Should our copyright laws extend to fashion designs? The so-called Fashion Bill has been reintroduced in Congress.

Read more here.

In a major setback to Righthaven, LLC in one of its copyright infringement cases, a federal judge recently ruled that defendants Kayse Jama and the Center for Intercultural Organizing (“CIO”) engaged in fair use as a matter of law when they posted an article from the Las Vegas Review-Journal (“LVRJ”) that was copyrighted by Righthaven (For background on Righthaven and its business model, see “Copyright Infringement in the Digital Age: Is Righthaven Using the Right Solution?”).

Using the four-factor legal standard for fair use (purpose and character of the use; nature of the copyrighted work; amount/substantiality of the portion used in relationship to the work as a whole; and effect of the use upon the potential market), Judge James Mahan ruled that Jama and CIO met all four criteria necessary to constitute fair use. One of the most surprising aspects of this ruling involves the third factor. Even though the defendants copied the article in its entirety, the judge ruled that the amount was reasonable. Mahan reasoned that because the purpose of the use was to educate the public, and the work was factual, “it would have been impracticable for defendants to cut out portions of the article or edit the article down.”

Regarding the fourth factor of fair use, the opinion also questions whether Righthaven, which is not itself a newspaper and is merely using the copyright to file infringement lawsuites, can claim LVRJ’s market as its own.

It remains to be seen how this ruling will affect the numerous other cases that Righthaven has filed against bloggers who have posted LVRJ content, but if the posting of an entire article can be considered fair use, and if Righthaven does not have an actual market to base its claims upon, this could jeopardize its other claims of copyright infringement.

Several months ago, we published a blog post entitled “Copyright Infringement in the Digital Age: Is Righthaven Using the Right Solution?” discussing a spate of lawsuits filed by Righthaven, LLC against bloggers who posted content copyrighted by Stephens Media, the publisher of the Law Vegas Review-Journal.

Copyright and trademark attorney Ron Coleman, owner of the “Likelihood of Confusion” blog, recently posted an update on this topic.  Coleman, along with Las Vegas attorneys Marc Randazza and J. Malcolm DeVoy, filed an amicus brief on behalf of the Media Bloggers Association in one of these lawsuits.  This brief, which is posted in its entirety on Coleman’s blog, calls into question the propriety and scope of copyright statutory damages in this type of lawsuit. Much is at stake because statutory damages can greatly simplify the Plaintiff’s task of having to otherwise prove up actual damages.

Before there was an Internet, wholesale infringing on someone’s copyright could be a time consuming and capital intensive endeavor. Through most of the last century, would-be infringers needed a printing press, and even with the advent of the mimeograph and copy machines, paper and distribution channels were required.  But today, a copyrighted work that is posted online can be easily copied and distributed throughout the world with a few clicks of a mouse.  In the case of pirated software and other high-ticket items, it may make sense to go after the infringers. But what about infringers that cut and paste articles from online newspapers and magazines on their own websites or blogs?  Is it cost effective to take them to court?

In March 2010, Stephens Media, publisher of the Las Vegas Review-Journal, began selling copyrights to that paper’s content to Righthaven, LLC, a company whose CEO, Steve Gibson, is an attorney practicing law in Nevada. Since then , Righthaven has been scouring the Internet for Review-Journal articles that have been posted without permission from the copyright holder. By the end of July 2010, Righthaven had filed at least 80 copyright infringement lawsuits in Nevada federal district court against a variety of website owners and bloggers.

Gibson’s strategy for going after copyright infringers is a bit unorthodox. The standard procedure before filing a copyright infringement suit is to send a cease and desist letter, giving infringers an opportunity to stop their activities before taking them to court. In addition, under the Digital Millennium Copyright Act (“DMCA”), there are provisions for sending a “takedown notice” to an infringing website before taking further legal action. Righthaven has apparently done neither, choosing instead to serve its infringers with federal lawsuits without prior warning. Faced with the prospect of going to trial on Righthaven’s turf, many of the defendants have chosen to settle early in the case.

Since few of these infringers make any money from their websites or blogs, and even fewer, if any, operate online publications that directly compete with the Review-Journal, some argue that such cutting and pasting could be defended under the “fair use doctrine” of the U.S. Copyright Act. Under this doctrine, some copying without permission is considered “fair use” (and therefore not infringement) depending on the purpose and character of the use, the nature of the copyrighted work, the amount of the copyrighted work being copied, and the effect of that copying has on the potential value of the copyrighted work.  Since many of the website owners and bloggers seek only to inform and educate their readers and not to turn a profit, fair use might be a viable defense in some cases.  But from Righthaven’s point of view, the unauthorized posting of its copyrighted content greatly reduces the potential value of that content by driving traffic away from the Review-Journal’s website and decreasing its advertising revenues.

It remains to be seen whether Gibson’s strategy will prove profitable for Righthaven over the long haul. In a similar move against music file sharing, the Recording Industry Association of America (RIAA) sued approximately 20,000 infringers over five years, spending $64 million in legal costs but only recovering $1.3 million in damages and settlements. However, if suing for infringement of Review-Journal content turns out to be a money making operation, Stephens Media controls over 70 other newspapers in nine states which could join the fray, with the possibility of other media groups to follow. In the meantime, website owners and bloggers can avoid possible liability to linking to articles of interest rather than copying the entire content directly onto their sites.  Getting permission to use content is the safest course.

Intellectual property (IP) is a valuable asset, not only for the producers and creator of this intangible property, but also for the overall economy that benefits from the innovation and creativity this property represents.  However, the value of intellectual property is greatly reduced when unauthorized users are allowed to exploit this property through counterfeiting, piracy and other illegal activities. Enforcing IP rights in a global economy requires a coordinated effort among a variety of governmental agencies.  The federal government recently announced a plan to improve those efforts.

The 2010 Joint Strategic Plan on Intellectual Property Enforcement (JSPIPE), a 65-page document, was issued in June 2010 by Office of the Intellectual Property Enforcement Coordinator (IPEC).  The JSPIPE coordinates the efforts of eight government agencies: the Departments of Agriculture, Commerce, Homeland Security, Justice and State; as well as the Food and Drug Administration, United States Trade Representative and the Copyright Office.  A total of 33 Enforcement Strategy Action items are organized into six categories: (1) Leading By Example; (2) Increasing Transparency; (3) Ensuring Efficiency and Coordination; (4) Enforcing Our Rights internationally; (5) Security Our Supply Chain; and (6) Building a Data-Driven Government.

Click here to read the entire document.

In an earlier post entitled “J.D. Salinger, The Catcher in the Rye & Intellectual Property Rights”, we discussed a pending case (Salinger v. Colting) in which a U.S. district court granted the estate of J.D. Salinger a preliminary injunction against Swedish author Fredrik Colting, his publishers and distributors concerning the book 60 Years Later: Coming Through the Rye. In a recent decision concerning this case, the Second Circuit Court of Appeals ruled that the district court used the wrong standard for granting the preliminary injunction, vacating the order and remanding the case back to the district court.

The court of appeals said that the correct standard for a preliminary injunction in a copyright infringement case is the four-factor test outlined in the Supreme Court decision eBay, Inc. v. MercExchange, L.L.C. The four factors are: (1) the plaintiff suffered an irreparable injury; (2) remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) the public interest would not be disserved by a permanent injunction.

This ruling is significant, because it may mark the first time in a reported case that the so-called eBay factors are being applied to a preliminary injunction in a copyright infringement dispute.  The eBay case involved a permanent injunction in a patent dispute.  However, the decision did nothing to immediately change the situation for the defendants. The preliminary injunction (which barred Colting, his publishers and distributors from advertising, publishing or distributing Colting’s book) will stay in place for ten days following the issuance of the mandate. This will give the estate of J.D. Salinger the opportunity to apply for a temporary restraining order pending the rehearing of the motion for a preliminary injunction.

Ever since the first Harry Potter novel was released in 1997, readers all over the world have delighted in the fantastic adventures of Harry and his classmates at the Hogwarts School of Witchcraft and Wizadry.  But when J.K. Rowling wrote the fourth book in the series, Harry Potter and the Goblet of Fire, was she drawing from her own imagination or from a novel written years before Harry Potter was even conceived?  According to the family of Adrian Jacobs, author of the 1987 novel entitled, The Adventures of Willy Wizard No 2: Livid Land, Ms Rowling plagiarized the late Mr. Jacobs.

The estate of Adrian Jacobs (who died in 1997) first sued Rowling’s publisher, Bloomsbury Publishing, in June of 2009, before joining Ms. Rowling as a defendant in February of 2010.  The lawsuit, filed in High Court in England, alleges that both novels involve human hostages being held in a bathroom by half-human creatures, as well as boys who are trying to rescue the hostages. Other alleged similarities between the two books include a wizard train and a wizard prison.

Regardless of how similar two literary works may be, an author is not generally considered to be liable for plagiarism if that author’s work was arrived at independently.  J.K. Rowling has claimed that she had never even heard of Adrian Jacobs or his novel until the first accusation of plagiarism was made in 2004, some four years after the publication of Harry Potter and the Goblet of Fire.

This is not the first plagiarism lawsuit filed against Rowling.  In 1999, American author Nancy Stouffer claimed that her two 1984 works, The Legend of Rah and the Muggles and Larry Potter and His Best Friend Lilly were the basis for the Harry Potter character.  Rowling claimed that since only portions of Rah were printed in booklet form in 1986 and were never sold, either in the United States or elsewhere, there is no way that she could have plagiarized Stouffer’s works, especially since she never even visited the United States until 1998, a year after the publication of the first Harry Potter novel.  In 2002, Rowling, her publisher, and Warner Brothers (owner of the movie rights to the Harry Potter books) sought and received a declaratory judgment that they had not infringed on Stouffer’s works. It was further ruled that Stouffer had in fact defrauded the Court.

Stories of wizards & witchcraft date back at least as far as the legends of Merlin the Magician, and there are common threads that run through many such stories.  Not even a magic spell will help the estate of Adrian Jacobs unless the estate can prove direct copying.

Whether it’s “Ya Gotta Believe” for the 1973 New York Mets, “Commitment to Excellence” for the 1963 Oakland Raiders or “Win One for the Gipper” for the 1928 Notre Dame Fighting Irish, sports teams have long been associated with slogans. The Super Bowl champion New Orleans Saints is no exception. But it wasn’t until the Saints won their first visit to the Super Bowl, which often brings with it increased sales of sports apparel and memorabilia, that controversy began to rise about who owns the rights to the slogan “Who Dat?”

Seizing on the opportunity, several enterprising entrepreneurs began making and selling T-shirts emblazoned with the “Who Dat?” slogan. Some of these small businesses were served with cease and desist letters from the National Football League and a company called Who Dat, Inc., claiming infringement on the NFL’s and Who Dat, Inc.’s slogan.

Although sometimes mistakenly referred to as “copyrighted” material, slogans (like single words, logos, certain sounds and even some smells and motions) are considered to be trademarks, and as such, ownership in the United States is generally determined by use. Whoever uses a trademark first and continues to do so is usually deemed the rightful owner. One way of enhancing those rights is to acquire federal trademark registration. Aside from allowing the registrant to seek attorney’s fees, federal registration serves as constructive notice to anyone in the United States not to use the mark, unless their use predates that of the registrant.

In 1991, and again in 1993, Who Dat, Inc. filed intent-to-use trademark applications with the U.S. Patent and Trademark Office for a variety of apparel items, to include T-shirts. Although the mark was considered registrable both times, Who Dat, Inc. never filed a Statement of Use, so registration never issued. (In 1992, between these two applications, Who Dat, Inc. obtained a federal registration for “Who Dat?” for soft drinks, but the company let this registration lapse in 1998.)

In 2004, an individual from New York City filed an intent-to-use application for “Who Dat” for clothing. The application was opposed by both the New Orleans Louisiana Saints, LLC and NFL Properties, LLC in 2006, but the opposition was withdrawn in 2008. To date, this applicant has not yet alleged use of the mark nor have the Saints or the NFL filed their own applications for registration.

On January 7, 2010, after the Saints had made the playoffs and with the prospect of greater post-season sales, Who Dat, Inc. filed a third application for clothing, this time claiming a date of first use in commerce of October 26, 1983. This application is still pending, as are several intent-to-use applications for variations of “Who Dat?” filed by other individuals looking to capitalize on Who Dat fever.

After the NFL sent out its cease and desist letters, several prominent Louisiana politicians got involved in the dispute. Senator David Vitter wrote a letter to the Commissioner of the NFL, claiming that the slogan “Who Dat?” dates back some 130 years to minstrel shows and “was adopted by Saints fans in a completely spontaneous way.” Congressman Charlie Melancon likewise voiced his disapproval of the NFL’s action, and on January 25, 2010, Governor Bobby Jindal proclaimed “Who Dat Nation Week” in Louisiana. So great was the outcry from Saints fans and their elected officials that the NFL eventually backed down. In a letter to Louisiana Attorney General James “Buddy” Caldwell, NFL senior vice president Gary Gertzog, the league confirmed Louisiana’s position that the NFL does not have exclusive rights to either “Who Dat,” “Who Dat Nation,” the French fleur-de-lis symbol or the colors black or gold.

The events of the last several weeks should demonstrate to everyone who’s claimed ownership in the “Who Dat” slogan over the last two decades or longer that waiting to protect one’s rights until a trademark suddenly increases in value is rarely the best strategy.

I first read The Catcher in the Rye during my junior year of high school.  It was so unlike any book I had ever read previously because its main character, Holden Caulfield, was an anti-hero protagonist.  The influence of J.D. Salinger’s Holden Caulfield cannot be denied.    Author J.D. Salinger died on January 27, 2010 at the age of 91.

In the field of intellectual property law, Salinger is also remembered for two landmark copyright cases, one of which is still pending.  The first case, Salinger v. Random House, Inc., involved the right of the author of unpublished letters to keep direct quotes and close paraphrases of those letters out of an unauthorized biography.  In 1983, biographer Ian Hamilton approached Salinger about his intent to write a book about Salinger’s life.  Salinger voiced his opposition to the project, but Hamilton proceeded nonetheless, completing the book J.D. Salinger, a Writing Life in 1986.  Hamilton drew heavily from Salinger’s unpublished letters, which were held by libraries at Harvard, Princeton and the University of Texas.  In order to gain access to these letters, Hamilton signed form agreements restricting his right to publish the contents of the letters.  When Salinger reviewed the galleys of Hamilton’s book in May of 1986, he registered 79 of his letters with the U.S. Copyright Office and had his attorney instruct Hamilton to delete the quotes from Salinger’s letters.  Hamilton and his publisher, Random House, revised the galleys, but retained some quotes from the letters.  As a result, Salinger sued Random House in October 1986, seeking a preliminary injunction to prevent the publication of Hamilton’s book.

The federal district court awarded Salinger a temporary restraining order but denied him the preliminary injunction.  Salinger in turn appealed the decision.  Using the four statutory fair use factors (purpose of the use, nature of the copyrighted work, amount and substantiality of the portion used and effect on the market), the Second Circuit Court of Appeals ruled in favor of Salinger and directed the trial court to issue a preliminary injunction barring publication of the biography.

The second case, Salinger v. Colting, involves the publication of what some believe to be a sequel to Salinger’s The Catcher in the Rye.  The book in question, entitled 60 Years Later:  Coming Through the Rye, was written by Swedish author Fredrik Colting under the pseudonym “John David California.”  In June 2009, Salinger filed suit against Colting, his publishers and distributors, and in July 2009, the U.S. district court granted Salinger a preliminary injunction enjoining the Defendants from advertising, publishing or distributing Colting’s book.

Colting, his publishers and distributors appealed the ruling to the Second Circuit Court of Appeals, arguing that 60 Years Later:  Coming Through the Rye was not a sequel to Salinger’s novel, but “a critical literary commentary about Salinger’s famous work.”  Rather than a continuation of The Catcher in the Rye, they claimed that Colting’s book merely examines the relationship between Salinger and his fictional character, Holden Caulfield.  At the time of Salinger’s death, Salinger v. Colting is still pending in U.S. District Court.

In literary circles, J.D. Salinger will always be remembered for the novel The Catcher in the Rye.  But in the legal field, we can also say that Salinger zealously defended his intellectual property, both published and unpublished.

In an earlier post (Why Do Some DVD’s Only Cost a Dollar?), we discussed how certain movies made prior to the early 60’s can now be copied freely without having to pay a royalty and without running the risk of being sued for copyright infringement.

With the advent of inexpensively reproduced DVD’s, a whole new industry has emerged:  distributors of low-cost vintage films.  Because these works are in the public domain, no one distributor has exclusive rights to them.  As a result, distributors may rely on creating distinctive packaging to distinguish their DVD of a particular film from their competitors’ DVD of the same film.

If the cover of a DVD includes still photographs from a motion picture in the public domain, doesn’t that mean the cover is public domain too?  Not necessarily.  If multiple elements of a work in the public domain are compiled in a sufficiently creative manner,  the compilation of photos, but not the photos themselves, may be considered a separate copyrightable work. It was under this legal concept that DVD distributor Alpha Video recently sued The Classic Theater (one of its competitors) for copyright infringement.

Alpha Video sells vintage DVD’s, among them a series of films featuring the fictional detective Mr. Wong.  Since these films are also reproduced by other distributors (among them The Classic Theater), Alpha Video created its own unique covers, using stills from the movies combined with original artwork, to differentiate its product from that of its competitors. Even though copyright exists from the moment the work is created, Alpha Video took the precaution of registering these covers with the United States Copyright Office.

Copyright registration affords the registrant certain additional rights, such as the right to file an infringement action in court and collect statutory damages and attorney’s fees from the infringer, as well as the presumption that the registrant is the actual owner of the work.  Since the filing fee for copyright registration is relatively inexpensive, it’s a good practice to seek this additional protection. In its lawsuit, Alpha Video has alleged that The Classic Theater committed copyright infringement by using the original artwork from seven of Alpha Video’s DVD covers on its own DVD releases, thereby commercially exploiting what Alpha Video claims is rightfully theirs.

In addition, Alpha Video has demanded that The Classic Theater immediately stop infringing on its works, pay damages to Alpha Video, and allow its infringing products to be impounded. Regardless of the outcome of this suit, it’s important to remember that just because the copyright in a creative work has expired, rearranging material in the public domain or combining it with new material can sometimes create a work that has a copyright life of its own.