The IP Law Blog

Focusing on legal trends in data security, cloud computing, data privacy, and anything E

Who Owns Facebook “Likes” on Your Page

Posted in Uncategorized

The answer may surprise you.

This dispute over ownership of Facebook ‘likes’ pits the creator of a fan Facebook page for a TV show against the television network that owns the show.  The facts of the dispute are as follows:   From 2008, the CW Network broadcasted the television series “The Game”, a dramatic comedy about the lives of professional football players and their wives and girlfriends.  BET acquired the syndication rights to the series in 2010 and then in 2011 began producing original episodes.

In 2008, when the series was on the CW Network, Stacey Mattocks created a Facebook fan page for the series.  Mattocks did not post any CW or BET owned content and she did not hold the Facebook page out to the public as the “official” series page.  Around October 2010, BET hired Mattocks to perform part-time work managing the series’ Facebook page.  BET then regularly instructed Mattocks to post, or not to post, certain information on the page and provided her with exclusive photos and video clips.  Mattocks posted most of the content on the FB Page, but BET employees also occasionally posted material.  Apparently Mattocks did a good job managing the series’ Facebook page as the number of ‘likes’ grew from around two million to over six million.

In February 2011, BET and Mattocks entered into a written agreement regarding each parties’ rights and privileges regarding the Facebook page. Mattocks granted BET full administrative access to the page, and BET agreed not to exclude Mattocks from the page by changing her administrative rights.  However, it appears that this agreement was silent on which party owned the Facebook page. Continue Reading

Copyright Ownership Claim Of Pictures Taken By Wild Ape is Monkey Business

Posted in Copyright Law

Recently, Wikimedia (the entity behind Wikipedia) has refused repeated requests from professional photographer David Slater to remove from one of his most famous photos from its royalty free photo collection website.  The photo at issue is a “monkey selfie.” Slater claims he owns the copyright to the photo and Wikimedia is using it without his permission.  Bananas! claimed Wikimedia;  a recent report reveals that Wikimedia editors decided that Mr Slater has no claim on the image as the monkey itself took the picture.

In what must be the wildest of luck, Slater was visiting a North Sulawesi national park in Indonesia when a black macaque grabbed an errant camera and took an amazing array of self-portraits.   These amazing pictures ran in an July 5 article about the incident in the UK’s Daily Mail.  Two of the four pictures featured in the article included a copyright notice indicating Caters News Agency (Slater’s photo agency) as the owner.

Can Canters News Agency or Mr. Slater own the copyright in the photos taken by this highly intelligent and obviously photogenic?   In order for this to be the case, the monkey would have to be an author under the Copyright Act.    And if a monkey can be considered an author, he or she would have to assign or transfer the copyright in the photos to Caters News Agency. Continue Reading

No Inducing Patent Infringement Unless There is Direct Infringement

Posted in Patent Law

In a June decision, the U.S. Supreme Court resolved a key issue in patent law: whether a party can be liable for patent infringement when there is no underlying act of direct infringement.  Specifically, the court addressed whether a party who instructs multiple parties to perform different steps of a method patent can be liable for inducing infringement.  The Court’s answer:  no. The case is Limelight Networks, Inc. v. Akamai Technologies, Inc. (U.S. Supreme Court June 2, 2014) 2014 U.S. LEXIS 3817.

Patent infringement is either direct or indirect.  Direct infringement exists when a defendant makes, uses, sells, offers to sell, or imports into the United States a patented product or performs all of the steps of a patented method.  Indirect infringement exists when the defendant does not itself commit direct infringement, but causes another party to do so.  There are two types of indirect infringement: inducing and contributory.  A defendant has induced infringement when it instructs or causes another party to infringe a patent.  For a method patent, a defendant induces infringement if it instructs another party to perform all of the steps of the method.  The party who performs all of the steps is liable as a direct infringer, while the inducer is liable as an indirect infringer.  Contributory infringement, which is not relevant here, exists when a defendant sells or offers to sell a component that can only be used in infringing a patented invention. Continue Reading

When is Enough Really Enough? The Importance of Experts in Music Copyright Infringement Actions

Posted in Copyright Law, Entertainment Law

transparentOn June 17, 2014, a federal judge in Illinois granted summary judgment to Stefani Joanne Germanotta against plaintiff, Rebecca Francescatti, in a copyright infringement matter because he found that no reasonable trier of fact could find that Ms. Germanotta’s song, “Judas,” is substantially similar to Ms. Francescatti’s song, “Juda.”  You may wonder, why you should care about these two unknown figures in the music industry, but the truth is, Ms. Germanotta is far from unknown.  In fact, she has been a staple in the pop music industry since she burst onto the scene in 2008 with the release of her album, “The Fame,” which had such hits as “Just Dance” and “Poker Face.”  By now you may have guessed—Ms. Germanotta is none other than Lady Gaga.

In her complaint, Ms. Francescatti alleged that Lady Gaga’s song, “Judas,” from the album “Born This Way,” infringed Francescatti’s copyright in her song, “Juda.”  According to Ms. Francescatti, she worked with co-defendant sound engineer, Brian Joseph Gaynor, to write “Juda” in 1999.  Ms. Francescatti alleged that Mr. Gaynor later collaborated with Lady Gaga in 2010 to create “Judas.”  According to Ms. Francescatti, the two songs have remarkably similar melodies, structure, bass lines, and further similar features.  This allegation was unsupported by expert testimony. Continue Reading

Federal Regulatory Authority and Power of the Press Release

Posted in Legal Info

Among the unstated powers of the federal (and sometimes state) government that few litigation targets think about is the power of the press release. Prosecutors, whether at the agency level or above (for example, at the state Attorney General’s office or at the Federal Department of Justice), have a hidden tool in their arsenal. It is so simple that many persons and corporations often fail to take it into account in their defense strategy.

Federal regulatory agencies such as the SEC, FCC and FTC, as well as state agencies, have engaged in large-scale public relations campaigns that often seem to undermine the innocent until proven guilty ethos under which they as governmental actors, in particular, labor.

For example, in a recent action by the FTC, the agency conducted a sweep of various infomercial producers which it deemed to be producing false or misleading advertisements. Before even the first court hearing and, in fact, on the same day the complaint was issued, the FTC conducted a carefully-orchestrated press conference to tout their latest “pro consumer” lawsuit. The regulatory agencies usually come up with a fancy “handle” by which they identify their work. These lawsuits often have military-style monikers such as “Operation Clean Sweep,” or “Operation Restore Trust.”

In many cases, a regulatory agency will sue a number of targets, be they advertisers, hedge funds, banks, etc. all at once in coordinated actions. The trouble with this strategy is that while there may be several bad actors in the group, everyone is tarred with the same devastating brush. This is trial by the court of public opinion. The “sweep” is now invariably accompanied by a high-profile press conference, website release and press releases. To even the casual observer, it should be obvious that this strategy is aimed more at making the reputation of the individual agency enforcer than in actually doing justice. While some private plaintiffs like to use press releases as a litigation strategy (usually a bad one), this issue is far worse when the government is a party-plaintiff. Continue Reading

The Duke and Duke Duke It Out In Trademark Rowe

Posted in Trademark Law

Clearly there is no love lost between John Wayne Enterprises, LLC (“JWE”), the entity owned by John Wayne’s heirs which controls the intellectual property related to John Wayne, and Duke University.   Both have have been locked in battle over various trademarks incorporating the word DUKE.  The most recent skirmish involves a trademark application filed by John Wayne Enterprises, LLC (“JWE”)  for the following design mark for alcoholic beverages, excluding beer:

Duke University requested and was granted  an extension of time to potentially opposition to the registration of this mark.    Previously, Duke University opposed JWE’s’ application to register DUKE for restaurant services, claiming that the mark is likely to cause confusion with Duke University’s other DUKE trademarks and/or dilute Duke University’s famous trademarks. Specifically, Duke University alleged that:  “[JWE] seeks to register a mark that is substantially similar to [the University’s] famous mark DUKE, and that moreover is likely to be abbreviated simply as DUKE and expressed orally simply  as DUKE, for goods that are closely related to goods and services with which [the University’s] DUKE Marks are used…”

It appears that this time, JWE took John Wayne’s quote  “You tangle with me, I’ll have your hide.” literally and didn’t wait and see whether the University actually filed an opposition.  JEW filed a complaint for declaratory relief in the United States District Court for the Central District of California, requesting the court to declare that the above mark does not infringe or dilute any of the DUKE trademarks owned by Duke University.  In its complaint it alleges that “Duke University believes that products bearing John Wayne’s world renowned image and signature…will somehow be confused with being associated with Duke University.” Further, JWE alleges that “in light of the multiple Oppositions and Cancellation proceedings Duke University has filed against JWE and the claims made therein, JEW believes Duke University contends that JEW’s [registration and use of its marks] or any other mark that includes the term DUKE are likely to cause confusion with [the marks owned by Duke University] and intends to sue JWE for trademark infringement, notwithstanding that JWE’s use is directly associated with and expressly linked to John Wayne.” Continue Reading

Funk, Copyrights, and Collecting Judgments

Posted in Copyright Law

Litigants know that obtaining a judgment against an adversary is only half the battle.  Sometimes the efforts a litigant must expend to collect on that judgment are just as significant, if not more so, than obtaining the judgment.  In looking for assets to satisfy a judgment, litigants are reminded that a defendant’s intellectual property, including any copyrights, may be subject to execution to satisfy an unpaid judgment. This issue was recently explored in a Ninth Circuit case titled, Hendricks & Lewis PLLC v. George Clinton (the funk music superstar).

Clinton was a pioneer in funk music starring in bands such as Funkadelic and Parliament.  During the last ten years, however, he racked up legal fees with Hendricks & Lewis in excess of $3 million.  Hendricks & Lewis obtained an arbitration award in excess of $1.6 million that was later confirmed as a judgment against Clinton.

After receiving only a portion of the outstanding judgment through various collection methods, Hendricks & Lewis asked a U.S. District Court to appoint a receiver who would then attempt to sell Clinton’s copyrights in his various music to help satisfy the judgment.  The District Court agreed and appointed a receiver to do so.  Clinton then appealed to the Ninth Circuit.

One additional set of facts that is crucial to the outcome of this case was the history of Clinton’s copyrights in his music.  In July 1975, Clinton, through his production company, Thang, Inc., entered into a recording contract with Warner Bros. Records in which he agreed to make master recordings of his performances with Funkadelic.  The agreement made clear that Warner Bros. was to own in perpetuity all rights in the recordings and that neither Thang nor Clinton would have any rights.  This included an acknowledgment that Warner Bros. owned the copyrights in the recordings.  Clinton signed a similar agreement again with Warner Bros. in 1979.  Later, Clinton and Warner Bros. had various disputes and in 1982 entered into a settlement agreement under which Warner Bros. agreed to relinquish its ownership, including its copyrights, in the recordings to Clinton. In 2005, a U.S. District Court in California recognized that Clinton was the sole owner of the copyrights for the recordings.

On appeal, Clinton argued that: (1) his copyrights were not subject to execution to satisfy a judgment; and (2) even if they were, he was entitled to protection under section 201(e) of the Copyright Act which forbids the “involuntary transfer” of a copyright.

The Ninth Circuit began by recognizing that judgment collection proceedings are governed under state law.  Washington law provides that: “All property, real and personal, of the judgment debtor that is not exempted by law is liable to execution.”  Although the Ninth Circuit could not find any cases that held that a copyright was subject to execution, the U.S. Supreme Court had long ago held that a judgment debtor’s interest in a patent could be assigned to satisfy a judgment.  The Ninth Circuit reasoned “that where copyright case law is lacking, ‘it is appropriate to look for guidance to patent law ‘because of the historic kinship between patent law and copyright right law.’’”  The Court also found it relevant that it had previously held in a case arising out of California, in Office Depot, Inc. v. Zuccarini, 596 F.3d 696, that a judgment debtor’s internet domain name could also be subject to execution. Continue Reading

Business Method Patents: Murkier Water

Posted in Patent Law

The long-awaited decision by the United States Supreme Court on business method patents was issued on June 19, 2014.  Unfortunately, the decision raised more questions than it answered.  The expectation was that the Supreme Court would clearly explain the difference between unpatentable abstract ideas and patentable software, including business methods.  Instead, the Court issued a very narrow decision with broad, but uncertain ramifications.  The Court applied a test it has previously relied upon, striking down all of the patents in the case and expressly stating that it was not opining on the patentability of software or business methods in general.

The case is Alice Corporation Pty. Ltd. v. CLS Bank International, 2014 U.S. Lexis 4303 (U.S. Supreme Court, June 19, 2014). Alice Corporation’s patents were directed to a computer-implemented process of minimizing “settlement risk” – the risk to a party in a financial transaction that the other party would not perform the transaction, by creating an intermediary using “shadow” financial records of both parties.  The claims covered the computer system to perform the process, the computerized method itself, and a computer-readable medium with the instructions to perform the method.

Alice Corporation had sued CLS Bank for patent infringement.  The district court had granted summary judgment for CLS Bank on the grounds that all of the claims were not eligible for patent protection as they were directed to an abstract idea.  A panel of the Federal Circuit Court of Appeals had reversed the district court, but then, in an en banc hearing, affirmed the district court in a set of multiple opinions.  A plurality of the Federal Circuit found all of Alice Corporation’s claims patent-ineligible, relying on the Supreme Court’s 2012 decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012).

Continue Reading

Google’s Android: Was It Truly The First Generation?

Posted in Copyright Law, Patent Law, Trademark Law

transparentWith the prevalence of smartphones in today’s society, one cannot help but to have at least heard of Google’s Android operating system.  This operating system came about with the intent of competing with the superpower known as Apple’s iPhone.  Of course, when Google released this platform for the first time in 2007, the Android operating system was perceived to be the first generation.  Recently, however, an Illinois man asserted that perhaps Google’s Android was not the first generation.  Well, not quite, but he did assert that Google infringed his federally registered trademark, “Android Data.”

During the Dot.com Boom of the late 1990s Erich Specht decided he wanted to get into the lucrative software business.  As such, in 1998, he founded a suite of e-commerce software that became known as Android Data Corporation (“ADC”).  Through his entity, he intended to license software to his would-be clients, and provided website hosting and computer consulting services.   Two years after the company’s inception, Mr. Specht applied to the United States Patent and Trademark Office for federal registration of the “Android Data” mark.  The mark was registered in 2002.

Unfortunately for Mr. Specht, by the end of 2002, his company had hit the end of the road.  It ceased all major operations, lost the bulk of its clients, and moved its headquarters into Mr. Specht’s home.  Mr. Specht then caused ADC to transfer the Android Data mark to his wholly-owned company, The Android’s Dungeon Incorporated (“ADI”).  For the remainder of the year, Mr. Specht attempted to sell ADC’s assets, including the mark, but was unable to find a willing buyer.  He kept the ADC website running for a short period thereafter, but eventually allowed the registration for the company URL to lapse. Continue Reading

Trademark Office Tackles Redskins

Posted in Trademark Law

The 2013 NFL season was not kind to the Washington Redskins, and after winning only 3 games and losing 13, there are many in the Washington Redskins organization who might have wanted to hide behind a new name.  Now they might have to.

The USPTO officially cancelled the Washington Redskins trademark registration stating that the team’s name is offensive to Native Americans.  Although it is unusual for the trademark office to take such action, this move is consistent with the Trademark Manual of Examining Procedure, Section 1203.01, as well as Section 2(a) of the Lanham Act, which provide that trademarks which disparage or belittle any group are not permitted to be registered under federal law.

Although the cancellation of a federal trademark registration does not mean that the Washington Redskins must stop using their name, cancellation of their trademark might significantly reduce the overall value of the team.  A significant source of revenue for most professional sports teams comes from the sale of a variety of licensed products bearing the team name and logo.  Ownership of a valid and enforceable trademark registration in connection with this name and logo helps a sports team to control this intellectual property, license it, and otherwise exclude other parties from profiting through unlicensed use of the marks.  Cancellation of the federal registration will remove a significant number of enforcement tools available to the Washington Redskins, rendering it potentially more difficult to exclude others from using their marks.

Periodically the Trademark Office receives applications for registration, or complaints about an already registered mark, which contain “immoral, deceptive or scandalous matter” or is disparaging to “people, institutions, beliefs, or national symbols.”  Although it is a somewhat rarely cited basis for the rejection or cancellation of a trademark, the Washington Redskins join a dubious list of marks that have run afoul of this provision.  For example, in 2012, the Court of Appeal for the Federal Circuit affirmed the Trademark Office’s rejection of a trademark application covering the rather graphic name of a rooster shaped lollipop product, on the grounds that the name affixed to this particular product was “immoral or scandalous.”

Yet in a different case, the Old Glory Condom Corporation was granted a federal trademark registration in connection with American flag-adorned condom packages.  The apparent discrepancy between this outcome and the Redskins or lollipops highlights the seemingly impossible task faced by the Trademark Office – to discern what type of mark might be “immoral or scandalous” or otherwise offensive to members of the public, while considering the fact that what is vulgar to one person often is not in the eyes of another.

In light of the significant number of protestations received from Native American communities across the country, and a growing public concern about the use of a racial slur such as “Redskins” for the name of a professional sports team, the Trademark Office’s decision in this case likely was easier than debating about lollipops or condoms.  Now that they have tackled the Redskins, perhaps the Trademark Office will knock Chief Wahoo of the Cleveland Indians out of the park.