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 jonathan.pink@bryancave.com.

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 jonathan.pink@bryancave.com.

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: http://www.thedailybeast.com/articles/2012/02/21/john-carter-disney-s-quarter-billion-dollar-movie-fiasco.html )

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 jonathan.pink@bryancave.com

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 FaceBookOfSex.com, asserting that FaceBookOfSex.com 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 jonathan.pink@bryancave.com

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 jonathan.pink@bryancave.com.

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 jonathan.pink@bryancave.com.

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 jonathan.pink@bryancave.com.

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 jonathan.pink@bryancave.com.

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 jonathan.pink@bryancave.com.

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 jonathan.pink@bryancave.com.