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Is Fox News Proposing a New Standard For Determining Fair Use?

Posted in Copyright Law

North Jersey Media Group Inc. is the copyright owner of the iconic photograph of three firefighters raising an American flag at the ruins of the World Trade Center on September 11, 2001. On September 11, 2013, a Fox News producer posted a photograph that juxtaposed the 9/11 photograph with a World War II photograph of four U.S. Marines raising an American flag on Iwo Jima on the Facebook page for the Fox News’ television program Justice with Judge Jeanine. North Jersey Media Group sued Fox, claiming that the posting of the combined image infringed its copyright. Fox news argued that the use was protected “fair use” and moved for summary judgment. The court denied Fox’s motion and Fox is now appealing to the 2nd Circuit.

Fox’s appeal centers around the lower court’s analysis of the first fair use factor: the purpose and character of the use. The purpose of this factor is to test whether the allegedly infringing work is “transformative.” A work is transformative when it adds something new to the work allegedly infringed, with a further purpose or different character, altering the original work with new expression, meaning, or message. A work is transformative if it does something more than repackage or republish the original copyrighted work. A transformative work is one that serves a new and different function from the original work and is not a substitute for it. As the Supreme Court noted in Campbell v. Acuff-Rose Music, Inc, “the more transformative the new work, the less will be the significance of other factors, … that may weigh against a finding of fair use.”

Although acknowledging that Fox News did alter the image and message of the original work, the lower court noted that it did so “only minimally”. The lower court stated that it could not conclude as a matter of law that the physical alterations made to the original photograph transformed the new work sufficiently to merit protection as fair use.

Fox believes the lower court’s focus on physical alteration to the original image was incorrect and that the court should have considered the other aspects of Fox’s use. Namely, Fox contends that in analyzing the transformative nature of its use, the lower court should have considered the use of the photo as having been used “in an inherently transformative context: on social media.” Fox argues that “[e]xpression on social media, and on Facebook in particular, is inherently intertwined with “comment” and “criticism,” purposes that the Copyright Act sets forth as presumptively fair” since “[e]very post is an invitation for others to comment and criticize…”

Fox argues that the lower court failed to recognize the applicability Bill Graham Archives v. Dorling Kindersley Ltd. In that case the 2nd Circuit held that a publisher’s use of an old concert poster in a “coffee table” book documenting the history of the Grateful Dead was fair use. In finding the use to be “transformative,” the court focused on the context of the publishers use – use for a biographical purpose – as opposed to the concert promoter’s use, Fox contends that the lower court relied on case law such as Cariou v. Prince and Blanch v. Koons which based transformativeness on physical alterations of the original work. The apparent conflict between the Bill Graham and the Cariou modes of analysis, Fox argues, make appellate review appropriate.

Fox argues that a context-sensitive test for transformativeness must consider that “Facebook and other social media sites are by design used for purposes of “comment” and “criticism,” and such a test will inevitably favor uses on social media.” It seems that Fox is arguing that publication of a work on social media is transformative in and of itself. Does this argument go too far; this author thinks that it does. However, there is merit to Fox’s argument that the lower court focused solely on the physical alterations to the image and failed to consider whether the context of Fox’s use was transformative. ScottImg

Bob Marley and Federal False Endorsement Claims

Posted in Trademark Law

Since his death in 1981, reggae superstar Bob Marley and his “image” continue to be broadly popular and command millions of dollars each year in merchandising revenue. His children own an entity called Fifth Six Hope Road, Music, Ltd. which was formed to acquire and exploit the assets, rights and commercial interests of their late father. In 1999, Hope Road granted Zion Rootswear, LLC, an exclusive license with regard to the use of Bob Marley’s image on various clothing and other merchandise.

After discovering that several companies had been selling t-shirts and other merchandise with the image of Bob Marley on them, Hope Road and Zion brought a lawsuit against them and included a claim for “false endorsement” under 15 USC §1125(a). (This article does not address the other claims pursued in this lawsuit.)

After trial, a jury found that the Defendants were liable under a false endorsement theory and awarded Plaintiffs almost $800,000 in damages plus their attorney’s fees of approximately $1.5 million. The Defendants appealed the decision to the Ninth Circuit arguing that there was not sufficient evidence to support a finding against them and that Plaintiffs’ use of the false endorsement claim under 15 USC §1125 effectively created a federal “right of privacy,” which Congress had not intended. Continue Reading


Posted in Patent Law

The Supreme Court recently decided a patent case involving a significant procedural issue.  In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (1/20/15), the question before the Court was whether the Federal Circuit Court of Appeals should review a district court’s factfindings in its claim construction decision under a de novo or a “clearly erroneous” standard.   The Court held that the proper standard of review, under Federal Rule of Civil Procedure 52(a)(6), is “clearly erroneous.”  The case establishes a two-part standard of review of a district court’s claim construction decision: a clearly erroneous standard for subsidiary facts and a de novo standard for the question of law.

The case involved Teva Pharmaceuticals’ patent for a method of making a drug to treat multiple sclerosis.  Sandoz began to sell a generic version of the drug.  Teva Pharmaceuticals sued Sandoz for patent infringement.  The claim at issue referred to a polymer having a specific molecular weight.  Sandoz argued that Teva Pharmaceuticals’ patent was invalid because the term “molecular weight” was indefinite.  Sandoz contended that there were three possible meanings of “molecular weight,” and that the patent did not explain which one was to be used.

The district court held that the patent was valid, based on expert testimony, finding that the term “molecular weight” was definite to a person skilled in the art. Continue Reading

The Blurred Lines of an Infringement Action

Posted in Copyright Law

transparentMany of you may be familiar with the pop hit “Blurred Lines” by Robin Thicke, Clifford Harris, more popularly known as T.I., and Pharrell Williams (the “Composers”).  If it does not sound familiar by title, perhaps you may recall it for its controversial nudity laden music video, or the fact that it was the song performed by Thicke and Miley Cyrus at the MTV Video Music Awards in 2013 when Miley’s scandalous conduct went viral and shocked the world—including Thicke’s spouse.  However, what you may be less familiar with is the fact that the heirs of Motown great Marvin Gaye (the “Heirs”) have been threatening to sue the Composers since at least early 2013.  The Heirs claim that “Blurred Lines” infringes their copyright in the Marvin Gaye song “Got to Give it Up.”  However, in August 2013, after months of discussion on the issue, the Composers opted to file an action for declaratory relief in the United States District Court for the Central District of California, seeking a judgment that “Blurred Lines” does not infringe “Got to Give it Up.”  The justification there was likely that sometimes the best defense is a strong offense.  The Heirs then filed a counterclaim for copyright infringement alleging that “Blurred” Lines” does in fact infringe “Got to Give it Up” and also that another song by Robin Thicke and Paula Patton—“Love After War”—infringes Marvin Gaye’s song “After the Dance.”  The trial on this matter began on February 24, 2015 and is currently ongoing. Continue Reading

IP in the NFL: “I’m Just Here So I Won’t Get Fined,” or Are You?

Posted in Trademark Law

transparentJust last week, on February 18, 2015, Seattle Seahawks superstar running back Marshawn Lynch (“Lynch”), also known as Beast Mode, filed for a federal trademark with the United States Patent and Trademark Office (“USPTO”) for his now famous quote—“I’M JUST HERE SO I WON’T GET FINED.” For those of you who are not big NFL fans, Lynch coined his now signature phrase during the Super Bowl XLIX Media Day. This did not come as a huge shock to most NFL fans because Lynch has developed a reputation for avoiding the media and refusing to fulfill the media obligations of one of the league’s brightest superstars. However, in the face of the NFL’s threat of a $50,000 fine if he refused to participate in Super Bowl XLIX Media Day, Lynch decided to play ball. In response to over 20 proffered questions, Lynch simply responded, “I’m just here so I won’t get fined.”

This caused quite the outrage from the media and certain sports fans—mostly 49er fans (we all know how they adore the Seahawks), who found Lynch’s conduct unprofessional and disrespectful. But, say what you will about Lynch’s unprofessional conduct and disregard for his obligations as an NFL superstar, the fact is the man knows how to exploit and protect his own intellectual property. Continue Reading

Congress is Reconsidering “Anti Troll” Legislation

Posted in Patent Law

On February 5, 2015, Congressman Bob Goodlatte reintroduced the “Innovation Act”; a bill designed to implement several changes to the legal framework governing United States patent law. The law is designed to make it more difficult for non-practicing entities (also known as “patent trolls”) to maintain patent infringement lawsuits. The law appears to have significant support among both houses of Congress, and may soon become law.

If passed, the Innovation Act purportedly will create several disincentives aimed at increasing the risk faced by non-practicing entities when bringing patent infringement lawsuits. First, the Innovation Act would require non-practicing entities to meet a heightened pleading requirement. Non-practicing entities would be required to plead “with detailed specificity” how the accused products allegedly infringed their patents. Additionally, the Innovation Act contains a fee-shifting provision which would allow the court to award attorneys’ fees to the prevailing party. This provision was included in the Act to address the fact that most lawsuits brought by non-practicing entities are settled by the accused party because the defense costs and legal fees associated with defending patent infringement cases often run into the millions of dollars. Continue Reading

The Left Shark, Katy Perry and Copyright Chum

Posted in Copyright Law

What do you get when you take one shark costume, add a confused backup dancer, throw in Katy Perry and the Super Bowl halftime show and top it off with a satirical artist with a 3D printer? First the backstory.

The “Left Shark” in question is a Katy Perry backup dancer who was dressed in a shark costume for Perry’s beach-themed number “Teenage Dream” during the Super Bowl halftime show. The Left Shark (the dancer to Perry’s right) seemed to have forgotten his dance moves — how else could you explain the flailing of fins. The Internet took notice; so did 3D sculptor Fernando Soza.

Soza’s satirical barbs are usually reserved for the politico set, such as Governor Chris Christie wearing a traffic cone and carrying a sign that reads “traffic study”. However, this time he took aim at the Left Shark and created a 3D printed sculpture of one regular shark, one pink shark and one holding a beer bottle.

So what do you get when you take one shark costume, add a confused backup dancer, throw in Katy Perry and the Super Bowl halftime show and top it off with a satirical artist with a 3D printer? You have the makings for a copyright dispute, of course. What else could there be? Continue Reading

Protecting Trademarks and the Likelihood of Confusion Factor

Posted in Trademark Law

A few years ago, I wrote a column addressing a case in which Pom Wonderful LLC sued Coca Cola Company in connection with the marketing of one of its pomegranate-blueberry juice products.  That case dealt with whether one of Pom Wonderful’s claims were barred by the Federal Drug and Cosmetic Act with regard to labeling issues.

Ever protective of its brand, Pom Wonderful was recently successful before the Ninth Circuit in a trademark infringement case.  Pom Wonderful sued a competing pomegranate beverage maker doing business under the name Pur Beverages for trademark infringement.  After the district court denied Pom Wonderful’s motion for preliminary injunction barring the defendant from selling its competing beverage, Pom Wonderful appealed to the Ninth Circuit.

Pom Wonderful owns numerous trademark registrations that make up its “Pom” brand family.  Pom Wonderful spends significant sums in marketing its products and policing against other companies’ uses that may infringe on its trademarks.   In connection with these efforts, Pom Wonderful discovered that Pur was selling a pomegranate flavored energy drink that it called “Pŏm”.  When Pur refused to change its marking, Pom Wonderful sued it for trademark infringement and moved for an injunction.

Continue Reading


Posted in Patent Law

The Federal Circuit Court of Appeals has applied the Supreme Court’s test for unpatentable abstract ideas to patents covering methods to determine a person’s likelihood of getting certain types of cancer.

In University of Utah Research Foundation v. Ambry Genetics Corp., 2014 U.S. App. LEXIS 23692, decided by the Federal Circuit on December 17, 2014, the court addressed the patentability of two types of claims:  compositions and methods.  The composition claims were directed to single strands of DNA called “primers” that correspond to the double-stranded DNA of a gene.  The method claims were directed to diagnostic methods used to determine whether a patient carries a particular gene mutation that carries an increased risk of breast and ovarian cancer.

The plaintiffs were Myriad Genetics, University of Utah, and others.  They discovered the BRCA1 and BRCA2 genes that, when mutated, cause breast and ovarian cancer.  Myriad developed diagnostic test kits to detect the presence of the mutations.  Myriad patented the natural gene sequences, synthetic primers, and medical test kits.

In 2013, the U.S. Supreme Court held that Myriad’s claims to the natural gene sequences were invalid.  Association for Molecular Pathology v. Myriad, 133 S. Ct. 2107 (2013).  The Court found that the gene sequences were not patent-eligible subject matter, but were instead ineligible natural phenomena. Continue Reading

Davis: Electronic Arts Gets a New Set of Downs and Still Can’t Score

Posted in Entertainment Law, Trademark Law

transparentJust over a month ago I wrote about the Davis v. Electronic Arts matter that was pending before the Ninth Circuit Court of Appeal.  Specifically, I opined that the matter was ripe for Supreme Court review in light of the circuit split that is developing with respect to the misappropriation of likeness in video games.  In my last blog, I explained that a number of legal scholars, and myself, believed that Electronic Arts had absolutely no chance of prevailing in Davis in light of an identical case that Electronic Arts lost at the trial level and on appeal (Keller v. Electronic Arts) wherein NCAA college football players brought a similar claim for the use of their likeness in the Electronic Arts video game franchise NCAA Football.  The matter was submitted to the Ninth Circuit on September 11, 2014, and the Ninth Circuit issued its opinion on January 6, 2015.

In the Davis v. Electronic Arts opinion (Case No. 12-15737), the Ninth Circuit rejected the legal razzle dazzle (pardon the football expression) raised by Electronic Arts and upheld the denial of Electronic Arts’ motion to strike the case as a strategic lawsuit against public participation (SLAPP).  Specifically, the Ninth Circuit rejected the argument that the use of the former players’ likeness was protected under the First Amendment as “incidental use.”  The Court disagreed with Electronic Arts’ characterization of the role of the former players’ likeness in the video game because it was central to Electronic Arts’ main commercial purpose: to create a realistic virtual simulation of football games involving current and former NFL teams.  Electronic Arts acknowledged that the likeness of the current NFL players carries substantial commercial value and failed to offer a meaningful distinction with respect to the former NFL players.  Instead, it argued that there are thousands of players in the video game and accordingly, any individual player’s likeness has only “de minimis commercial value.”  However, the Court refused to accept this highly technical argument and instead found “no basis for such a sweeping statement.” Continue Reading