Thursday, May 31, 2012

Copyright Infringement = "Theft"

Is copyright infringement “theft”? What’s your gut response? Surprisingly, the current top dog at the Motion Picture Association of America has come out against this description of infringement as theft. Umm, let me get this straight, taking something owned by someone else without their permission is not theft? So I’m imagining a conversation that goes like this: “Hey, did you just walk out of Target without paying for that? Why that’s . . . that’s . . . .” What is that called? I’m willing to bet that even Christopher Dodd would call that theft. So what’s different in the copyright context, because Dodd is not a lone wolf in making this claim. The U.S. Supreme Court ruled in 1985 that infringement does not "easily" equate with theft. See Dowling v. United States (1985), 473 U.S. 207, 217–218). This is also the position taken by a noted IP scholar, David Llewelyn (a professor at King’s College London and Head of Intellectual Property at White & Case in its London office), who stated at the IP Law Asia Summit that infringing another's intellectual property not be referred to as theft because it does not physically deprive the “author” of his/her physical work. Now, most people would agree that copyright infringement is unlawful (I’m not talking about instances of fair use, implied or express license, public domain, or protection under the DMCA, etc.), but many have taken issue with calling it theft or piracy, believing that it’s important to be more precise in our language. I, for one, find that referring to copyright infringement as “theft” to be pretty precise. And I think the distinction regarding physical possession misses the point. Let’s start with a standard definition for “theft.” According to, theft (n.) means “1. The act or an instance of stealing; larceny.” To steal (, according to the same website, means “1. To take (the property of another) without right or permission.” Property (n.) means “1. a. Something owned; a possession.” Intellectual property (n.), just to close the loop, is defined as “an intangible asset, such as a copyright or patent.” So, just applying these definitions: a copyright is a form of intellectual property; property is something owned (a possession); taking property of another with permission is called stealing; and “stealing” is by definition theft. Under this tautology, copyright infringement equates to theft irrespective of whether the infringer obtained physical possession. Even if the infringer never obtains physical possession of the "tangible works of authorship" that fall within the scope of the Copyright Act (see 17 U.S.C. §§ 101, 102)), he/she still obtains “possession” rights granted to author under Section 106: the right to reproduce, distribute copies, publicly perform. And what about the right to profit from one’s creation? The infringer misappropriates royalties the author could have received but for the infringement. Isn’t that a physical deprivation? The fact that the infringer does not take physical possession of the work itself should not matter with respect to defining infringement as “theft.” Indeed, taking physical possession of the work would be separately actionable under California law as separate theft – or civilly, as conversion. A claim for conversion requires that a plaintiff establish: (1) the plaintiffs ownership or right to possession of certain property; (2) the defendant's conversion of the property by a wrongful act or disposition of property rights; and (3) damages. Oakdale Village Group v. Fong, 43 Cal.App.4th 539, 543-44, 50 Cal.Rptr.2d 810 (1996). And interestingly, a claim for conversion is generally immune from preemption under the Copyright Act specifically because it involves tangible property except where they seek damages for reproduction of the property — not return of tangible property itself. See Firoozye v. Earthlink Network, 153 F.Supp.2d 1115, 1130 (N.D.Cal.2001). Where the plaintiff does not seek the return of property, but damages for its use, the rights asserted in the conversion claim are the same as those protected by the Copyright Act, and as such the conversion claim is preempted. Id.; see also Marketing Information Masters, Inc. v. Board of Trustees of the California State University System, 552 F. Supp. 2d 1088 (S.D. Cal. 2008). Finally, the Copyright Act itself – albeit obliquely – lends some support to the position that infringement amounts to a “theft.” All of us learn from an early age that stealing can land you in the pokey. Law enforcement is very concerned with the prevention of theft and punishing thieves. Agreed? So I find it interesting that the Copyright Act likewise has a criminal infringement component. 17 U.S.C. Section 506 states, in relevant part, that “Any person who willfully infringes a copyright shall be punished [criminally] as provided under section 2319 of title 18, if the infringement was committed — (A) for purposes of commercial advantage or private financial gain; (B) by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000; or (C) by the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution.” While I understand that infringement does not typically amount to “theft” in the sense that the copyright owner is deprived of his/her physical work, physical deprivation is not required to meet the dictionary definition of “theft.” The fact that the copyright owner is deprived of his/her ability to receive compensation for the work, deprived of his/her right to control the distribution of the work, deprived of his/her ability to control the republishing and public performance of the work are all instances of stealing a valuable property right, and I see nothing wrong will calling that what it is: a theft. Is this the best word to convey the act of infringement? It isn’t bad, and I’ve yet to hear better. Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP, resident in Los Angeles and Orange County. Mr. Pink heads the firm’s Internet and New Media Team, and can be reached at

Wednesday, May 16, 2012

Academic Fair Use Found in Georgia State University Copyright Suit

A big ruling for copyright fair use. This one, in an academic setting, springs from events that took place at Georgia State University (GSU). In a move not uncommon at universities, GSU permitted students to share digital copies of academic texts the school "housed" in its electronic library system. Based on this, several publishers, including heavy hitters Cambridge University Press and Oxford University Press Inc. sued the school for copyright infringement. The suit alleged that the school and it's top brass (or top mortar boards as the case may be) had a policy of "digitally distributing course reading materials" in violation of the Copyright Act. The complaint asserted that "Georgia State provides its students (and until recently, the general public) the ability to view, download, and print without authorization a number and range of copyrighted works that vastly exceeds the amount and type of copying that might credibly be justified as fair use." As a reminder, 17 U.S.C. § 107 provides that the “fair use” of a copyrighted work “is not an infringement of copyright,” but making the determination as to whether “fair use” applies is a case-by-case analysis. Generally speaking, in determining whether the fair use defense applies, courts consider “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107. The complaint against GSU alleged hundreds of instances of infringement. By the time of trial that was whittled down to 74. How does this happen? What happened to the remainder of the claims? How do hundreds of claims simply disappear? Uhh, duty to investigate prior to pleading? The Rule 11 certification represents that counsel has done a prefiling examination of the facts that is reasonable under the circumstances. Zaldivar v. City of Los Angeles, 780 F.2d 823, 831 (9th Cir. 1986). “Reasonable inquiry” requires attorneys to seek credible information rather than proceed on mere suspicions. California Architectural Building Products, Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1472 (9th Cir. 1987). The test is “whether a reasonable inquiry would have revealed there was no basis in law or fact for the asserted claim.” (internal quotes omitted). Ali v. Mid-Atlantic Settlement Services, Inc., 233 F.R.D. 32, 39 (D. D.C. 2006).) In any event, U.S. District Judge Orinda D. Evans ruled that 69 of the 74 remaining claims of infringement were protected by the fair use doctrine, a decision that may signal an isoquantic shift in the treatment of claims founded on digital sharing. In a nutshell, Judge Evans said that GSU's sharing qualified for protection under the fair use doctrine's limited allowance of protected works for academic purposes. He ruled that, as to the those works, GSU had made just a small percentage of them available online and had done so without any intention of financial profit. Further, the court found that, by adopting an electronic sharing policy in 2009, GSU "tried to comply with the Copyright Act" and conceded that "The truth is that fair use principles are notoriously difficult to apply." As to the remaining five claims of infringement, the court held that GSU was not entitled to the fair use defense given that it had provided free electronic access to chapters of textbooks for which the publishers had actually established a licensing program to sell access them on a chapter-by-chapter basis. In other words, the school took a substantial amount of the work (the entire chapter of the chapter that was offered for sale), and that taking substantially effected the potential market for or value of the copyrighted work. See 17 U.S.C. § 107. So what gets me is why GSU didn't argue that it was immune from a claim for copyright infringement. The United States District Court for the Southern District of California ruled in February 2008 that the Copyright Remedy Clarification Act (“CRCA”) “is not a valid exercise of Congress’s power under Section 5 of the Fourteenth Amendment”, thereby holding that a State, employee of a State (acting within his or her official capacity) or instrumentality of a State cannot be held liable for copyright infringement. See Marketing Information Masters, Inc. v. The Board of Trustees of the California State University System, et. al. 552 F. Supp. 2d 1088 (S.D. Cal. 2008). Congress passed the CRCA, which expressly provided that “[a]ny State, instrumentality of a state… or employee of a State or instrumentality of a State… shall not be immune, under the Eleventh Amendment” to a suit for copyright infringement. 17 U.S.C. Section 511(a). However, the court in Marketing Information Masters held that the CRCA “was not passed pursuant to a valid exercise of [Congress's] Fourteenth Amendment enforcement powers,” and that “the CRCA does not constitute a valid abrogation of state sovereign immunity.” In reaching this ruling, the Court noted that the “Eleventh Amendment provides a state immunity from suit unless the state consents to be sued or Congress validly overrides the state’s immunity.” (Citing Green v. Mansour, 474 U.S. 64, 68 (1985)). To determine if Congress validly overrode a state’s immunity, the Court said that it “looks to two factors: (1) whether Congress expressed a clear intent to override the state’s immunity and (2) whether Congress acted pursuant to a congressional grant of authority.” (Citing Seminole Tribe of Florida v. Florida, 517 U.S. 44, 55 (1996)). Moreover, to determine whether an act constitutes a valid exercise of Congress’s power under Section 5 of the Fourteenth Amendment, the Court said that it must find that Congress identified “‘conduct transgressing the Fourteenth Amendment’s substantive provision, and… tailor[ed] its legislative scheme to remedying or preventing such conduct.’” (Citing City of Boerne v. Flores, 521 U.S. 507 (1997), and quoting Florida Prepaid v. College Savings Bank, 527 U.S. 627 (1999)). While neither the Supreme Court, nor the Ninth Circuit has addressed the issue of whether the CRCA is a valid abrogation of state sovereign immunity, the Supreme Court struck down as unconstitutional two similar "remedy clarification" acts involving intellectual property rights. See Seminole Tribe, supra (invalidating the Patent and Plant Remedy Clarification Act) and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Fund, 527 U.S. 666 (1999) (invalidating the Trademark Clarification Act). The bottom line is that, just as the Marketing Court held that the CRCA did not survive constitutional scrutiny under the enforcement clause of the Fourteenth Amendment, so too might the court in Cambridge University Press et al. v. Mark P. Becker et al. (case number 1:08-cv-01425) have reached this decision had the defendants asked the U.S. District Court for the Northern District of Georgia to similarly find that a state university is entitled to immunity in copyright infringement claims brought against a State or State-actor when the latter is acting in his or her official capacity. Jonathan Pink heads the Internet and New Media Team at Bryan Cave, LLP. His practice focuses on intellectual property litigation including copyright, trademark and right of publicity issues. He is resident in Los Angeles and Irvine and can be reached at

Wednesday, May 9, 2012

It Takes a Village People to Reclaim a Song

The first shot is a direct hit. And possibly to the heart. Victor Willis, one of the original Village People, prevailed this week in copyright case brought under Section 203 of the Copyright Act. (Scorpio Music SA et al. v. Willis, case number 3:11-cv-01557.) That’s the section that – where certain stringent conditions are met – the grantor of a copyright may reclaim ownership of it “at any time during a period of five years beginning at the end of thirty-five years from the date of execution of the grant; or, if the grant covers the right of publication of the work, the period begins at the end of thirty-five years from the date of publication of the work under the grant or at the end of forty years from the date of execution of the grant, whichever term ends earlier.” 17 U.S.C. Section 203(a)(3). Distilled to its essence, Section 203 allows “authors” (and in this case a musician) – after jumping through rigorous hoops that are easy to miss – to regain control over their work beginning in 2013 (as measured by 35 years from the date this section of the 1976 Copyright Act went into effect). While this case was brought against a couple of music publishers, this is precisely the result that many record labels have feared: that a musician could recover the copyright interest in his / her / their hit songs. In this instance, that means the Willis’ rights to "YMCA,” "In the Navy" and 31 other songs by the Village People go back to him. Yikes. Not because of what this means to the labels, but what it means to me! Now these songs will be in my head all day! Ugggg. I blame U.S. District Judge Barry T. Moskowitz for this. Like Glenn Close in the famous bathtub scene – these bloody songs just won’t die! And of course, an appeal is certain. So don’t pop the champagne just yet, Mr. Willis. For its part, the opposing parties argued that because Willis was only one of the authors on the works could not regain his copyright interest without the involvement of his former band mates. Judge Moskowitz disagreed (“. . .in the Navy!”). He said Section 203 was drafted with the intent of letting each author regain control of his/her share of the rights (“. . . down at the Y-M-C-A”), and that in this instance, Willis had granted his copyright interest separately from the other band members, thus allowing him to “unilaterally terminate his grants" even if they haven’t. This fight is a long way from over. Both with respect to Willis and, more importantly, the bigger fight between the labels and artists seeking to push the “35 year rule” that is due to arrive any minute now. Labels have pretty well indicated that they will take the position that the works were “works for hire” under Section 201(b) of the Act. Uhhh . . . (“. . .in the Navy!”). Really? You know, Prometheus would have had it easier if the gods had told him to push that boulder down hill. . . . At the YMCA.. This was the publisher’s initial response too, but it dropped it when Willis produced evidence that the songs had not been registered as such back in days of disco. So, as we wait for the next (white) shoe to drop, we’ll just have to rip off our shirts, put on a leather vest, some chains and sing . . . In the Navy!! Jonathan Pink is an intellectual property attorney in Los Angeles and Orange County California. He can be reached at

Friday, May 4, 2012

Piece of Pie

Here’s an interesting situation: song writer creates song based on a musical transcription of pi, and is then sued by another musician who had previously done the same thing. As you will recall, pi begins with 3.14159, but then goes on forever (interestingly, with no discernable pattern). As this story goes, one artist, Michael Blake, released his song through a YouTube video in 2011, only to be met later that same day by the claim from another artist, jazz musician Lars Erickson, that Blake’s work infringed Erickson’s own pi symphony. Copyright infringement, over pi? Really? Folks, just to clear up any confusion, pi is not copyrightable. To begin with, it is not itself original to either Blake or Erickson, and thus fails the initial test of copyrightability. See 17 U.S.C. Section 102 (“Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression.”); Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 345 (1991) (“Original, as the term is use din copyright, means only that the work was independently created by the author as opposed to copied from other works, and that it possesses at least some minimal degree of creativity.”) It is a concept that mathematicians such as Archimedes, Leonhard Euler, Carl Friedrich Gauss, Isaac Newton, Ramanujan, and John von Neumann have been grappling with for thousands of years. Further, it is simply a fact, commonly defined as the ratio of a circle's circumference C to its diameter d. And copyright protection extends only to an author’s expression of facts, not to the facts themselves. Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556 (1985) (“No author may copyright . . . the facts he narrates.”). From a policy standpoint, scientific facts has long been viewed as building blocks that are available to subsequent creators/authors/scientists. Simply put, no one owns pi. But what about the music that is derived from a transcription of pi? Certainly that is fixed in a tangible medium, but does it possess at least some minimal degree of creativity? Without more, probably not. In this case, while Erickson obtained a registration in his work, that registration could only cover the protectable elements of that work, not material that inherently nonprotectable, such as pi. See Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904, 913 (9th Cir. 2010) (“At the initial ‘extrinsic’ stage, we examine the similarities between the copyrighted and challenged works and then determine whether the similar elements are protectable or unprotectable.”). This step must be performed because “a finding of substantial similarity between two works can't be based on similarities in unprotectable elements.” Id. at 917; Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 209 (9th Cir. 1988) (clear error when district court determined substantial similarity existed based on unprotected elements). It has often been said that music typically contains a “large array of elements, some combination of which is protectable by copyright.” Swirsky v. Carey, 376 F.3d 841, 849 (9th Cir. 2004). Therefore, when analyzing the similarity of musical compositions, the court must consider a variety of compositional elements including melody, harmony, rhythm, timbre, structure, instrumentation, meter, tempo, and lyrics. Id. However, any finding of infringement may not be based on constituent elements/material that unoriginal, and thus do not merit protection. See, Shaw v. Lindheim, 919 F.2d 1353, 1363 (1990) (rejecting plaintiff’s “26 strikingly similar events” purportedly shared by his and the challenged work in part because defendants rejoined with a “list of similarities between ‘The Wizard of Oz’ and ‘Star Wars’ that [was] virtually as compelling as [plaintiff’s].”). This is apparently the result reached by the court in this case. While Erickson and Blake both assigned musical notes to correspond with the 3.14, etc. digits of pi, the court found that the works differed sufficiently in tempo, musical phrasing, and harmonies. As to the fact that both works were founded on pi, the court ruled that similarity was not protectable, and thus that the plaintiff failed to demonstrate a substantial similarity of protectable expression between the works. This case should serve as a reminder that not every similarity between two works constitutes an actionable claim for infringement, or justifies the cost of litigation. Jonathan Pink is an intellectual property attorney specializing in copyright and trademark issues. He is resident in the Los Angeles and Orange County, and heads the Internet and New Media team at Bryan Cave, LLP. He can be reached at

Tuesday, March 27, 2012

Playing Chicken with Trademark Infringement

I’ve got a new hero.

He’s this guy in Vermont named Bo Muller-Moore.

Apparently he’s a folk artist, and is known for the tee shirts he makes that proclaim “Eat More Kale.” In fact, according to what I’ve read, he’s known as the “Eat More Kale” guy. But really, how much kale can you eat?

Well, Mr. Muller-Moore (aka Mr. EMK) received a letter from the fast food chain, Chick-Fil-A. Now while it’s always nice to receive mail (unless it’s from the IRS), the chain was not offering him any special discounts. Instead, they were threatening to sue him for infringing their registered trademark, “Eat Mor Chikin’.”

Quick trademark primer: The hallmark to any trademark infringement claim is a likelihood of consumer confusion. Specifically, a likelihood of confusion exists when consumers are likely to assume that a product or service is associated with a source other than its actual source because of similarities between the marks or the parties’ marketing techniques. See Metro Publishing Ltd. v. San Jose Mercury News, 987 F.2d 637, 639 (9th Cir. 1993). In fact, all trademark cases, including parodies, are subject to the likelihood of confusion test. See Dr. Seuss Enter. L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997) (affirming preliminary injunction prohibiting publication and distribution of Dr. Juice’s The Cat Not In The Hat, an account of the O.J. Simpson murder trial composed in the styling of Dr. Seuss’ Cat In The Hat); but see Mattel, Inc. v. MCA Records Inc., 296 F.3d 894 (9th Cir. 2002).

In Mattel, a case in which the toy company sued the record company based on its release of a single entitled “Barbie Girl,” the Ninth Circuit held that there was no trademark infringement because the song was artistically relevant not explicitly misleading as to its source. (You’ll remember the lyrics: “I’m a Barbie girl, in a Barbie world, Life in plastic, it's fantastic/ You can brush my hair, undress me everywhere . . .”) 296 F.3d at 902. The Ninth Circuit reaffirmed that line of reasoning in another dispute involving the Barbie trademark, Mattel Inc. v. Walking Mountain Prod., 353 F.3d 792 (9th Cir. 2003), holding that plaintiff’s photographs entitled “Food Chain Barbie” and depicting Barbie in various absurd positions did not infringe on the Barbie trademark because the title was artistically relevant and not explicitly misleading.

Which brings us back to Bo and his shirts. Now a show of hands, please, who believes that these tee-shirts reading “Eat More Kale” are likely to cause consumer confusion with respect to a fast food chair who’s logo is “Eat Mor Chikin’”?

I suppose, in fairness, I should mention the Sleekcraft factors, as these might influence your vote. In AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), the Ninth Circuit set forth the following eight-factor, fact-based test that is now used by most courts to evaluate a likelihood of confusion: (1) the strength of the plaintiff’s mark, (2) the similarity of the marks, (3) the proximity or relatedness of the goods or services, (4) the intent of the defendant in selecting the mark, (5) evidence of actual confusion, (6) the marketing channels used, (7) the likelihood of expansion of product lines, and (8) the degree of care consumers are likely to exercise. Id. at , 348-49.

Ok, now anyone want to change their vote?

It is often said that the sixth factor of the Sleekcraft test, the examination of marketing channels used, which is particularly significant. So here we have national chicken chain (which apparently does not have many outlets in Vermont) and freelance artist located exclusively in Vermont. Hmmm. Well I, for one, am not confused. But maybe that’s just me.

In fact, even if he intended to reference the Chick-folks, I think there’s a good argument that his shirts are artistically relevant and not explicitly misleading. And even if the Chick-chain is entitled to protection in “Eat Mor Chikin’,” just how far does and should this mark really go? How about just “Eat More”? What if I’m obese and believe everyone else should be too, so I start making shirts that say “Eat More.” Does this infringe? Or maybe I’m worried about people who don’t eat enough, so I make a shirt that just says “Eat,” would this infringe? How about a shirt that says “Chicken” and nothing else? What about another frequently consumed animal, e.g. “Fish”? I’m just not sure how far they think this mark extends.

Speaking of overreaching, I need to stretch. Ah, that feels better.

Anyway, so why is Bo my hero? No, it’s not because I love kale (although it is healthy, and I do enjoy it from time to time, and yes I probably should eat more). And no, it’s not because I want to see people needle the big guy. It’s because he’s come up with a very creative solution. Brilliant, in fact.

Rather than shut down and turn over his website as the chicken people want, Bo is making a documentary about his fight, and he is raising the funds to make the film on Kickstarter. Now that is great! Of course, as he acknowledges on his blog, he may not win, but then again, he may (see show of hands, above). And if nothing else, he may end up with a very interesting film. And I’m all in favor of that.

So here’s to you, Bo. You’ve got a fan in me.

Jonathan Pink is an intellectual property attorney in Los Angeles and Orange County. He chairs the Internet and New Media team at Bryan Cave, LLP and can be reached at

Monday, March 26, 2012

Things Are Getting Pinteresting

It seems enough people pinned about Pinterest’s copyright problem that Pinterest decided to changes its Terms of Service and, more importantly, ditch it anti-self-promotion policy.

Pinterest is a UGC site that allows members to “pin” images they’ve found online and share those images with other Pinterest users (including visitors to the site; you don’t have to be a member to see what is posted there). While that may seem a terrific business plan on its face, taking images without permission will likely violate the copyright interest in that image, potentially subjecting Pinterest’s user to a claim of infringement.

Given the site’s inherent copyright problem, a user could effectively avoid violating U.S. copyright laws only by: (1) creating the posted image themselves; (2) obtaining permission to republish from the copyright owner; (3) taking an image in the public domain; or (4) sufficiently transforming the image so that a fair use defense might apply.

Each of these has (or had) its own problem. Let’s start with the last and work our way up.

Not much has been made of the possibility that a fair use defense could apply to Pinterest users’ pinning of copyrighted images. It bears some discussion.

The Copyright Act is not currently equipped to address the complexity of new media. It is supposed to strike a balance between the artist’s right to control her/his work and the public’s need for access to creative works, a balance that is typically expressed as the “fair use” doctrine. See 17 U.S.C. Section 107; Red Lion Broad. V. FCC, 395 U.S. 367, 390 (1969) (recognizing “the right of the public to receive suitable access to social, political, esthetic, moral, and other ideas”); see also Stewart v. Abend, 495 U.S. 207, 228 (1990).

A strong argument can be made that posting of images on Pinterest, especially where accompanied by commentary and insight, constitutes the type of social, political, esthetic exchange of ideas that the fair use doctrine is designed to encourage. Even if this argument requires a bit of legal-shoe-horning, I think it is fair to say that it is this type of flexibility that doctrine must be capable of if it is to fulfill its purpose as a First Amendment safeguard. See Eldred v. Ashcroft, 537 U.S. 186, 219 (2003). There is no doubt that commentary, criticism and parody are not the only types of expression that provide social benefit and deliver new meaning to a work. See Perfect 10, Inc. v., Inc., 508 F.3d 1146, 1165 (9th Cir. 2007). If so, and if the fair use doctrine is to remains flexible enough to co-exist with contemporary technology, then the use of images in social media should slip comfortably into the fair use “shoe.”

Of course, fair use is a defense. This means that it only applies if and when a suit has been filed. If the goal is to avoid triggering an claim for copyright infringement, then a possible defense may not provide the comfort most social media users are looking for.

That brings us to taking an image in that is in the public domain. This is an easy way to avoid triggering an infringement claim because there work is free for the taking. The only problem is that determining whether an image is in the public domain takes some sleuthing. Generally speaking, images created prior to 1923 are safe. Republish one of those and no one can cry foul. Also safe are images published without a copyright notice between 1923 and 1977. How do you know if they were published without a copyright notice? Not so easy: you have to search the archives to figure this out. Also safe, albeit equally difficult to determine, are those published from 1978 to March 1989 without a notice, and without a subsequent registration. So, while these images may all be “safe” from an infringement perspective, determining whether an image was published with or without an image may be difficult, and those created before 1923 may be too old to interest many social media posters.

So, you’re looking for an easier, fool-proof solution? Ok, one effective solution is to obtain permission to republish from the copyright owner of the desired image. First you have to determine the identity of the owner, then you have to contact that person, and finally you have to obtain their consent. Hey, I said “easier,” not simple. This is because even if you manage to find the copyright owner, she/he may be unwilling to allow you to use their work. This is especially so with a site like Pinterest which states in its terms of use that pinning any image carries with it an implied license permitting any other pinner to repin. Thus, a copyright owner who gives permission to you is, in effect, giving permission to every Pinterest member in the universe to republish as well. Some artists may balk at such broad of a license even if – at first blush -- they were inclined to permit republication by you.

Finally, there is the simple and elegant solution of creating the material that one pins. Setting aside your inability to take a decent picture, Pinterest’s had a prior policy that seemed to discourage creating images that promoted one’s own work. Under the admonition “Avoid Self Promotion,” Pin Etiquette had been that “If there is a photo or project you’re proud of, pin away! However, try not to use Pinterest purely as a tool for self-promotion.” I’m frankly not sure why Pinterest had this policy. I suppose the idea was to legitimately share what interests you, rather than to line your own pockets with your own praise for your own work. So Martha Stewart couldn’t have a board for the myriad of stuff she’s trying to sell. But why not? It seems every third pin board contains an image linking to Martha Stewart, so isn’t that the same as her pinning the images herself?

In any event, Pinterest’s newly revised Pin Etiquette does not include this dictate. Instead, it includes the benign “Pinterest is an expression of who you are. We think being authentic to who you are is more important than getting lots of followers. Being authentic will make Pinterest a better place long-term.” Ok. Whatever that means.

I suppose what this means is that they’ve opened to door (a little wider) to members creating and posting their own material. Will this eliminate the copyright problem inherent in the Pinterest business model? No. The risk that UGC will infringe someone else’s copyright is still very high. In fact, I doubt Pinterest would continue to exist without it. But this is a good move in the right direction. In fact, it’s evolutionary: a development that even might insure Pinterest remains viable long enough to turn a profit.

Feel free to pin – or stick pins in – anything I’ve said.

Jonathan Pink is an intellectual property attorney located in Los Angeles and Orange County. He leads the Internet and New Media Team at Bryan Cave, LLP, and can be reached at

Monday, March 19, 2012

Follow-Up on "Bon Victoire" Post

Every so often, someone reads my blog. Here's a response I received from one of the attorneys in the Bon Jovi case that I reported on about a month ago. (The email is reprinted in its entirety, with permission from the author.)

Mr. Pink – I tried to post a comment on your fine blog, but apparently went over the word limit, so rather than cut it down, I’m only e-mailing it to you, at least for now.

(Attempted) post is below.

Warm regards,


Mr. Pink:

I represent Mr. Steele in the cases discussed in this post. Snarky comments aside (in reality, Mr. Bongiovi has a long and well-documented history of “steal[ing]” other people’s songs), you have your facts – and the law of the case – flat wrong.

I know it’s a lot to ask to read the file, briefs, or anything other than the First Circuit’s three or four sentence-long “judgments” prior to posting, but your failure to do so here renders your analysis meaningless (other than your self-explanatory quotes from non-First Circuit decisions).

First, as to proving defendant copied the work, defendants in the district court actually admitted access to Steele’s work no later than October 2004, over four years prior to Steele filing suit.

Second, the district court – in a break from First Circuit precedent and practice – issued an order, at defendants’ urging, prohibiting any discovery as to probative similarity, i.e., “actual copying.” The district court instead limited the scope of discovery – and the dispositive issue at summary judgment – to expert analysis of “substantial similarity.” An aside: Mr. Steele faced Skadden pro se during the entirety of the initial district court proceedings.

Nonetheless, Mr. Steele alleged and argued direct copying in the form of digital reproduction in the district court. As several of the defendants know from their own infringement prosecutions, where digital reproduction – for example, downloading a song from a file-sharing site like Napster – can be proven, it is the beginning and end of the infringement analysis.

Mr. Steele argued that defendants duplicated his song and used it as a temp track in their video editing suites, specifically those of TBS Studios and/or MLB Advanced Media, L.P. (which happens to own and run Bon Jovi’s website, among many other non-baseball digital properties). Defendants – in three and a half years of litigation – have never denied using Mr. Steele’s song as a temp track, likely because the evidence of temp-tracking here is impossible to refute (read Mr. Steele’s complaint and/or briefs on appeal for the evidence on this).

Funny thing: MLB Advanced Media, L.P. – the target defendant, being the claimed copyright owner to the infringing work - was properly served but willfully defaulted in Steele’s first (pro se) case. Another funny thing: An unserved entity, Major League Baseball Properties, Inc., voluntarily appeared, claiming – falsely (this is undisputed) – to be MLB Advanced Media, L.P. Unsurprisingly, the pro se Steele didn’t catch this. Nor did he catch that defendants filed a false version of the infringing work in the district court, from which MLB Advanced Media, L.P.’s copyright notice had been deleted (also undisputed).

But I digress. It is, however, worth noting that these cases long ago stopped being about infringement – again, never denied or disputed – and instead have revealed Skadden’s multi-year, multi-jurisdiction, and jaw-droppingly brazen fraud on the court.

Back to infringement. The district court’s strange order precluding discovery – and adjudication – of access and copying put Mr. Steele in the difficult situation of trying to prove defendants’ digital duplication of his song for use as an audiovisual temp track by showing that defendants’ audiovisual work was substantially similar to Mr. Steele’s song. As you may know, there are no published decisions on temp-tracking, though it is universally acknowledged – where the temp track is used without the owner’s permission – to constitute infringement.

So, while your citations and quotations are no doubt accurate, you leave out that the district court failed to follow those decisions (or, more accurately, similar decisions in the First Circuit). Skadden successfully pushed for this truncated analysis knowing that discovery of digital files from defendants’ video editing suites would quickly confirm infringing duplication. On the other hand, Steele would face an uphill battle in showing substantial similarity between his song and defendants’ audiovisual.

The district court’s decision leaves no doubt that Skadden succeeded: the district court’s attempted song-audiovisual substantial similarity analysis is confusing and, where it addresses synchronization rights, not only legally incorrect, but nonsensical. The much simpler route would have been to follow the well-established two-step analysis of probative similarity followed by substantial similarity. Here – as in illegal downloading cases – the first step would likely have been dispositive of actual copying (duplication) and, therefore, of infringement. Such “direct evidence” of copying is, I submit, no longer “rare,” as described by numerous decisions, including in the First Circuit, at least in cases of digital infringement.

Temp-tracking is a secretive process because it often involves infringement. Accordingly, evidence of probative similarity (direct evidence of copying) in such cases would not only provide conclusive evidence of infringement, but possibly the only evidence. Mr. Steele was instead forced to prove digital duplication through the unnecessarily circuitous route of expert testimony as to substantial similarity between his song and defendants’ audiovisual.

The First Circuit’s “own independent review” finding that no reasonable juror could find probative similarity was, therefore, necessarily limited, if not impossible because such evidence was specifically forbidden from the district court proceedings. Nonetheless, the record was replete with evidence of substantial similarity – despite the district court’s limited discovery order – including, among other things, that both works were identical in length (to the tenth-second); that 96% of defendants’ audiovisual’s frame “cuts” were beat- or tempo- matched to Mr. Steele’s song (irrefutable – and, in any event, undisputed - evidence of temp-tracking); and that over a dozen affiants had sworn to the works’ similarities and/or being confused upon viewing the audiovisual for the first time, believing it to be a derivative of Steele’s song.

There is much more to this story, if you care to take the time to read the papers. If you do, I think you would agree that “knowledgeable counsel” would have, as I have, continued to “press on.”

You suspect correctly: It is not over yet.

Christopher A.D. Hunt

The Hunt Law Firm LLC

10 Heron Lane

Hopedale, MA 01747

(508) 966-7300

Thursday, March 15, 2012


Sort of surprised at all the (P)interest in Pinterest, or at least in the copyright issues surrounding it.

I was interviewed by the Wall Street Journal about the use of non-user generated content posted as UGC on the site. That is, taking someone else’s images and pinning them to the Pinterest user’s on pinboard.

The first thing I told the Journal is that there's a decent fair use argument here. There are many uses beyond straight commentary that deliver new meaning while still providing important social benefits (comparable to commentary or criticism) that the fair use doctrine aims to protect. The fair use doctrine has to remain flexible enough to recognize the complications of contemporary technology if it's to remain a true First Amendment safeguard. Maybe this requires amending the Copyright Act. Uh, certainly, this involves amending the Copyright Act.

Of course technology evolves so quickly that striving to have the Act keep up with it is a little like using a bicycle to chase a speeding Viper. I don’t care how good a cyclist you are, you’ll never catch up. (In homage to Roger Corman: Eat My Dust.)

The Wall Street Journal reporter took all that down, then called back and said: Just give me the dos and don'ts. Here’s a link to the article:

Those comments, by-the-by, led to a radio interview on the same topic on the Victoria Taft Show. A link to that is right here: .

Between those two pieces, I’ve said everything I have to about this issue. A far more interesting issue (or two), was noted by the esteemed scholar, Eric Goldman (who everyone should read if they don’t already).

Eric opined in a Facebook discussion yesterday that the two really interesting points about Pinterest are: “(1) it's a site that surely would never grow to maturity in a SOPA world as opposed to a DMCA 512(c) world because the copyright concerns would have taken it out without any 512(c)(3) takedown notices being filed, and (2) it came out of nowhere to become a major threat to Facebook, reminding us that the next wave of innovation is nowhere on our radar screen today, and locking in the existing competitive environment would be a huge mistake.”

Now that’s thinking! Those are by far the most interesting points I’ve heard about Pinterest. So pin that.

Jonathan Pink is an intellectual property attorney resident in the Los Angeles and Orange County offices of Bryan Cave, LLP. He can be reached at

Wednesday, March 7, 2012

Louis Vuitton Threatens Law School? This Little One's Not Worth the Trouble

You’ve got to admire Louis Vuitton. They aggressively pursue alleged infringers of their trademarks.

There’s the recent case of Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011) in which the Ninth Circuit held that a web-hosting company was liable for contributory copyright and trademark infringement when it failed to take steps to stop alleged infringement committed by Chinese websites which had used its servers.

There was Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, in which the House of Louis sued a company that sold a parody pet product called Chewy Vuitton: a chew toy that resembled a Louis Vuitton handbag. (The Fourth Circuit ruled that the toy, which included a number of dissimilarities to the real bag, was a parody and thus did not infringe Louis Vuitton’s trademark.)

And the suit against Warner Brothers for its use of a counterfeit LV bag in “The Hangover Part II” (Zach Galifianakis warns his cohort not to sit on his Louis Vuitton bag, “Careful, that is a Louis Vuitton.”)

Now, LV has set its sights on the University of Pennsylvania Law School.

Penn Law included a version of the LV logo/design on a student flyer advertising a conference on intellectual property infringement in the fashion industry.

Specifically, the flyer showed those flowery, circley and diamondy shaped images that LV is known for. The flyer intermixed those images with some stylized ones to make a point about the discussion. They included circle-cs (for copyright) and TMs (for trademark). Get it?

Louis Vuitton's director of civil enforcement for North America did, and he didn’t like it. He wrote to the law school's dean, saying Louis Vuitton had “created the Toile Monogram pattern” (that’s what those clover and star things are called) “in the 1890’s to protect the Louis Vuitton brand from unlawful imitators.”

He was "dismayed" that the school’s Intellectual Property Group had "misappropriated and modified the LV Trademarks and Toile Monogram as the background for its invitation to [its] . . . Annual Symposium on ‘IP Issues in Fashion Law’", calling such conduct “egregious” and predicting that it would dilute the LV Trademarks and could lead others to think that that it’s ok.

The coffee machine must work overtime at Louis Vuitton. They may want to consider laying off the caffeine.

The letter from LV’s counsel goes on to chastise the law school like a parent ripping into a kid for running across the street without looking first: “I would have thought the Penn Intellectual Property Group, and its faculty advisors, would understand the basics of intellectual property law and know better than to infringe and dilute the famous trademarks of fashion brands, including the LV Trademarks, for a symposium on fashion law."

In my house we would have taken away the school’s treats for the day. I’m wondering if LV considered rejected this as being too harsh.

Perhaps I’m naively optimistic, but I just don’t think most people are going to confuse the law school’s use of the LV marks with LV’s participation in, sponsorship or support of the school’s program. After all, all the participants were listed on the flyer, and LV wasn’t one of them.

The University of Pennsylvania's associate general counsel wrote back to LV. In his letter, he noted that the Lanham Act "expressly protects a noncommercial use of a mark and a parody from any claim for dilution" and that, in order to infringe LV’s marks, the school would have had to have used the marks in interstate commerce in a manner likely to cause confusion between "Louis Vuitton's luxury apparel goods and [the student group's] educational conference among the relevant audience."

He says he’s not going to tell the Intellectual Property Group to discontinue its use of the image, and invites LV’s counsel to attend the symposium.


I suppose LV’s counsel has reason to be concerned about fair use. It’s a good defense in some instances, such as when a mark is used in a descriptive sense. See e.g. Radio Channel Networks, Inc. v. Broadcast. Com, Inc. 1999 WL 124455 (S.D.N.Y. 1999), aff’d w/out opinion, 201 F.3d 432 (2d Cir. 1999) (use of term “radio channel” to label one of several website groupings of streaming programming held to be descriptive); see also Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (defendant’s use of the plaintiff’s mark to describe the plaintiff’s product is acceptable); Playboy Ent., Inc. v. Welles, 279 F. 3d 796 (9th Cir. 2002) (use of plaintiff’s mark to identify defendant was not infringing).

Still, that doesn’t really fit this fact pattern.

Rather, this is closer to incidental use which is so de minimis that no infringement can be found, or better yet, how about the First Amendment? A trademark may develop into a cultural icon that becomes a referent for purposes of social commentary. See e.g. Mattel, Inc. v. MCA Records, Inc., 202 WL 1628504 at *2 (9th Cir. 2002) (“Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with such expressive value, the trademark becomes a word in our language and assumes a role outside the bounds of trademark law.”)

This is similar to the parody defense that school’s counsel mentioned. See Anheuser-Busch, Inc. v. Balducci Publications, 28 F. 3d 769, 773 (8th Cir. 1994) (use of a trademark to comment on or criticize the trademark, its owner, or the products and services marketed with the trademark may constitute a defense to an action for trademark infringement).

But the one I like best of all, is that there simply is no likelihood of confusion by the likely viewers (law students, IP lawyers, etc.) as to the source, sponsorship or affiliation with respect to the plaintiff’s mark and the defendant’s goods or services. See 15 U.S.C. Section 1114; Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 205 (2d cir. 1979) (“The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.”).

Is the use of those marks on a law school flyer for a Symposium on “IP Issues in Fashion Law" really going to dilute the LV trademarks?

To quote from that great bar scene in Star Wars, Episode IV (after Ponda Baba gives Luke a rough shove and starts yelling at him in an alien language Luke doesn't understand):

Dr. Evazan (grabbing Luke) I don't like you either. You just watch yourself. We're wanted men. I have the death sentence on twelve systems.
Luke: I'll be careful.
Dr. Evazan: You'll be dead!
Obi-Wan: (intervening) This little one's not worth the effort. Come, let me get you something.
(Dr. Evazan shoves Luke across the room and pulls out a blaster, at which point Obi-Wan ignites his light saber and severs Ponda Baba's arm.)

This little one’s not worth the effort. LV should show up for the symposium and speak its mind. Beyond that, and knocking off the coffee, they should think twice before making an issue out of something like this . . . before they lose an arm and have no place to hang their bag.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He is resident in the firm’s Los Angeles and Orange County (Irvine) offices. He can be reached at or 949-223-7173.

Tuesday, February 28, 2012

Inadequate Pre-Filing Investigation of Copyright Claims May Be Costly

All too frequently, I encounter plaintiffs whose claims never should have been filed, would not have been filed, if they or their counsel had conducted an adequate pre-filing investigation of the merits of their claim.

Even worse, and particularly untenable, are those who continue to maintain their claim once the material defect that an adequate pre-filing investigation would have revealed is brought to their attention.

Many times in a copyright claim, the only requirement to conclusively decide a case is to compare the works at issue side by side, perhaps with the assistance of expert. In many instances, it would not take an expert more than a minute to determine that the works at issue are different, distinct and non-duplicative.

Why does this matter? Why should plaintiffs and their counsel always make certain to conducted an adequate pre-filing investigation, and not merely shoot-from-the-hip and leave questions for later? Because there’s real money at stake for both sides.

When determining if an award of attorneys fees should be granted pursuant to 17 U.S.C. Section 505, bad faith or frivolousness on the part of the plaintiff can be an influential consideration. Fantasy, Inc. v. Fogerty, 94 F.3d 553, 558 (9th Cir. 1996); see also Lumiere (Rights) Limited v. Baker & Taylor, Inc., 116 F.3d 484 (9th Cir. 1997) (appellants’ copyright claims were, if not frivolous, at least factually unsupported, and an award of fees may deter other such suits).

Likewise, the obligation to pay the defendants’ fees may not rest solely on the plaintiff (who may believe him/herself protected by the fact that they are “judgment proof”). The financial burden may fall upon both the counsel and the client. Under 28 U.S.C. § 1927, “an attorney of record may be personally required to pay costs, expenses, and attorneys’ fees that are caused by counsel’s unreasonable and vexatious conduct.” Baker v. Urban Outfitters, 431 F. Supp. 2d 351, 362 (S.D.N.Y. 2006). The statute provides:

Any attorney or other person admitted to conduct cases in any court of the United States or any Territory thereof who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.
28 U.S.C. § 1927.

Notably, courts in copyright cases can—and have—awarded prevailing defendants their attorneys’ fees under 28 U.S.C. § 1927 numerous times. See, e.g., Baker v. Urban Outfitters, Inc., 431 F. Supp. 2d 351, 363-67 (S.D.N.Y. 2006) (granting defendant’s motion for attorneys’ fees under 28 U.S.C. § 1927 against plaintiff’s attorneys for unreasonably promoting expensive and time consuming litigation, including: (1) seeking statutory damages that were precluded by the plain language of the Copyright Act; (2) inclusion of a tortious misappropriation of goodwill claim, though clearly preempted by the Copyright Act; (3) seeking actual damages that were “too extravagant to be maintained”; (4) documentary evidence of bad faith (e.g., attorney correspondence seeking payment from “deep pocketed” defendants); (5) withholding evidence in discovery; and (6) filing baseless motions); Tillman v. New Line Cinema, 375 Fed. Appx. 664, 667 (7th Cir. 2010) (affirming award of attorneys’ fees after defense summary judgment and sanctions against plaintiff’s attorney’s under 28 U.S.C. § 1927 for unreasonably multiplying the proceedings. According to the court, not only did the plaintiff take inadequate steps to investigate the supposed inconsistencies underlying his conspiracy theory, but he made no effort to identify any particular expression in the allegedly infringing work that is substantially similar to copyright-protected expression in plaintiff’s work).

Further, any continuance of an action after the disclosure of a material defect that a pre-filing investigation should have revealed may also result in the defendant bringing a motion pursuant to FRCP Rule 11.

As you know, Rule 11 requires an attorney to certify every filing, and by doing so creates an affirmative duty of investigation both as to law and as to fact to deter frivolous actions and meritless claims. Fed. R. Civ. P. 11; see Business Guides, Inc. v. Chromatic Communications Enterprises, Inc., 498 U.S. 533, 550 (1991). By signing, an attorney certifies that he/she has done a reasonable inquiry, and to the best of his/her knowledge:
“(2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law; [and]
(3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery.”
Fed. R. Civ. P. 11 (b)(2)-(3).

The Rule 11 certification represents that counsel has done a prefiling examination of the facts that is reasonable under the circumstances. Zaldivar v. City of Los Angeles, 780 F.2d 823, 831 (9th Cir. 1986). “Reasonable inquiry” requires attorneys to seek credible information rather than proceed on mere suspicions. California Architectural Building Products, Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1472 (9th Cir. 1987). The test is “whether a reasonable inquiry would have revealed there was no basis in law or fact for the asserted claim.” (internal quotes omitted). Ali v. Mid-Atlantic Settlement Services, Inc., 233 F.R.D. 32, 39 (D. D.C. 2006).

Further, counsel cannot blindly rely on their clients representations. Lloyd v. Schlag, 884 F.2d 409, 413 (9th Cir. 1989). The reasonableness standard is objective, and if the pleading is legally unreasonable or without factual foundation, sanctions are warranted. Zaldivar v. City of Los Angeles, 780 F.2d 823, 831 (9th Cir. 1986). Reasonableness is measured at the time paper is filed, but if the same position is advocated again in the litigation, the reasonableness is measured at the time of later affirmation. Fed. R. Civ. P. 11 (b); see e.g., Battles v. City of Ft. Meyers, 127 F.2d 1298, 1300 (11th Cir. 1997). Postfiling developments may also be relevant for determining the reasonableness of the prefiling inquiry. For example it may show that the plaintiff’s counsel should have known from the outset that there was no evidentiary basis for the complaint. See Jones v. International Riding Helmets, Ltd., 49 F.3d 692, 695 (11th Cir. 1995). If after a complaint is filed, discovery demonstrates that a fraud has been perpetrated and the claim is unfounded, failure to withdraw the frivolous pleading or conduct a further reasonable inquiry is sanctionable. See e.g., Childs v. State Farm Mut. Auto. Ins. Co., 29 F. 3d 1018, 1026 (5th Cir. 1994).

Thus, if a reasonable inquiry by the attorney and his/her client would have revealed, at a minimum, that the works at issue are entirely different from one another, and thus, the allegations of infringement are unsupported by existing law and fact (as substantially similarity of the works is an essential element), the plaintiff’s counsel faces serious risk of sanctions under Rule 11. See e.g., Llyod, supra, 884 F.2d at 412 (“We hold that a reasonable attorney would have discovered that a copyright infringement suit cannot be brought unless and until the copyright transfer has been properly recorded, and ascertained that the recordation has been accomplished.”)

Based on this, a plaintiff’s counsel who finds him or herself in this position, should negotiate a fast exit to such an action. Pressing forward with such lawsuits hurts the parties, the judicial system, and the counsel who doggedly pursues them.

Jonathan Pink is an intellectual property attorney specializing in copyright and trademark matters. He is resident in the Los Angeles and Irvine offices of Bryan Cave, LLP and can be reached at

Monday, February 27, 2012

You Say SOPA, I Say Soupa

I recently had a very pleasant conversation about the death of the Stop Online Piracy Act (SOPA). On the other side of the table (quite literally) was a record company exec: a charming and intelligent man with whom it was great fun to converse.

SOPA (and its sister, PIPA), faced some stiff opposition from the Web community, and ultimately failed. My dinner companion saw this as a shame, and felt that the reason it failed was what the factual disconnect between the actual content of the Act and the claims being made against it by Google, Wikipedia, Facebook, others in the Web-community – and me (at least at dinner).

His position on SOPA, quite predictably, was that combating flagrant mass thieving of intellectual property on the Internet, as often perpetrated from foreign-based websites, required a coordinated strategy that SOPA delivered. As he saw it, SOPA only regulated foreign sites engaged in unlawful activity. (SOPA proposed to do this, in case you don’t already know, by cutting off the flow of revenue from US-based advertisers and by preventing US-based payment processors from conducting business with such foreign sites until they’ve proven themselves to be non-infringing. The Act contains a penalty for seeking such relief where there is no basis for the allegation.)

The argument against SOPA has always been that it imposes regulations on all Internet sites (legitimate and non-) that will stall innovation and curtail the flow of information. The opposition to SOPA is that putative copyright owners could use the law recklessly (or even maliciously), and that such conduct would unnecessarily impede and harm legitimate sites – possibly to the point of cyber-death. The fear has also been that the Act was a big step towards government censorship, although I admit that that’s a bit of the-sky-is-falling-ness that I never really bought into. Also admittedly, I only read the October version of the Act. It was long and rambling and circular enough that I never went back to read the sequel. Still, I get the objective. I’m a content creator, an artist by nature, and fully believe in protecting a creator’s intellectual property rights. I even think SOPA and PIPA asked the right questions; I just think they came to the wrong answer.

Moreover, and in defense of my position, doesn’t the recent legal shuttering of Megaupload prove that the current law worked sufficiently? And it the law worked to close down a alleged infringer like Megaupload, who was to say the system was broken? Hey, if it ain’t broke, don’t SOPA.

No doubt a new bill will come in to fill the SOPA/PIPA void. I’m all in favor of one that prevents an erosion of content-creators’ fundamental rights, but believe that it must contain sufficiently flexible language to strike a balance between the rights and interests of the content creator, the pipeline creator and the general public. Isn’t that fair? Isn’t it in everyone’s interest that safeguards for all concerned be preserved? I think so. And certainly, preventing theft benefits all concerned, but the prevention has to be done intelligently and without creating even more problems.

To reach across disciplines and borrow (generally/paraphrasing) from the Hippocratic Oath, legislation like SOPA that aims to solve the problem of infringers who profit from the distribution of illegal content must first insure that it does no harm to the patient it is attempting to cure.

Jonathan Pink is an intellectual property attorney resident in the Los Angeles and Irvine office of Bryan Cave, LLP. He can be reached at

Thursday, February 23, 2012

Lights, Camera, Vuitton!

This has already garnered a fair amount of press, but it’s funny and interesting, and those are generally my two criteria for writing about something.

Here’s the scoop: luxury designer Louis Vuitton (forget about the fact that it’s owned by a larger holding company, I’m just referring to Vuitton in this post) sued Warner Bros. alleging that a handbag featured in the Warner-movie Hang Over Part II is a fake.

Specifically, in a scene played out in an airport waiting area, the character of Alan, played by Zach Galifianakis, warns another character (Stu), who’s about to drop his tush on the bag at issue: “Careful, that is.. that is a Louis Vuitton.”

According to the fine folks at Louis Vuitton, the bag at issue is a counterfeit, made by a company named Diophy. Vuitton and Diophy are no strangers to each other: Vuitton is currently suing Diophy with respect to its allegedly counterfeit bags; and Diophy . . . well Diophy appears to really like the design of Vuitton’s bags. There, no strangers.

With respect to the movie, however, Vuitton claims consumers are likely to be confused, and thus Vuitton will be/has been damaged, by Warners’ use of the bag in the film. The claims expressly asserted include trademark dilution, false designation of origin and unfair competition.

Streeetch! (Sorry, just stretching here. Ah, that feels better.)

So what does LV want? The scene cut from the film. Is that all? You want butter with that? And a box of damages? Your total will be . . . .

You may recall that Hangover Part II is the same file that was previously the issue of another IP claim: in that one, the studio was sued by a tattoo artist who claimed that mark on Ed Helms' face infringed the tattoo the artist had etched into boxer, Mike Tyson. What is it about this film? In October, a writer also sued, claiming the flick infringed a script he had written. Well, that’s how you know a film is successful: the lawsuits start flowing in. Seems nobody sues over the films that are dogs (The pending John Carter release? We’ll see. See here for an article about that one: )

Back to our story:

Warners – shockingly – disagrees with the position taken by les Medames et Messieurs chez Louis Vuitton. According to Warners’ attorneys, Warners’ use is de minimus, non-infringing and subject to a defense under the First Amendment. And if that’s not enough, the studio has March 14 to think of a few more reasons why a 12(b)(6) should be granted and the complaint dismissed.

Is it just me, or does this who spat seem just a little bit silly? Cut the scene? Really? Damages under trademark law for this? Yeah? What about when Bugs hopped along singing “I’m looking over a three-leaf clover . . .” Do you think Mort Dixon and Harry M. Woods (the gentlemen who wrote the song I'm Looking Over a Four Leaf Clover" in 1927) should have had a claim for infringement too?

Jonathan Pink is an intellectual property attorney resident in the Los Angeles and Irvine offices of Bryan Cave, LLP. He can be reached at

Thursday, February 16, 2012

The Face Book of Sex

A friend of mine recently told me, “If you’re going to practice intellectual property, sooner or later you’re going come across something that touches on the porn industry.”

Which brings me to a case settled this week between Facebook and the “Face Book of Sex” (Facebook Inc. v. Various Inc., case number 4:11-cv-01805, N.D. CA).

Facebook’s trademark claim seems to have been pretty straightforward: that the defendant infringed the social media giant’s trademarks by running the adult-themed, asserting that mimicked the social network's site with such features as "like" (albeit, in a slightly different context).

As many of you know, the Lanham Act imposes liability upon any person or entity who uses a mark in interstate commerce in connection with the sale or advertising of goods or services that is likely to cause confusion or mislead consumers as to source or origin of the goods or services. See 15 U.S.C. § 1114(1)(a). Likelihood of confusion is typically measured by a series of criteria originally set forth in AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

While Facebook’s claims were somewhat obvious, impressively and unexpectedly, "Face Book of Sex" brought its own counterclaim to cancel Facebook’s marks, arguing that “face book” is a term that has been used for years by schools and organizations, ant Facebook should not be allowed to monopolize it.

That’s the argument people made with respect to “Windows,” way back when, and “Apple,” too.

Not necessarily a winning argument, but you have to appreciate the in-your-face chutzpah!

Jonathan Pink is an intellectual property attorney resident in Bryan Cave LLP’s Los Angeles and Orange County offices. He can be reached at

Wednesday, February 15, 2012

Bon Victoire

Just back from the Grammys.

The televised portion of the show is fine, but the real spirit of the place is found in the Grammy Week lead-up events, and the pre-telecast portion of the awards. That’s where the music industry really comes together to honor its own in an intimate and heartfelt ceremony.

Two fashion notes: guys, lose the bow ties on the tuxes, and everyone: “black tie” does connote some degree of formal attire (and that does not include simply recycling what you wore to your wedding or what you wore to your sister’s wedding).

Ok, enough of that, but in honor of that: a music law case to report on:

Last week, the First Circuit affirmed the dismissal of three lawsuit that had been brought against Bon Jovi based on the allegation that Bon Jovi’s song, “I Love This Town,” infringed “Man, I Really Love This Team” by little known artist, Samuel Bartley Steele. (Steele v. Ricigliano et al., case number 11-1675; Steele et al. v. Bongiovi et al., case number 11-1674; Steele et al. v. Vector Management et al., case number 10-2173; and Steele et al. v. Turner Broadcasting System Inc. et al., case number 09-2571, in the U.S. Court of Appeals for the First Circuit.)

What?! An unknown artist suing a big-named artist for infringement?! Shocking! A little known artist claiming that the big-guys listened to and stole the little’s guy song?

Look, I’ve got a message for the little guy: the big guy (generally) hit it big because he (or she) has a lot of talent. Hard to believe, but true. Talent is what brought them to such heights. Talent as in they don’t need to steal from you because they’re pretty damn good at writing their own stuff. Got that?

Ok, enough of that too.

Back to Steele and Bon Jovi. Turns out Bon Jovi’s song was regularly played at baseball games, which may be why Steele thought it was stolen (remember, his work is entitled “Man, I Really Love This Team,” which could refer to baseball). Unfortunately for Steele, however, copyright law does not protect facts, ideas, or themes. It only protects the way these things are expressed.

In other words, to prove direct infringement, a plaintiff must first prove that the defendant copied the protected work. Kelly v. Arriba Soft Corp., 336 F.3d 811, 817 (9th Cir. 2003) ("the plaintiff must show ownership of the copyright and copying by the defendant.”); see also LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150, 1156 (9th Cir. 1996) (“A plaintiff must meet two requirements to establish a prima facie case of copyright infringement: (1) ownership of the allegedly infringed material and (2) violation by the alleged infringer of at least one of the exclusive rights granted to copyright holders.”).

Such copying may be proven by either direct evidence, which is rare, or by indirect evidence that shows (1) the defendant had access to plaintiff’s work, and (2) the defendant’s work has probative similarity. See, e.g., Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823, 832 (10th Cir. 1993); Computer Assoc. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 701 (2d Cir. 1992) (requiring “substantial similarity”). "The word ‘copying’ is shorthand for the infringing of any of the copyright owner’s exclusive rights, described" in 17 U.S.C. § 106. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085, n.3 (9th Cir. 1989).

The degree of similarity needed to infer that copying has occurred will vary from case to case, but a plaintiff must show evidence sufficient that a reasonable fact finder, considering both access and similarity of the works, could find that the second work was copied from the first. See Gates Rubber v. Bando, 9 F.3d at 833 n.9. The plaintiff must also show that the copying was a result of a volitional act. See Religious Tech. Ctr v. Netcom On-Line Commc’n Servs., Inc., 907 F. Supp. 1361, 1369-70 (N.D. Cal. 1995).

The plaintiff also must show that those elements of a work that have been copied are protected expression and of such importance to the copied work that the appropriation of these protected elements is actionable. See id. at 832; Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1341 (5th Cir. 1994). The materiality component is important because not all copying constitutes copyright infringement. See Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (“The mere fact that a work is copyrighted does not mean that every element of the work may be protected.”). Thus, unprotectable elements of a work cannot serve as basis for liability for copyright infringement; liability will only attach where protected elements of a copyrighted work are copied. Gates Rubber v. Bando, 9 F.3d at 833.

In this case, the district court – and later the Court of Appeal on its own independent review -- concluded that no reasonable juror could find a substantial similarity of expression between Bon Jovi’s work and Steele’s work sufficient to support an infringement claim. The court also said that that no reasonable juror could find any “probative similarity of expression sufficient to support an inference of actual copying.”

In other words, Steele had failed to establish a degree of similarity between the works to lead any reasonable jury to infer that copying has occurred. In fact, the First Circuit went on to say that the differences between the works are “fundamental and extensive,” and the similarities that do exist stem from the works' common subject matter.

That’s judicial equivalent of a body slam. Once a court has told you “no substantial similarity,” it’s time to go home and figure out why you took the case in the first place. Personally, I would hope that legitimate plaintiffs represented by knowledgeable copyright counsel would call it quits at that point.

Of course, even if most legitimate plaintiffs and knowledgeable counsel would do that, that still leaves many, many people who will press on. And in this case?

I suspect its not over yet.

Jonathan Pink is an intellectual property attorney specializing in copyright and trademark matters. Resident in the Los Angeles and Orange County offices of Bryan Cave, LLP, he represents clients in film, television, music, design and the visual arts. He can be reached at

Thursday, February 9, 2012

More About Prince v. Cariou

Quick follow-up on a case I wrote about last week: Prince et al. v. Cariou, case number 11-1197.

That’s the case involving appropriation artist Richard Prince whose work involves creating collages and paintings using other people’s photographs.

Now two Photography industry trade groups (the American Society of Media Photographers Inc. and The Picture Archive Council of America Inc.) have filed amicus briefs arguing that the ruling against Mr. Prince should stand. Not surprising as the trade groups represent photographers and image-licensors.

In a nutshell, the groups argue that an overturning of the lower court’s ruling (finding copyright infringement on the basis that the fair-use doctrine not apply to Prince's use of photographer Patrick Cariou's images in his work) would harm photographers and those who lawfully license out their images, thus posing a threat to their members’ livelihood.

They also put forth the old saw: our members will stop creating new works. I never buy this argument, and neither will any of you if you are creators yourself. The fact is that artists make art because we compelled to do so, not because we are paid for it. It comes from the inside out.

Might a reversal by the Second Circuit ruin the photags’ livelihood? I doubt it, but I do agree that they could lose some money.

In an event, and just to even the playing field, a number of notable museums and the Andy Warhol Foundation have filed an amicus briefs on behalf of Prince. The museums argue that a reversal could deter museums from acquiring and displaying important works. Maybe. Or increase their insurance premiums.

The Andy Warhol Foundation also argued that the lower court’s application of the fair-use doctrine could have a chilling effect the creation of new artworks. Really? See my comment above. Forget the “Art World,” it seems everyone here has entered “Hyperbole World.”

In any event, that’s the news for now. Now back to work!

Jonathan Pink is an intellectual property attorney resident in the Los Angeles and Orange County offices of Bryan Cave, LLP. He specializes in copyright, trademark and business litigation. He can be reached at

Wednesday, February 8, 2012

Art as Sport . . . or Sport as Art

If I were to say “college football,” chances are your thoughts would not go to studio art. Likewise -- and I’m just guessing here -- if I were to say “oil painting,” chances are your thoughts would not go immediately to professional golfing.

After you’ve stopped comparing me to the Amazing Kreskin, I’ll continue. Ready?

Well you may not immediately connect sports with art, but some people do. In a couple of fairly recent instances, you’d refer to these people as “the plaintiffs.” Unless, of course, you were an artist, in which case the “plaintiffs” might refer to you as the “defendant.”

What the heck am I talking about? A couple of cases – one of which has recently reemerged into the public eye -- in which artists depicted sporting scenes, and those doing the sporting weren’t very happy about it.

First, in a case dating back to 2005, the University of Alabama sued Birmingham-based artist Daniel Moore based on his depiction of the school’s football team mid-game. Some of his works depict purportedly classic moments in the school’s athletic history, such as “The Goal Line Stand” from the 1979 Sugar Bowl against Penn State.

The University of Alabama brought a claim for trademark infringement, claiming that Moore’s work infringed the school’s marks by depicting its logo and insignia on the player’s uniforms. It claimed that if Moore wanted to depict these marks, he was obligated to obtain and pay for a trademark licensing fee.

Moore maintained he had the same right to depict these images as would a photographer from Sports Illustrated. He asserted that the images he painted were nothing more than anyone in attendance at the game would have witnessed, and claimed that his artistic depiction players in uniform was protected by the First Amendment.

The case went to trial before U.S. District Court Judge Robert Propst in 2009. The ruling was mostly in Moore’s favor. The Court found that Moore’s paintings did not violate the school’s trademark law, but that his sale of those paintings on mugs, T-shirts and other items did infringe.

Moore was apparently pleased with this result. The University of Alabama, however, wanted more. It appealed, and the 11th Circuit Court of Appeals in Atlanta held a hearing on that appeal just last week.

No ruling yet. (Hey, it took three years for a hearing, give these people some time.)

Still, the issue is an interesting one. Is an artist required to secure a licensing agreement before engaging in painting images of athletes on the job?

I’m not even sure how the school felt that this would have infringed their mark. Infringement requires that the infringer use the mark in commerce in connection with his/her goods or services. 15 U.S.C. sections 1112(1), 1125(a)(1). Doesn’t seem it. See WHS Entertainment Ventures v. United Paperworkers Int’l Union, 997 F. Supp. 946 (M.D. Tenn 1998) (use of plaintiff’s protected logo on leaflets distributed by union organizers on and near plaintiff’s restaurant premises was not sufficient to meet statutory requirement).

In addition, there must be a likelihood of consumer confusion, meaning that an appreciable number of ordinarily prudent purchasers are likely to be confused as to the source, sponsorship or affiliation of defendant’s goods or services. Western Pub. Co. v. Rose Art Indus. Inc., 910 F.2d 57, 59 (2d Cir 1990); see also AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 351 (9th Cir. 1979) (setting forth likelihood of confusion factors).

Even if the school could get beyond that, why wouldn’t the use of the team logos in the painting merely fall under the rubric or nominative use? A defendant is permitted to use the plaintiff’s mark to describe the plaintiff’s product. See Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002).

Artist Rick Rush fought a similar trademark infringement claim in 1998. That one was based on Rush’s painting "The Masters of Augusta." The painting showed Tiger Woods' (based on his win from the prior year), and a collage of images that included portraits of Ben Hogan, Bobby Jones, Jack Nicklaus, Arnold Palmer and Sam Snead.

Woods was having none of it. His company, ETW Corporation, sued the publisher of Rush's painting, alleging (among other things) trademark infringement as ETC owned a trademark in Woods' name (and had rights in his image).

The lower court and the Court of Appeals ruled in favor of Rush, holding that the painting contained expressive content, and that a person's likeness could not function as a trademark.

What’s the takeaway from all of this? One point may be that greater license will be given the artist where the case turns, at least in part, on the journalistic nature of the works. So portray the team at play, not an individual member.

Of course, that doesn’t entirely explain the result of the Woods case, although I suppose even that had a news-reporting aspect to it: past and present victors? Sometimes even I don’t have the answers. Now if only we could consult the Amazing Kreskin!

Jonathan Pink is an intellectual property attorney resident in the Orange County and Los Angeles offices of Bryan Cave, LLP. He can be reached at

Tuesday, February 7, 2012

Copyright Protection in Yoga Exercises? Not Likely

I remember when I first heard of Bikram Yoga, the rigidly prescribed sequence of twenty-six postures set to balmy 105 degrees and 40% humidity:

It was New Year's day some years ago and we were walking with friends -- and kids in strollers -- around Balboa Island in Newport Beach. A woman in our group was a recent convert to Bikram Yoga. Most of us (except for my very well read wife) had never heard of it.

After an explanation of this form of hot yoga, a young physician in the group opined that it sounded dangerous.

Conflict came early to Bikram Yoga.

Bikram Yoga is said to be the most popular – certainly the most well known -- form of hot yoga. Derived from traditional hatha yoga, it was developed and popularized by Bikram Choudury.

By all accounts he has made a mint off of it. According to Wikipedia, Mr. Chodury's owns more than 40 Rolls Royces, including cars owned by the Queen Mother and the Beatles (although probably not at the same time). Wikipedia quotes him saying “I'm making - I don't know - millions of dollars a day, $10 million a month - who knows how much?”

Who knew a yoga franchise could be so profitable? Given that it is, it’s easy to understand why Choudury would want to protect his golden goose by zealously guarding the right to teach the 26 postures in a sauna-like setting.

After first learning of Bikram Yoga, occasionally reemerged in my periphery. At some point, a year or two later, I received a call from the owner of a yoga studio who described a brewing dispute with Bikram. He (or his lawyers) didn’t want her to offer Bikram-style yoga absent Bikram-authorized training and a Bikram-license.

Hey, this may be meditative, but it’s also business. Someone’s got to pay for Chodury’s watch collection that Wikipedia says is valued at more than $1 million.

When I received the call, I thought you probably can't use his name (nomitive use likely would not work as a defense), but how can he protect the sequence? Does it constitute choreography, maybe?

I never answered the question. The caller decided she didn't have the funds or the fortitude for a yoga fight.

Apparently other Bikram disciples were more inclined to go to the yoga-mat on this.

Greg Gumucio is the founder of Yoga to the People, a New York based franchise which offers "Traditional Hot Yoga." He’s a former student of Chodury. Now he’s the defendant in a copyright infringement lawsuit brought by Chodury based on Gumucio having allegedly taught Bikram's sequence of twenty-six postures set to 105 degrees (or there about).

Wow, talk about “Time for you to go, Grasshopper.” “Time for me to squish you like a bug, Grasshopper!”

It seems Bikram used the argument that the sequence of 26 was tantamount to choreography, and thus entitled to protection under the Copyright Act.

Section 102(a)(4) of the Copyright Act includes choreographic works as subject matter in which copyright protection subsists. Of course, the Copyright Act only affords protection to a work that is "fixed", that is, written or recorded on some physical medium. Thus, courts have found protection in a choreographed work where, e.g. the movements were digitized in a video game (Ahn v. Midway Manufacturing, Co., 965 F. Supp. 1134, 1138 (N.D. Ill. 1997); Martha Gram School and Dance Foundation, Inc. v. Martha Gram Center of Contemporary Dance, Inc., 380 F.3d 624, 632 and n. 13 (2d Cir. 2004) (choreographic work may be fixed by being filmed, videotaped or through use of a written system of notation); Horgan v. Macmillan, Inc., 789 F.2d 158, 160, n. 3 (2d Cir. 1986) (same).

Accordingly, Bikram’s argument was that the movements required for the yoga at issue were comparable to a choreographic work thus were protectable under 17 U.S.C. Section 102(a)(4).

Well, the Copyright Office has weighed in on this, and the answer is . . . No.

After conducting a legislative review of the Copyright Act, the Copyright Office determined that exercises, including yoga exercises, are not protected as choreography.

Breath . . . Deeply.

Because the Copyright Office has extensive experience reviewing copyright claims and the authority to interpret the Copyright Act, courts tend to give deference to its decisions. See Batjac Productions Inc. v. GoodTimes Home Video Corp., 160 F.3d 1223, 1230 (9th Cir. 1998) (deferring to Copyright Office’s refusal of registration, stating “the Register has the authority to interpret the copyright laws and [ ] its interpretations are entitled to judicial deference if reasonable”) (citation omitted); Southco, Inc. v. Kanebridge Corp., 390 F.3d 276, 287 (3d Cir. 2004) (“the Copyright Office’s longstanding practice of denying registration to short phrases merits deference”).

I'm not sure what this means to the creators of Jazzercise, Tae Bo or other exercise routines, but this case does seem to add some clarification to the issue of choreography.

By the way, Gumucio is now suing for a recovery of his fees. So exhale . . . at least for now.

Jonathan Pink is an intellectual property attorney in the Los Angeles and Orange County offices of Bryan Cave, LLP. He specializes in copyright, trademark and unfair competition claims. He can be reached at

Thursday, February 2, 2012

Copyright Infringement on the Campaign Trail

It’s not just the “very poor” who are ticked off at Mitt Romney these days. NBC has got a beef with him as well.

Mitt’s got a TV ad out in which he uses a clip from NBC’s Nightly News, circa 1997. The clip shows Tom Brokaw reporting that Newt Gingrich was found guilty of various ethics violations.

The ad carries the banner “Paid for by Romney for President, Inc. Approved by Mitt Romney.”

But it doesn’t say licensed by Mitt Romney or used with permission by Mitt Romney. And it doesn’t say “approved by NBC.”

NBC, it seems, is not pleased about this. It has insisted that Romney remove NBC’s copyrighted material from the ad, or face a claim for copyright infringement.

And that’s not all. NBC is also threatening a claim for false endorsement, false designation of origin under the Lanham Act, and (on behalf of Mr. Brokaw) a claim for misappropriation of name and likeness.

I like NBC. If I had a TV, I’d definitely watch their station. My hat’s off to their legal team.

Mr. Romney might have said “I’m not concerned about the Copyright Act.” Or “I’m not concerned about the very [NBC].” His campaign apparently intends to continue running the ad. They’ve taken the position that their use of the news clip falls within the “fair use” doctrine.


Let’s review: 17 U.S.C. § 107 provides that the “fair use" of a copyrighted work “is not an infringement of copyright," but making the determination as to whether “fair use” applies is a case-by-case analysis.

Generally speaking, in determining whether the fair use defense applies, courts consider “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work." 17 U.S.C. § 107.

Those factors don’t necessarily bode in favor of the Romney campaign. But then again, maybe what it means by “fair use” is that the Gingrich campaign also engaged in copyright infringement!

You see, Gingrich was sued this week by a former member of the band Survivor for his use of the song “Eye of the Tiger” at campaign events.

Opps. Can’t do that? Public performance? Who knew?

So maybe that’s Romney’s “fair use” defense. Of course, that’s really less of “fair use” and more of a “well he did it!”

But if Romney takes that approach, he’d might also want to pick a couple more wives. Just to make the teams even.

In any event, it helps to know that the leading contenders for the Republican presidential nomination are well versed in copyright laws.

Hint to Romney and Gingrich: it helps to hire a lawyer before using other people’s work. That is, unless the copyright owners are very poor, in which case, we know what Mitt has to say about that.

Jonathan Pink is a copyright and trademark lawyer in the Los Angeles and Orange County offices of Bryan Cave, LLP. His practice focuses on intellectual property and commercial litigation, including arts and entertainment, technology and Internet-related matters. He cam be reached at

Wednesday, February 1, 2012

A Battle Over the Right to Publish an eBook

Interesting new dispute brewing . . . and this on the heals of the CCIA report (see post of 1/30/2012) no less.

The CCIA report talks about the general health of the global entertainment industry. In a nutshell, it says that revenue generated from, and the production of, movies, books and music is far greater than prior – mostly entertainment-industry – reports. Put another way, the CCIA report suggests that the entertainment industry is sort of a hypochondriac, and its moans and groans really do not portend its imminent death.

Or so the report says. I’m a litigator, so naturally a skeptic. Of course, as many of you know, my background is on the creative side, so I’m also a big proponent of making something out of nothing – film, music, art . . . self-serving report.

In any event, let’s go with it now, because I only mention it to talk about ebooks.

Just a little background: ebook technology and the devices themselves have been around since at least the 1990s. It’s just that almost no one had them. They were like the man-purse: just didn’t catch on.

Of course now, they’re ubiquitous. The Nook, the Kindle; I suspect the iPad will serve in this same function by the time I’m finished writing this post. I read the New York Times (and the LA Times) on my iPhone so it’s not much different. [Note: we also get the paper edition of the NY Times. It’s just that I’m not supposed to touch it until Andrea’s through with it. So reading it on line allows me to read it when I like, even if she hasn’t finished with it. Also, reading it on line allows me the opportunity to say something in response when Andrea reads me something aloud from the paper, such as:
Her: (Reading) It’s estimated that the Facebook IPO is valuing the company at $75 billion to $100 . . .

Me: (Nearly quoting from the same article, but tossing it off as if it were my own analysis) Really? Sounds like they’re cashing in on the fuel that powers the engine of Internet commerce: personal data. Why, the company has been busily collecting that data for seven years, compiling the information that its more than 800 million users freely share about themselves and their desires. Facebook’s value will be determined by whether it can leverage this commodity to attract advertisers.

Sometimes it works.

Anyway, back to our story. The CCIA report suggests that while the overall book industry has been relatively stable over many years, the digital books market has been experiencing explosive growth. Some publishers think ebooks will completely replace printed books. Certainly, according to the report, sales revenues for ebooks have now surpassed the $1 billion mark, and that’s expected to triple in coming years.

Now, if you’re a traditional publisher, and you have the right to publish a title in print or in the form of an ebook, perhaps this is all good news. After all, the cost of producing and selling an ebook is considerably less than that of a printed book.

If that’s all there were to this, we could all go on with things more important than reading this blog. But . . . what if the traditional publisher who released the book and built an audience doesn’t have the rights to also publish the work as an ebook

How could this be, you ask? Well, let’s say the work was published forty years ago, and neither the publisher nor the writer ever envisioned such things as an ebook, and thus did not include such technology in their publishing agreement. (Hey, if I were to have told you in 1971 that in 2012 you’d be using your camera as a telephone, and a radio and a compass and a map and . . . well, you get the idea. Who’d of thunk it?)

That’s the situation that gives rise to our lasted tale of woe and litigation.

Direct your attention to: HarperCollins Publishers LLC v. Open Road Integrated Media LLP, (case number 1:11-cv-09499) (SDNY).

HarperCollins is suing to stop Open Road from selling an e-book version of “Julie of the Wolves,” the classic 1972 children’s novel.

HarperCollins alleges that Open Media’s publishing of the ebook version of the book infringes HarperCollins’ copyright because it had a preexisting contract with the works author, Jean Craighead George, granting HarperCollins exclusive rights to publish the book “in book form” (at least in the U.S. and Canada).

So, is an ebook a book? HaperCollins thinks so.

What is a book, anyway? A quick Google defines book (at least the noun form of the word) as “A written or printed work consisting of pages glued or sewn together along one side and bound in covers.” Well that wouldn’t include something on the Kindle, but is that definition too narrow?

That’s what the parties will argue over.

HarperCollins claims that its agreement with the author gives it the right to exploit the work “through computer, computer-stored, mechanical or other electronic means now known or hereafter invented.” Under contract law, that would give them a good argument that the agreement was broad enough to include the technology we currently refer to as an ebook.

However, the case is being litigated in New York, and the Second Circuit has taken a fairly narrow view of similarly expansive language in other literary agreements where ebooks were at issue. But maybe the current, more widespread distribution of ebooks will lead to a different result in this case? It would seem that, as the technology works its way into our lives, the views of the jurists may change. We’ll see.

Certainly, if I were a publisher, I’d want to own the ebook rights to everything I had published in hard copy. Conversely, if I were the author of a successful work, I’d welcome the opportunity to renegotiate the ebook-rights. The issue should be of great importance to both camps (including the estates of the authors who entered into these types of agreements in the past), and a favorable ruling for HarperCollins is certain to trigger additional lawsuits, so stay tuned.

One final question: Who is going to retain electronic publishing rights in the future?

That’s easy: all literary agreements written on a go-forward basis are certain to close this loop hole. Publishers will want to make very clear that “new uses” of old works includes absolutely everything, and that the term “in book form” means something much more expansive than “written or printed work consisting of pages glued or sewn together along one side and bound in covers.”

After all, who knows what things will look like in 40 years? Maybe by then we’ll have telephone shoes.

Jonathan Pink is an intellectual property attorney specializing in copyright, trademark and commercial litigation. He is resident in the Los Angeles and Orange County offices of Bryan Cave, LLP. He can be reached at