5) Finally, I covered the In re Tam case, which was a case where the Federal Circuit first affirmed a TTAB decision that denied a band’s trademark application for THE SLANTS as being disparaging to those of Asian descent. The band is made up of members of Asian descent, and they challenged the denial. Interestingly, after the Federal Circuit affirmed the refusal in a majority opinion, the opinion went on in a dissent to question the constitutionality of the Trademark Act’s bar to registration of “disparaging” marks. Five days after that opinion was issued, the Federal Circuit vacated it and ordered that the case will be heard en banc with new briefing on the constitutionality issue. Oral argument will be held on October 2, which is a couple of days before my firm will be at the Federal Circuit in D.C. to argue an appeal in a patent case.
The opinion in Commil USA, LLC v. Cisco Systems, Inc. came out today. The issue was whether or not a good faith belief as to the invalidity of a patent may serve as a defense to an induced infringement claim under 35 U.S.C. 271(b). The Supreme Court said “no,” because, in part, that would undercut the presumption of validity that comes with an issued patent. Other reasons were provided as well.
However, the more interesting issue in my view is the final section of the opinion, which seems to be a shot across the bow at “patent trolls” (or “non-practicing entities” (“NPEs”), depending on your sympathies).
The Court stated:
The Court is well aware that an “industry has developed in which firms use patents not as a basis for producing and selling goods but, instead, primarily for obtaining licensing fees.” eBay Inc. v. MercExchange, L. L. C., 547 U. S. 388, 396 (2006) (KENNEDY, J., concurring). Some companies may use patents as a sword to go after defendants for money, even when their claims are frivolous. This tactic is often pursued through demand letters, which “may be sent very broadly and without prior investigation, may assert vague claims of infringement, and may be designed to obtain payments that are based more on the costs of defending litigation than on the merit of the patent claims.” L. Greisman, Prepared Statement of the Federal Trade Commission on Discussion Draft of Patent Demand Letter Legislation before the Subcommittee on Commerce, Manufacturing, and Trade of the House Committee on Energy and Commerce 2 (2014). This behavior can impose a “harmful tax on innovation.” Ibid.
No issue of frivolity has been raised by the parties in this case, nor does it arise on the facts presented to this Court. Nonetheless, it is still necessary and proper to stress that district courts have the authority and responsibility to ensure frivolous cases are dissuaded. If frivolous cases are filed in federal court, it is within the power of the court to sanction attorneys for bringing such suits. Fed. Rule Civ. Proc. 11. It is also within the district court’s discretion to award attorney’s fees to prevailing parties in “exceptional cases.” 35 U. S. C. §285; see also Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U. S. ___, ___–___ (2014) (slip op., at 7–8). These safeguards, combined with the avenues that accused inducers have to obtain rulings on the validity of patents, militate in favor of maintaining the separation expressed throughout the Patent Act between infringement and validity. This dichotomy means that belief in invalidity is no defense to a claim of induced infringement. The judgment of the United States Court of Appeals for the Federal Circuit is vacated, and the case is remanded for further proceedings consistent with this opinion. It is so ordered.
The Court is seemingly reminding litigants, attorneys, and lower courts that the recent Octane Fitness case made it less burdensome to find that a patent case is “exceptional” for purposes of collecting attorney’s fees under 35 U.S.C. 285. Lower courts now have lots of discretion to determine exceptionality, without the need to meet a specific standard of proof other than that the case “stands out” from others, and, under the “totality of the circumstances,” is an “exceptional” case.
Is the Supreme court suggesting that patent troll/NPE cases might be good candidates for “exceptional” cases in the future?
More commentary here:
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:
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.