The Texas Department of Transportation (TxDOT), owner of the mark DON’T MESS WITH TEXAS, recently sought a restraining order against the bookstore chain Barnes & Noble, Grand Central Publishing, Hachette Book Club USA and author Christie Craig over the sale of Craig’s romantic novel entitled “Don’t Mess With Texas“.  U.S. District Judge Sam Sparks denied the order and cited First Amendment rights, the relatively small amount of revenue involved, and the diversity between good and services.  Although TXDOT owns registration in the slogan for a wide variety of printed materials, books is not one of them.

For more details about this case, read the article, “Judge: Author Can ‘Mess with Texas’ All She Wants“.

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.

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.

The Third Circuit Court of Appeals recently heard arguments regarding a district court decision in a trade secrets case between Bimbo Bakeries USA, Inc. (maker of Thomas’ English Muffins) and its former executive, Chris Botticella.  Many in the popular media dubbed this the “nooks and crannies” case, a reference to the unique texture of the muffin, to which Botticella had access.  In reality, the case involves a much broader spectrum of trade secrets, as well as the enforcement of a confidentiality agreement and the use of computer forensics to detect possible violations of that agreement.

Until January of 2010, Chris Botticella was Bimbo’s Vice President of Operations for California.  In this capacity, he was one of less than 12 people at Bimbo with access to a variety of confidential and proprietary information, such as product formulas and process parameters, which were stored on a secure website.  Among these trade secrets were the three components (formula, manufacturing, engineering design, and process parameters) that give Thomas’ English Muffins their celebrated texture.  With annual sales of about $500 million, the muffins have been a vitally important item in Bimbo’s product line.  In order to keep these trade secrets from its competitors, Bimbo compartmentalized this information so that only seven people (among them Botticella) had access to all three components.

But Botticella was also knowledgeable about other sensitive aspects of Bimbo’s business operations.  As a company vice president, he was one of only five people with access to Bimbo’s highly confidential cost-reduction strategy for the Western region.  This strategy included information about lines and plants to be closed, new processes to be implemented, new products to be launched, and formulas to be optimized.

In March of 2009, Botticella entered into a confidential agreement with Bimbo as a condition of employment.  Less than seven months later, in September of that year, he received a job offer from Interstate Brands Corporation, the predecessor to Hostess Brands, Inc., one of Bimbo’s three major competitors.  In October 2009, Botticella accepted the position with Hostess, and in December he signed an “Acknowledgement and Representation Form,” stating that Hostess was not interested in Bimbo’s trade secrets, nor would Botticella disclose such secrets to his new employer.

Botticella was to resign from Bimbo on January 15, 2010, but it was not until January 4, 2010 that he informed Bimbo of this intention, and not until about 10:00 a.m. on January 13 that he let Bimbo know that he was going to work at Hostess.  He was then told to stop all work and leave that same day.  But according to the testimony of a computer forensics expert, at 10:12 a.m. on January 15, Botticella accessed 12 company documents on his laptop computer (including highly confidential Bimbo documents), all in the course of 13 seconds.  Computer forensics also revealed that three external storage devices had been attached to the laptop, only two of which have been accounted for.  When questioned about this in deposition, Botticella testified that he attached the USB flash drives to the computer as “practice” in order to improve his computer skills for his job at Hostess.

On February 9, 2010, the court entered a preliminary injunction barring Botticella from starting his employment at Hostess and from divulging any of Bimbo’s trade secrets to anyone.  He was also ordered to return all of Bimbo’s confidential information in his possession back to his former employer.  This injunction was to remain in effect until after the trial, which was scheduled for April 12.  But by filing an appeal, Botticcella actually prolonged his unemployment until at least after the court of appeals enters its decision.

It remains to be seen how this case will be decided, but one thing is certain: it’s not just about English muffins.

Your privacy settings on Facebook or My Space may determine when a third-party can subpoena electronic communications from your Facebook or My Space page.  In the copyright infringement case, Crispin v. Christian Audigier, Inc. et. al., the defendants served subpoenas on a number of third-party entitites, to include the social networking providers Facebook and MySpace, Inc., seeking basic subscriber information and communicaitons relating to the case.

Read the opinion here.

We often wonder how private, “private” really is.  Here “private” apparently does matter.  The privacy settings in the case will determine the extent to which Facebook and My Space comments are accessible to the other party in litigation and can be obtained by subpoena.

Click here to register!

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.

We were disappointed to see Amarillo’s own Lacey Brown leave American Idol but a Top 12 finish is still an incredible accomplishment!  We know this is just the beginning for Lacey.  Her talent is going to take her very far!

There is a nice article about Lacey in the April 2010 issue of Accent West.

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.

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.