For anyone unfamiliar with internet cat personalities, Grumpy Cat is a well-known feline whose dwarfism and underbite culminate in a perpetual—and adorable—sour expression.  Grumpy Cat’s real name is Tardar Sauce.  In 2012, when Tardar Sauce was only a few months old, she became an internet sensation after a photo of her endearing scowl was posted on Reddit.  Since that time, Tardar Sauce has made several public appearances, and was named to Forbes’ list of Top Pet Influencers.

Tardar Sauce’s owner, Tabatha Bundesen, formed Grumpy Cat Limited to handle licensing and merchandising of the Grumpy Cat brand.  Grumpy Cat Limited holds eight federal trademark registrations, including five registrations for the standard character mark GRUMPY CAT, and three registrations for this design mark:

Grumpy Cat Limited also owns multiple copyright registrations, including these:

 

In 2013, Grumpy Cat Limited entered into a licensing agreement with Grenade Beverage LLC.  Under the agreement, Grumpy Cat Limited licensed the Grumpy Cat trademarks and copyrights to Grenade in connection with a line of iced coffee products (appropriately named Grumppuccinos).

Three flavors of Grumppuccino

The licensing agreement additionally permitted Grenade to develop other Grumpy Cat beverage products, but only with the permission of Grumpy Cat Limited for each new product.  Under this provision, Grenade sought approval from Grumpy Cat Limited for a new line of Grumpy Cat-branded coffee beans.  Grumpy Cat Limited withheld approval for the coffee beans.  Grenade nonetheless moved forward with the new product.  Grenade also began selling unauthorized Grumppuccino t-shirts.

The offending beans

In late 2015, Grumpy Cat Limited sued Grenade for breach of contract, copyright infringement, and trademark infringement.  Namely, Grumpy Cat Limited asserted that Grenade’s use of the Grumpy Cat name and likeness on the coffee bean products and unauthorized Grumppuccino t-shirts was outside the permissible scope of the licensing agreement.

After a week-long trial, during which Tardar Sauce herself made an appearance, a jury decided in favor of Grumpy Cat Limited.  The jury awarded $710,001 to Grumpy Cat Limited: $230,000 in statutory damages for copyright infringement, $480,000 in statutory damages for trademark infringement, and $1 for breach of contract.  Presumably, the statutory damages awarded to Grumpy Cat Limited equal more than any actual damages the company could have obtained–a reminder of the value of statutory damages in trademark and copyright infringement suits.

The City of Portland is known as a hub for craft beer, and its local government couldn’t be prouder. The Travel Portland website proudly proclaims that Portland is “home to more breweries than any other city on earth.” Yet the city’s relationship with the local craft beer scene is not so bubbly at the moment, as trademark dispute between the city and local Old Town Brewing has gone public.

The dispute revolves around Old Town Brewing’s logo and a large lighted sign owned by the city, both shown below.

 

This isn’t the first time the city hasn’t gotten into a dispute with a brewery over the sign. The city previously objected to Pabst’s use of a logo derived from the sign back in 2015.  Our 2015 article contains a good back story as to the city’s purchase of the sign as well as the city’s claimed trademark rights in the sign (and for our regular readers, the investigation into Portland’s unicorn burial ground is ongoing). However, for our purposes, a TLDR history will suffice. The sign is known as the “White Stag” sign and was built in 1940. The text has changed numerous times along with the ownership. The City of Portland purchased the sign in 2010 and has since begun licensing reproductions of the sign to third-parties.

Most recently, Portland sought to license production of the sign to AB InBev, the parent company to Budweiser and a whole host of other big and small names in the alcohol business. Jeff Alworth at the Beervana Blog has a great write up regarding the dispute that is worth a read. As you might expect, the small, local craft brewery is not pleased with Portland’s attempt to permit a direct competitor to use a similar logo. The fact that the competitor is Budweiser certainly can’t help.

Luckily for Old Town, they recognized the benefits of obtaining a registration for their design logo at the U.S. Trademark Office. Even better, the registration is now more than 5 years old and can no longer be challenged on a number of grounds, like confusion with a senior user’s mark.

The City of Portland also recognized the importance of registrations and applied to register the image of the sign for a wide variety of goods and services, including alcoholic products. The Trademark Office has refused registration based on a likelihood of confusion with Old Town’s prior registration.

The situation is a twist on the more common David versus Goliath of Big Beer versus Craft Beer, and not simply because the City of Portland is involved. In fact, the city is claiming that David, aka, Old Town Brewing, is the bad guy. The City is arguing that “it is Old Town Brewing that is trying to prevent the City from using its own logo.”

The city isn’t entirely off base. It’s true that the City isn’t telling Old Town to stop using the logo. But the City’s argument makes a lot of assumptions that may not hold water (or other beverages, for that matter).

The city seems to assume that because the City bought the sign, they own the right to use the component images of that sign for any and all purposes. That’s wrong. For a lot of reasons. Owning a sign doesn’t create trademark rights, use does. And if Old Town began using a portion of that sign as a trademark before any other third-party, then Old Town is the senior user. Also, even if the City owns some trademark rights, the law is clear that a trademark does not provide a right in gross. Trademark rights are defined by the goods or services sold under the mark, with protection against goods and services that are sufficiently related to owner’s goods or services.

Also, the City’s white hat isn’t so white. I’m not even sure it’s a hat. Old Town isn’t the bad guy here. The brewery isn’t telling the City not to use the logo derived from the sign design.  I’m not a politician or a mayor, but I can’t think of any reason why a city needs to be able to use its logo to sell beer. If Minneapolis were doing this, I’d kindly ask that they fix the potholes or finish construction on the bridges over 35W first.

At the moment, it seems that public opinion seems to be in Old Town’s favor, at least based on the limited (and biased) sampling of Old Town’s Facebook Page.  From the legal standpoint, it seems that Old Town has an upper hand, but from all public statements it seems that Portland is committed to moving forward with its own applications and a license. But is a deal with Budweiser important enough to risk the bad press and the alienation of the craft beer industry? The City has until March 15 to appeal the Trademark Office’s last Office Action. By then, we’ll at least know whether Portland wants to continue the fight. In the meantime, I’ll be looking to see how far Old Town distributes its products. Their SHANGHAI’D IPA sounds delicious, not to mention, it has an excellent name.

 

Recently, I attended the University of Minnesota’s celebration of “40 Years of Gopher Justice,” an event honoring the institution’s University Student Legal Service (“USLS”), a non-profit organization that provides UMN students with free legal services. The celebration included a panel on a contemporary topic in student advocacy: “revenge porn.” The topic isn’t relevant just for students, though. One may recall that just last year Hulk Hogan successfully sued the now-defunct gossip news site Gawker for its dissemination of a sex tape depicting him and another woman. Hulk Hogan eventually settled the case with Gawker for $31M.

Hulk Hogan testifies in his suit against Gawker. Image credit: Slate.

The USLS celebration panel hosted three experts on revenge porn, including two attorneys knowledgeable about Minnesota’s new suite of civil and criminal remedies that went into effect in late-summer 2016. See Minn. Stat. §§ 604.31 (civil), 617.261 (criminal). In response to my question about the civil action, one of the attorneys remarked that he believed the Minnesota law created a “copyright” to one’s image, enabling that person to prevent unwanted dissemination and exploitation of pictures and recordings depicting the person in a sexual way. For the sake of persons hoping to prevent and recover damages for unwanted dissemination under Minnesota’s new law, I hope he’s incorrect; after all, the Copyright Act preempts all state laws that overlap with federal protections over the subject matter of copyright, see 17 U.S.C. § 301(a)—which includes photographs and videos, see 17 U.S.C. § 102(a)(5)-(6).

In order to bring a civil action for non-consensual dissemination of private images (the “revenge porn civil action”) in Minnesota, (1) the defendant must have disseminated a private image without the plaintiff’s consent, (2) the image must have been of a sexual character, (3) the plaintiff must have been identifiable in the image, and (4) the image must have been obtained or created under circumstances in which the plaintiff had a reasonable expectation of privacy. See § 604.31, subd. 1. If these four elements are shown, the plaintiff may recover general and special damages, including financial losses resulting from the dissemination of an image and damages for mental anguish, disgorgement of profits made from dissemination, civil penalties, and attorneys’ fees. See § 604.31, subd. 3. See the Minnesota Senate’s overview of this law for more general information about the revenge porn civil action.

What’s interesting about this cause of action is that it’s a blend of both (1) the right to privacy and (2) an intellectual property right called the right of publicity. Right to privacy claims (for invasion of privacy) typically remedy the unjustified exploitation of one’s personality and injury to privacy interests that are emotive or reputational. Right of publicity claims, on the other hand, combat the unauthorized use of one’s identity in commercial advertising and compensate persons for the value of the commercial use of that identity and/or reductions in the value of the cultivated identity. Minnesota’s revenge porn civil action appears to be a specific hybrid of both kinds of claims; it protects both privacy and property interests in a person’s identity and provides relief in the form of both reputational and economic damages, as well as injunctive relief.

Coincidentally, when Minnesota passed its revenge porn bill in 2016, it was also considering the codification of the right of publicity under a bill entitled the “Personal Rights In Names Can Endure” (“PRINCE”) Act. But the bill’s sponsor later pulled his draft after critics expressed concerns about the bill’s broad language. One commentator questioned whether such a bill was necessary in light of Hulk Hogan’s victory. Minnesota’s revenge porn civil action arguably combined two separate claims into one, but it also expanded the scope of recovery under either claim so as to now include multiple forms of relief.

Whether the revenge porn civil action will be utilized to any significant degree is as of yet uncertain. The USLS celebration panelists noted—and a brief case search confirms—that courts have yet to extensively apply and interpret the law. From the face of the law, though, it appears that Minnesota is now a hospitable forum for victims of revenge porn, especially celebrities with economically-valuable identities. And due to the state’s broad remedial scheme, I would not be surprised if we eventually see large cases like Hulk Hogan’s in Minnesota courts.

There is an entire gaming sub-culture developed around watching others play video games.  I’m not talking about gathering around the Game Cube in your friend’s basement and passing the only controller.  “Let’s Play” videos are game play videos made by players and posted or streamed online.  The videos usually include the players’ own running commentary, which typically offers sarcasm, loud noises, bad jokes, profanity, and occasionally helpful tips.

The concept of Let’s Play videos has been around, in various forms, as long as recording devices and screen captures have allowed gameplay documentation.  Today, some players make a sizeable living from Let’s Play video ad revenues.  Felix Kjellberg, whose YouTube name is PewDiePie, is easily the most well-known Let’s Play vlogger.  With over 50 million YouTube subscribers, PewDiePie was named the highest-earning YouTuber in both 2015 and 2016.

A screenshot from PewDiePie’s Let’s Play video for the game Dark Souls

Despite their popularity, however, the legality of Let’s Play videos is on shaky ground.  Each video features a reproduction of copyright-protected images from a video game.  The videos also typically feature the player’s voiceover and a small window showing the player’s reactions (see above example).  If not a pure reproduction of copyright-protected material, the videos are at least a derivative work.

Some have argued that Let’s Play videos are protected fair use.  Statutory examples of fair use include criticism, comment, news reporting, and a few others.  Arguably, the gaming videos may be a form of commentary, as at least some of the videos do include commentary on the copyright-protected images themselves.  However, these statutory categories are only examples, and fair use is decided on a case-by-case consideration of six factors.  The transformative nature of the videos may weigh in favor of fair use.  That is, rather than a video game, Let’s Play videos provide video playback of one user’s gameplay with added commentary.  At this point, it is largely unclear whether these videos constitute fair use, and will likely remain so until a court has the opportunity to give guidance.

Whether Let’s Play videos are rampant infringement or protected fair use, video game developers have largely chosen a hands-off response. PewDiePie’s videos provide free advertising for the game developers to 50 million subscribers.  The videos give potential players an opportunity to preview gameplay and graphics before purchasing.  Because the draw of a video game is in active play, this likely does not take away from the game developers’ bottom lines.

This week, however, one video game developer reminded PewDiePie of the unstable footing on which his vlogging fame rests. A recent PewDiePie video included some racist commentary.  Unfortunately, it isn’t PewDiePie’s first misstep of this type.  Though this particular incident ruffled the wrong game developer’s feathers.  In a series of tweets, a co-founder of Campo Santo—developer of the game Firewatch—condemned PewDiePie’s statements and vowed to file DMCA takedown notices for PewDiePie’s Firewatch videos.

The Firewatch creator stated “I am sick of this child getting more and more chances to make money off of what we make.”  In apparent reference to the legalities, he said “[t]here is a bit of leeway you have to have with the internet when [you] wake up every day and make video games. There’s also a breaking point.”

This game developer’s response illustrates developers’ power with respect to the success of Let’s Play videos, and more generally highlights the power afforded copyright holders by the DMCA. The Firewatch creator’s takedown threat was an apparent result of his personal disgust at PewDiePie’s racist remarks, and did not relate to any new discovery of infringement.  Like other game developers, Campo Santo was well aware of Let’s Play videos.  Instead of using takedown notices to eliminate infringing content, the developer here is using the DMCA to dictate how PewDiePie infringes its content.  With the help of DMCA takedown notices, developers like Campo Santo can stand back in acquiescence, striking only when the infringement becomes inconvenient.  I wonder if the DMCA drafters anticipated this type of selective enforcement by copyright holders.  In a litigation setting, this practice may even raise the possibility of equitable defenses to infringement.

–James Mahoney, Razor’s Edge Communications

Recently violinists Rhett Price and Shiva Chaitoo got two very different lessons on the downside of posting performances on the Internet.

According to an article in The Boston Globe, a fan of Price alerted him to a video of Chaitoo’s playing. Turns out, Chaitoo was pulling a Milli Vanilli, fingering his violin over a sound-track of Price’s recordings. And he’d been doing it for at least a couple of years, and getting paid gigs from people who’ve seen the vids or his “live” performances.

Long story short: Price isn’t looking for anything more than for Chaitoo to stop his “tribute.”

What’s really interesting about the situation, though, is the copyright aspect of it, and the apparent lack of legal remedies available to Price.

According to Paul Litwin, a partner of Shames & Litwin entertainment lawyers, when Price posted his videos on YouTube and offered free downloads in exchange for email addresses, he essentially granted some use-rights. YouTube’s terms of service include “a worldwide, non-exclusive, royalty-free, sub-licenseable and transferable license to use.”

Litwin says, “If you buy and download a song, you can pretend to play and sing along with it. By posting his music on YouTube, Rhett is allowing the YouTube community to use it. [Chaitoo] isn’t saying he’s Rhett, so from a legal standpoint, he does not appear to be infringing copyright laws.”

Really? The YouTube T&S notwithstanding, it seems to me that this would usually come under fair-use category. Since Chaitoo used it for a marketing tool (and probably also “performed” the tracks at his paid gigs), I think he hit some very sour copyright notes. There’s a world of difference between playing air-violin in your living room and what Chaitoo did.

As I’ve mentioned often before, I’m no lawyer (though I play one in the living room by reading aloud Steve Baird postings as if they were my own), so what do you knowledgeable folks think about both the situation and Lawyer Litwin’s assessment?

And one final factor to consider: Chaitoo lives and works in Trinidad and Tobago, which may complicate the copyright issue and Price’s available recourse.

As the drum roll proceeds to the upcoming Midwest IP Institute in Minneapolis and sharing the podium with Joel MacMull of the Archer firm (and Simon Tam fame) on Thursday September 28, in a few days, I’ll be making a stop south of the border, at the University of Iowa College of Law, where it all started for me in the law, to share some thoughts on this topic with the Iowa Intellectual Property Law Society on Friday September 15, here are the details to attend.

In the meantime, here is my second installment on the important topic of Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II.

I’ll call it part of a continued, controlled Tam catharsis, with more food for thought and discussion of where the law is heading, especially with forthcoming Part III, exploring the implications of the Supreme Court’s Tam decision, especially the future of federal trademark dilution law.

As you may recall, Part I questioned the Supreme Court’s characterization of Section 2(a) as banning speech and the Court’s conflation of the federal government’s issuance of a trademark registration (and corresponding meaning of the resulting Certificate of Registration, issued in the name of “The United States of America,” and corresponding meaning of the federal registration symbol — ® — which cannot be used lawfully unless granted federal registration unlike © and ™) with the meaning of the underlying trademark subject matter sought to be registered.

As it turns out, the learned Professor Christine Haight Farley of American University Washington College of Law similarly recognized: “A broader critique is that the [Tam] court seems often to be speaking of trademarks when the issue before it is limited to the registration of trademarks.”

With Part II, while admittedly not having all the answers, I thought it might be productive to ask some probing questions about the Court’s decision to provoke further discussion and guidance:

  • Why didn’t the Tam Court acknowledge that the normal and historical operation of trademark law actually facilitates the complete suppression of certain speech, perhaps justifying special treatment and a unique approach from its typical First Amendment and Free Speech cases?
  • Why didn’t the Tam Court acknowledge the material difference in kind struck by Congress between denying registration on the one hand and enjoining and/or punishing trademark use on the other hand, as only the latter truly qualifies as a ban on speech?
  • Why didn’t the Tam Court acknowledge that our entire federal trademark law flows from the U.S. Constitution too? In particular, the Commerce Clause (Article I, Section 8, Clause 3), granting Congress the power: “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.”
  • Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?
  • Did the Tam Court gloss over the language in Walker v. Texas Division, Sons of Confederate Veterans, Inc., noting “government statements (and government actions and programs that take the form of speech) do not normally trigger the First Amendment rules designed to protect the marketplace of ideas”?
  • Why did the Tam Court not feel compelled to explain how and why the government actions of approving or disapproving marks for registration somehow does not take the form of speech?
  • Was it disingenuous for the Tam Court to say “trademarks are private, not government speech,” when it was apparently unwilling to specifically and directly say that the government’s act of registering a trademark, issuing a Certificate of Registration (in “the name of the United State of America”), and placing a trademark on the Principal Register, is not government speech?
  • Isn’t the proper comparison in Walker and Tam, the state government’s direct control over specialty license plates and the federal government’s direct control over Certificates of Registration and the Principal Register, so isn’t it a red herring to emphasize that the federal government doesn’t “dream up” the applied-for marks, since Texas didn’t “dream up” the multitude of specialty license plate designs either?
  • Doesn’t the federal government, through the USPTO, edit, modify, and amend applied-for marks (through required disclaimers, description of goods/services changes, description of the mark changes, and drawing changes, etc.), at times, to place them in proper condition for approval, making the Tam Court’s attempt at distinguishing Walker v. Texas less compelling?
  • Why was the Tam Court more willing to limit Walker v. Texas to its facts than upholding the disparagement bar in Tam as facially constitutional, and then limiting Tam to its facts, in the unlikely event the hypothetical concern of Congress attempting to amend the Copyright Act to refuse similar matter ever would arise in the future?
  • In other words, why was the Tam Court so willing to embrace the hypothetical concerns of the false Copyright comparison with a multitude of ways to fairly distinguish from trademark?
  • As to the concern of chilling speech by denying federal registration, isn’t it telling that during the entire more than 100 year history of federal registration in the U.S., only some 5 million federal registrations have issued, which most certainly is a drop in the bucket to the number of eligible unregistered marks in use throughout the same period of time?
  • The Tam Court relied, in part, upon a perceived “haphazard record of enforcement” of the disparagement bar, how difficult would it be to develop evidence showing a similar “haphazard record” in applying other statutory bars found in federal trademark law?
  • How can the Tam Court actually resist saying that trademarks are a form of commercial speech, when it previously held in Friedman v. Rogers that the use of trade names “is a form of commercial speech”?
  • Why didn’t the Tam Court ever once mention “public policy” or the “unconstitutional conditions” doctrine in its decision?
  • Did the Tam Court focus its sights on “viewpoint” as a way to avoid implicating too many other content based restrictions in the Lanham Act as becoming vulnerable to First Amendment challenges?

Stay tuned for Part III, as the Tam Court’s focus on “viewpoint” is the likely key to unlocking what additional portions of federal trademark law are vulnerable to future First Amendment challenges.

New ideas, creations, and business ventures are often the product of collaboration.  If lawyers had their way, a written agreement would precede every creative collaboration.  Of course, this is not the case.  Collaborators often do not seek advice of counsel, or see the need for an agreement, until after the new idea, creation, or venture is well underway.  As a result, statutes and case law operate to define the joint ownership rights.  Each type of IP affords slightly different rights to joint owners.

Patent

A patent, whether design or utility, provides the patent holder with the right to exclude others from making, using, selling, offering to sell, and importing the patented invention.  Where a patent is owned by multiple entities, each joint owner has the right to independently license any of these rights.  Moreover, patent joint owners do not have a duty to account to one another.  This means that joint owners do not have to share profits with one another.  However, the consent of all owners is generally needed to sue to enforce the patent.  In practice, this means that one joint owner can block others from suing.  Consent of all owners is also needed to exclusively license the patent.

Copyright

A copyright holder has a set of rights, including the rights to reproduce, distribute, make derivative works of, perform, and display, the copyrighted material.  Similar to patents, each joint owner of a copyright may individually exercise these rights without consent of other joint owners.  Each joint owner may additionally license these rights.  However, there is one notable difference from patent law: the duty to account.  Each joint copyright owner has a duty to share profits obtained from the copyright with all joint owner.  Another distinction from patent law is that joint copyright owners may each sue to enforce the copyright without consent of other owners.  However, consent of all owners is also needed to exclusively license the copyright.

Trade Secret

Due to the nature of trade secrecy, the law of joint ownership of trade secrets is not as well defined as with patents and copyrights.  In general, case law suggests that joint owners of a trade secret may each use the trade secret for their individual business purposes.  However, it is unclear whether joint owners have a duty to account.  While consent of all joint owners is likely not needed to sue for misappropriation of the trade secret, the owners must consent to exclusively license the trade secret.

Trademark

The prospect of a jointly owned trademark is something of a different nature.  By definition, a trademark is an identifier of a single source.  While multiple parties can own a trademark, if each party is permitted to use the mark independently in the marketplace, by definition, the mark is no longer designating a single source.  Additionally, the law is unclear on whether joint trademark owners have a duty to account, or whether they must consent for an infringement suit.  In many cases, a co-branding agreement may be a good alternative to a jointly owned trademark registration.  Alternatively, multiple parties may want to jointly own a single entity, which in turn owns the mark.

Consider that SUPER HEROES is often used in conjunction with DC COMICS or MARVEL, which are source designators. What do you think? Are DC and Marvel asking for a genericness battle?

Jointly owned trademarks are rare, but not unheard of.  Arguably the most famous jointly owned trademark is owned and maintained by two competitors.  DC Comics and Marvel Comics have co-owned the mark SUPER HEROES for decades.  This seems a strange duo since the two companies are not only direct competitors, but also the only major players in the comic book realm.  Nonetheless, the two entities have jointly owned the mark since 1979, and are known for diligently enforcing itSome wonder if this is an example of trademark misuse, as SUPER HEROES does not designate a single source.  A consumer might identify a product with SUPER HEROES as being from either DC Comics or Marvel Comics.  The companies’ fierce enforcement efforts may be an attempt to head off an inevitable genericness fight.

This is the question being presented in a lawsuit pending in the Southern District of New York against the iconic band U2 and a majority of its band mates.  Paul David Hewson (more well known as lead singer Bono), David Howell Evans (more well known as guitarist extraordinaire the Edge), drummer Laurence Joseph Mullen Jr., and bassist Adam Clayton were all named as defendants in the Amended Complaint filed by British recording artist Paul Rose (“Rose”) in June of this year.  He contends that U2’s The Fly from the 1991 Atchung Baby album ripped off his musical composition Nae Slappin.

Atchung Baby and Nae Slappin
Atchung Baby and Nae Slappin

Rose contends he dropped off a demo tape at Island Records.  U2 recorded at Island Records and allegedly listened to the demo tape.  Both Rose and U2 were often in the Island Records offices.   Rose claims that the renowned guitarist The Edge changed his approach to guitar playing after hearing Rose’s work.

Rose claims that the lyrics of The Fly concede that U2’s new musical sound and direction was not really new.  As the great Bono sings:  “Every artist is a cannibal, every poet is a thief.”  Rose contends that this rings true with U2.

In its recently filed motion to dismiss, the iconic band argues that Nae Slappin is a different animal than The Fly.   Rose’s “Nae Slappin is essentially an extended guitar solo consisting mostly of multiple guitar tracks, with percussion accompaniment.”  “There are no vocals, no lyrics, no subject, and no theme.”  It is experimental and acts as a vehicle for Mr. Rose to showcase his guitar skills.  In stark contrast, U2’s The Fly is a “‘song’ in the true sense of the word, with everything that comes with it:  vocals, lyrics, a subject and a theme.”  “‘The Fly’ is a direct reference to ‘The Metamorphosis’ by Frank Kafka, in which the protagonist changes overnight from a travelling salesman to a giant insect, or fly.”   I must admit I did not like the movie with Jeff Goldblum and Geena Davis that is based on Kafke’s novella.  However, it looks like I was in the minority as Rotten Tomatoes shows a 91% rating by critics and 83% rating by audiences.  I might have to re-watch the movie now that I am an adult.  But, I digress.

While writing this blog post, I watched an old YouTube video of U2’s song for the first time.  See below.

I liked the song (and the video).                

The standard for determining copyright infringement is whether the “total concept and overall feel” are the same.  U2 alleges that the two works: The Fly and Nae Slappin do not meet this standard.  The band accuses Rose of parsing the two works. For example, he points to a 7-second clip from Nae Slappin and a 12-second clip from the band’s The Fly.  Rose also asserts claims about the “percussion” or a “beat” that the band claims is inappropriate.   Relying on previous case law, U2 asserts that the beats alone “are too common of a musical technique to be protectable.”  Further, U2 complains that there cannot be protectable expression in a “chord change” from “E7 to A7.”        

U2 asserts that “musical ideas” are not protectable—only “artistic impressions.”  Accordingly, U2 contends that Rose’s Amended Complaint should be dismissed.

U2 also argues that Rose waited too long to bring this lawsuit.  He waited 25 years.  We will have to see how Rose counteracts this argument.  In his Amended Complaint, Rose asserts that he has a “witness who had provided the Rose demo tape to the Island Records executives,” who had only come forth recently because she was previously concerned about losing her job.  This may be a reason Rose will assert that he waited.

Rose asserts an equitable claim for right of attribution and writing credit for The Fly.  U2 contends that this claim is really a claim for ownership of the copyright which is barred by the three-year statute of limitations.  This is different than laches (you waited too long).  Rather, a statute of limitations cuts off your right to make a claim (except if there are tolling arguments, fraud or the like).

Will U2 prevail on its motion? Will U2 play The Fly when the iconic band comes to Minneapolis to play at the US Bank stadium in September?

IMG_0015

I’m a rules follower. Going back to the days of the Game Genie—a device that allowed gamers to play Super Mario Bros. with infinite lives or the Legend of Zelda with infinite bombs—I have always preferred the satisfaction of beating the IMG_0016game by its own rules.

 
Like the video games that have progressed since the Nintendo NES, the corresponding cheat codes have become increasingly more sophisticated. Bossland is a company that creates and sells entire programs dedicated to hacking and cheating in popular video games, such as World of Warcraft, Overwatch, and Diablo 3, all made by Blizzard Entertainment. Many of the Bossland programs allow users to create “bots” that play the game automatically without any user interaction so that the user can, for example, achieve a higher level character without the usual effort. This is a practice sometimes referred to as “botting.”

 
Blizzard has been fighting companies like Bossland for years. Since 2013, Bossland has sold approximately 118,939 products in the United States alone. Blizzard estimates that 36% of these products were cheats for Blizzard games. In June of 2016, Blizzard sued Bossland in the Central District of California. According to Blizzard, the Bossland cheats give users an unfair advantage, reducing the enjoyment of the game for other players. Blizzard alleged, among other causes of action, that Bossland violated an anti-circumvention provision of the Digital Millennium Copyright Act. The DMCA provides:

No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title;
(B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or
(C) is marketed by that person or another acting in concert with that person with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.

17 U.S.C. 1201(a)(2). Within its games, Blizzard has “technological measures” that operate to prevent users from using cheats and hacks, but the Bossland programs are designed to work around Blizzard’s measures. At first blush, Bossland’s programming seems like the very type of circumvention efforts that the anti-circumvention provisions of the DMCA were designed to protect against. But the DMCA was enacted in response to internet file sharing concerns. In 2009, Blizzard was involved in a similar lawsuit against another cheat company. Many were concerned that a ruling in favor of Blizzard would overly expand the DMCA to allow for recovery under any circumvention of any type of technological control. Jef Pearlman of Stanford University suggested that “because anything can contain copyrighted works,” a ruling in favor of Blizzard could suggest that “any access to anything becomes a DMCA violation.” Blizzard did win its 2009 case, and the judgment was affirmed on appeal to the Ninth Circuit.

 
Late last year, Bossland motioned to dismiss the lawsuit for a lack of jurisdiction over the Germany-based company. The district court denied Bossland’s motion. After that attempt, Bossland apparently stopped defending the suit altogether. As a result, Blizzard obtained from the court a default judgment against Bossland. The judgment awards damages to Blizzard based on available statutory damages under the DMCA. The DMCA allows a plaintiff to collect a minimum of $200 per violation. Blizzard alleged 42,818 violations of the DMCA, and because Bossland did not dispute any of them, Blizzard obtained a judgment of statutory damages to the tune of over $8.5 million.

 
Bossland maintains on its product websites that “Botting is not against any law.” While perhaps technically true, the circumvention of digital copyright safeguards is.

CR Poster

At some point in this digital age, almost every individual or business in the creative space will discover that somebody has copied them. You may see it yourself, or you may get the stomach-dropping “Doesn’t this look an awful lot like…..” e-mail from a friend. It might be that potential client who said your design “was nice, but wasn’t for us.” It could be a big company with a new shirt/container/advertisement with a strikingly similar photograph. It could be a blog post that . . ., well, you get the idea. When you discover that someone copied something that you created, there are a lot of questions and it’s rarely as simple as “someone copied my stuff!” So here are a few things to consider as you decide on next steps.

First, does your work qualify for copyright protection? Any one who creates an original, creative work of authorship has a valid copyright interest as soon as the work is fixed in a tangible medium of expression. The bar for what is “creative enough” to qualify is low. Very low. Even the mere selection, arrangement, and display of facts in a graph or a telephone book may qualify as a creative work of authorship.  However, there are some limitations. Copyright law only protects the expression of an idea, not the idea itself. So while a cookbook focused on chicken sandwiches would be protected, the underlying recipe (and sandwich) is not. Also, words and short phrases like book or movie tittles are not protected by copyright. But yes, the image you grabbed from a Google image search through likely is.

However, as long as you meet have a modicum of creativity, and as long as you didn’t copy someone else’s expression, you likely have a valid copyright. This is true even if you haven’t registered your copyright with the Copyright Office. However, a registration (or pending application to register) is generally a prerequisite for bringing a lawsuit, and can open up additional types of relief if the infringement occurred after the registration of the copyright.

Second, are you the owner of the work? Generally, the author is the owner, unless ownership has been transferred. For businesses, if an employee created the work within the scope of their employment, then the employer is likely the author. The work for hire doctrine can be tricky, so it is best to drill down and confirm ownership before asserting any claim of infringement. If you’re not the author, you may be able to contact the former employee, contractor, etc. and obtain an assignment of the copyright interest.

Third, is the “infringer” really infringing? Copyright law only protects the expression of a work, not the idea of a work. The James Bond franchise has a number of valuable copyright protected works: books, movies, characters, etc. While there are broad rights associated with the franchise, the copyright does not give the owner the ability to claim rights in the idea of a British secret agent. The tough part is locating the fine line between idea and expression. There also a question of  whether the “infringer” is making a legitimate “fair use” of the copyright work. Is the copy part of a social commentary on a relevant issue or topic, like gender stereotypes? Could creation of an online repository of shared links, images, and articles a la Pinterest qualify as a fair use? These are important questions to consider when deciding whether to pursue any further action.

Finally, what are your options? You could start with a short email or phone call. Third-parties may not realize something is protected. The “infringer” may happily stop selling/posting/distributing the copied work. An attorney can assist, providing you with talking points, ghost writing a letter, or if you prefer contact the alleged infringer directly. If the copy is on the internet, there is likely a method for you to request that the website/app/hosting service remove access to the infringing work through a Notice of Claimed Infringement. YouTube, Facebook, eBay, and others all have online submission forms. Be aware, however, making wholly unreasonable claims of infringement could lead to the alleged infringer turning the tables.  Of course, a lawsuit is an (expensive) option but as noted above, a registration or pending application is necessary to bring  a lawsuit. If the work has value (economic or personal), you should consider applying to register the copyright to at least expand your response options, and your potential recovery.

Creative individuals and companies put a lot of time, effort, and money to create something that is valuable to them. When you discover that someone took a shortcut at your expensive, it can be personally offensive and you want to make it stop, now. The law provides an avenue for relief, but unfortunately it often may not provide you with the scope of protection you thought you had. So if you or a client runs across a copycat, hit the pause button. Someone may have “copied your stuff,” but they may not have committed copyright infringement.