Intellectual Property Law Blog

The Copyright Office recently issued a press release in their "Newsnet," Issue 341, April 14, 2008, announcing what everyone else already knew. The Copyright Office is getting seriously behind in processing copyright applications and issuing registration certificates. In fact, the official time lag for receiving a certificate is now "up to 8 months." This is not an inconsiderable pendency since as recently as a year ago certificates were being issued within 4 to 6 months. The problem of pendency becomes even worse in relationship to when the information actually appears on the public records which may be some time after the registration issues. This means that the public which is bound by the legal effects of the copyright registration as of the original filing date, may not even be aware that an application has been filed, or have any way of easily investigating online, for up to a year after such filing date which is, legally speaking, also the "effective date of a copyright registration" under Section 410(d) of the Copyright Act.

Like New Year's resolutions which remain unfulfilled, a decision late last year of a federal district court sent still another reminder that copyright law in the United States remains far from the formality free regime envisioned by Berne Convention rules.  In November, Goss International Americas, Inc. v. A-American Machine & Assembly Co., 2007 WL 4294744 (N.D. Ill., Nov. 30, 2007) once again drove home the reality that registration is one formality that still rules.

Click here to view a PDF copy of the document.

Our friends across the pond are considering a new proposal that would change the rules regarding the copying of movies and music. Specifically, the proposal would allow the copying of legitimately acquired music and movies between storage devices for "private use." Current law in the United Kingdom makes private copying such as this illegal. The proposal seeks to reconcile the Copyright, Designs, and Patents Act 1988 with an increasingly tech savvy public that regularly engages in copying between personal devices.

Antigua and Barbuda, small island nations known for their sizable online gambling operations, may be entering a new business: legalized piracy. (The Hollywood Reporter, "U.S. copyright waived in tiny nation") The World Trade Organization, which administers trade disputes between members, has granted Antigua and Barbuda the right to waive U.S. intellectual property rights worth up to $21 million. The decision stems from an arbitration brought in response to recent United States legislation aimed at shutting down certain forms of online gambling. Antigua and Barbuda objected to the legislation, and cited the exceptions given to United States horse racing as evidence of a trade violation.

In a time long long ago, fans of certain fictional worlds portrayed in games or on television were relegated to relative obscurity. User generated content was generally confined to a well-crafted Klingon warrior outfit, the occasional love sonnet written in elvish, or a meticulously crafted sculpture of a twenty-sided die; however, the internet and the relative affordability of production software, including sophisticated movie editing platforms, has given these fans the ability to burst from their shadowy meeting places and into the World Wide Web's limelight.

Click here to view a PDF copy of the document.

Click here to view a PDF copy of the document.

Click here to view a PDF copy of the document.

In a case likely to impact intellectual property litigation, the Supreme Court recently issued a ruling that alters the pleading standard necessary to support civil complaints filed in federal court, which governs most IP disputes.  In Bell Atlantic Corp. v. Twombly, 550 U.S. ____ (2007), the Court heightened the pleading standard, requiring that a complaint recite facts sufficient to "plausibly" support the legal claims it sets forth.

Summary

On May 16, 2007, the Ninth Circuit ruled in two very closely-watched cases, Perfect 10, Inc. v. Google Inc. and Perfect 10, Inc. v. Amazon.com, Inc., that involved the potential liability of search engine companies for (1) providing copyrighted images to users, and (2) linking to third-party websites where infringing images might be found.  The Ninth Circuit vacated a preliminary injunction barring Google from displaying thumbnail copies of Perfect 10's nude models in Google search results.

With 4th Circuit decision, new uncertainty about injunctions extends to copyright cases.

It can be a fatal mistake to overlook remedies and their required elements of proof. Most lawyers feel comfortable giving opinions on liability (in their own fields of expertise, of course) and often assume that the usual remedies will simply fall into place. Nowhere could such an assumption prove more embarrassing, if not worse, than on the shifting sands of permanent injunctions in copyright cases. Once thought to routinely follow liability, such “automatic” injunctions may be history.

Summary

On May 16, 2007, the Ninth Circuit ruled in two very closely-watched cases, Perfect 10, Inc. v. Google Inc. and Perfect 10, Inc. v. Amazon.com, Inc., that involved the potential liability of search engine companies for (1) providing copyrighted images to users, and (2) linking to third-party websites where infringing images might be found.  The Ninth Circuit vacated a preliminary injunction barring Google from displaying thumbnail copies of Perfect 10's nude models in Google search results.

On May 15, 2007, in a divided decision, the United States Court of Appeals for the Ninth Circuit adopted a new and significantly narrower interpretation of the immunity from liability for online service providers provided by the Communications Decency Act.  In Fair Housing Council of San Fernando Valley, et al. v. Roommates.com, LLC, Appeal Nos. 04-56916 and 04-57173, (click here) Ninth Circuit holds that service providers may be liable for content originating from users if they solicit the unlawful information, or categorize, channel, and limit the distribution of the information.

There is a groundswell of federal legislative activity aimed at protecting and enforcing the intellectual property rights of United States businesses, authors and artists against international counterfeiting and piracy. This movement is signified most recently by the introduction of Senate Bill 522 on Feb. 7, entitled the "Intellectual Property Rights Enforcement Act." What remains to be seen is whether this groundswell will come out of the halls of Congress and into the international marketplace, or whether it will recede into relative oblivion, as when a prior version of IPREA was introduced in 2005.  

ASCAP, a performance rights organization, initiated a royalty rate proceeding in the fall of 2005, asking a federal court to set royalty rates for "performances" of digital music by AOL, Yahoo! and RealNetworks.

Many transactional lawyers who represent clients in entertainment, media or publishing deals have some working knowledge of copyright law.  However, as they say, "a little knowledge can be a dangerous thing."  Copyright law is full of exceptions and qualifiers, and many clients and lawyers have only broad understandings of the way copyright law works to protect the original expression of ideas.  Copyright litigators see many deals go sideways because of client or attorney misunderstandings about copyright law.  Here is our "top ten" list.

In Spring the U.S. Congress began considering legislation that would extend copyright protection to users of "orphan works".  Orphan works are works for which there is no identifiable parent or, if there is one, it cannot be found.  Congress cares about them because copyright terms have, in the eyes of many, become too long.  Longer copyrights bottle up the public domain so that even works of questionable value cannot be used for fear of litigation reprisals.

Click here to view a PDF copy of the document.

Click here to view a PDF copy of the document.

From its November 2005 launch date to its $1.65 billion dollar acquisition by Google less than one-year later, YouTube.com has experienced the kind of meteoric rise in popularity some would say only possible through the enormous commercial potential of the internet.

On December 1, 2006, several amendments to the Federal Rules of Civil Procedure ("FRCP") will become effective. The changes that deal directly with electronically stored information ("ESI") will likely affect the means, method, and timing of discovery. Selected amendments to the FRCP are discussed below:

Click here to view a PDF copy of the document.

On September 15, 2006, Register Marybeth Peters met with the Intellectual Property Section of the District of Columbia bar and the DC Chapter of the Copyright Society to discuss recent legislative and administrative developments affecting copyright law and practice. She provided some valuable insights on several major developments. Here is a brief recap of the meeting:

On September 6, 2006, the District Court in Frankfurt-on-the-Main issued a judgment which upheld the validity of the GNU General Public License (GPL), version 2.   The case involved a complaint by Harald Welte, a co-developer of the netfilter firewall code in the Linux kernel and founder of the gpl-violations.org project, against D-Link Germany GmbH, a German subsidiary of Taiwanese hardware manufacturer D-Link Corporation.

The United States Copyright Act provides authors and certain named statutory successors a one-time right to unilaterally terminate grants and transfers of renewal copyrights within a narrowly specified window. The right has been called "inalienable" by the U.S. Supreme Court, and the Copyright Act expressly states that the right may be exercised notwithstanding "any agreement to the contrary." Despite the implications that this right may have on long standing agreements between authors or their heirs and grantees such as book publishers, very few courts have had the occasion to explore the right and the meaning of the Act's "any agreement to the contrary" language.

A Colorado federal judge recently held that CleanFlicks and other companies violated motion picture studios’ rights to copy and distribute their movies by offering DVDs stripped of “objectionable” content for rent and sale. The court was not convinced that such use was protected by the “fair use” defense. However, the judge held that the “family friendly” movies did not violate the studios’ right to create derivative works.

A recent decision of the Ninth Circuit should provide a zone of comfort to owners of sound recordings and motion pictures who worry that their performers and actors may attempt to circumscribe their legitimate rights to exploit their copyrighted works based upon an asserted state law right of publicity. Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9^th Cir. 2006).

Today, more than ever, companies are confronted with a broad array of electronic document issues, including data retention policies and e-discovery during litigation. Failing to comply with rules regarding such electronic data can cost millions of dollars.

For instance, in United States Securities and Exchange Commission v. Morgan Stanley & Co., Inc., No. 06 0882 (D.C., May 12, 2006), the SEC alleged that defendant failed to produce tens of thousands of emails sought by the SEC in two investigations. The court entered an 8-page consent judgment against defendant. Three of the major points in the judgment are:

1. Defendant was ordered to pay $15,000,000
2. Defendant was permanently enjoined from violating Section 17(b) of the Securities Exchange Act of 1934 (requiring a prompt document production, including electronic documents); and
3. For one year, Defendant, at its own cost, was ordered to hire an independent consultant (acceptable to the SEC) to review and evaluate defendant's policies, procedures, and training in order to comply with the judgment. The independent consultant is to make recommendations which must, absent undue burden or impracticality, be adopted by Defendant.

Freedom Tower, the much publicized reconstruction project at the World Trade Center in New York, has seen a lot of ups and downs since it was unveiled to the public in 2003.  It has survived a heated contest among several prestigious architectural firms, allegations of political corruption on the part of the NY governor in allegedly influencing the outcome of the contest, public criticism as to the proper use of the site as a fitting memorial, and security concerns over the building layout.  But even as the first bricks of the foundation are laid for the new building, the original Freedom Tower design is battling yet another dispute- this one in the courts.

The case is Shine v. Childs, pending in the Southern District of New York.  The plaintiff, a young architect, has alleged that the winning Freedom Tower design infringed on certain designs that he created while attending the Yale School of Architecture.  Recently, the court denied the defendant's summary judgment motion in the case and, by all accounts, the parties appear to be heading toward trial this fall.  The case offers a rare judicial guidance on the Architectural Works Copyright Protection Act ("AWCPA") and how to apply the Act to copyright disputes involving architectural designs.

The court made several key observations in construing the AWCPA.  For instance, the court held that copyright protection may potentially extend to designs and models that fall within the conceptual phase of the architectural process.  The design need not be sufficiently detailed to allow a building to be constructed from such plans to be eligible for copyright protection.  The court also determined that an architectural work can be "original" and protectable even if certain underlying elements were used in prior works.  As long as the particular combination of design elements are original, the work itself can meet the Copyright Act's "originality" requirement to be protectable by copyright. These, and other observations, make the case very important to architectural firms and architects alike in assessing how to protect their valuable intellectual property from infringement, and how to ensure that they themselves do not infringe the works of others. 

Click here to view the entire article.

Open source software was once considered the utopian vision of utilitarian-minded software programmers. But with companies increasingly incorporating Linux® software into IT and business plans, open source has entered the collective corporate consciousness. However, many questions remain about open source and its place in the corporate model.

Thanks to Napster, iPods, DVD burners, and TiVo, stories infused with the law of copyright have peppered the news over the last five years. Necessarily overlooking many of the complexities and nuances of copyright law, this brief primer may help you better comprehend those articles in your morning newspaper.

Click here to view PDF of entire article

In a battle between the producers of reality television shows "Wife Swap" and "Trading Spouses," a California federal court held that trade dress cannot be invoked to provide perpetual protection for what are essentially copyright claims. As a result, the court dismissed plaintiff's claim that defendants have imitated the "total image and appearance," or trade dress, of the "Wife Swap" show.

The Court acknowledged that the same elements of a work may be protected as both copyrightable expression and trade dress. However, it held that such a finding in this case would lead to the misguided conclusion that "every incidence of visual expression would be subject to copyright and trademark protection and that protection would last in perpetuity." 372 F.Supp.2d at 564.

[This case is cited as: RDF Media Ltd. v. Fox Broad. Co., 372 F. Supp. 2d 556 (C.D. Cal. 2005).]

Did you know that before 1891 the U.S. was a copyright piracy haven? Up until that time foreign trademark owners had no enforcement rights in the U.S. This left U.S. copiers free to duplicate and distribute such popular current works as Tolstoy, Dickens, and Hugo without repercussion.

Eventually foreign pressure persuaded the U.S. to get in line with international copyright law. The moral of the story? Those concerned about non-convention foreign infringers should take heart - the piracy party will not last forever. History is bound to repeat itself.