Imagine you just finished reading your favorite book series about vampires and werewolves, which you purchased at Costco at a significant discount.  Or perhaps you bought your favorite Dracula knockoff on eBay from an overseas retailer.  Finding no need to re-read the books, or re-watch the movies, you decide to recoup some of your hard-earned money by selling the books and movies on Craigslist.  Have you committed copyright infringement?  Possibly.

The answer to this question may soon be understood when the United States Supreme Court rules on the matter of Supap Kirtsaeng d/b/a Blue Christine99 v. John Wiley & Sons, Inc. (”Kirtsaeng”).  In the Kirtsaeng case, the United States Supreme Court has been asked to define the limits of the First Sale Doctrine under United States Copyright Law.  The decision may have a far-reaching impact on the ability of so-called “gray market” retailers such as Costco and eBay to sell copyrighted goods at discount prices.

Continue Reading Is it the Twilight of a New Era for the First Sale Doctrine?

By: Lisa Y. Wang and Matthew N. Sugarman 

Some Facebook trends are more fun than others (remember the annual Doppelganger Week and the "25 Random Things About Me" trend in 2009?).  This past week a different Facebook status trend took hold: a copyright disclaimer.  Millions have been posting a copyright notice as their Facebook status because they believe it will prevent Facebook from using their intellectual property (such as pictures, status updates, clever memes, and everything else we put on Facebook) without their permission.  These copyright notice status updates first appeared in May 2012 after Facebook went public and resurfaced over Thanksgiving after a rumored change in Facebook’s user agreement.  And, it’s as ineffective now as it was back then.  Below is the legally worthless notice:

In response to the new Facebook guidelines I hereby declare that my copyright is attached to all of my personal details, illustrations, comics, paintings, professional photos and videos, etc. (as a result of the Berner Convention). For commercial use of the above my written consent is needed at all times!

 

(Anyone reading this can copy this text and paste it on their Facebook Wall. This will place them under protection of copyright laws. By the present communiqué, I notify Facebook that it is strictly forbidden to disclose, copy, distribute, disseminate, or take any other action against me on the basis of this profile and/or its contents. The aforementioned prohibited actions also apply to employees, students, agents and/or any staff under Facebook’s direction or control. The content of this profile is private and confidential information. The violation of my privacy is punished by law (UCC 1 1-308-308 1-103 and the Rome Statute).

 

Facebook is now an open capital entity. All members are recommended to publish a notice like this, or if you prefer, you may copy and paste this version. If you do not publish a statement at least once, you will be tacitly allowing the use of elements such as your photos as well as the information contained in your profile status updates.

 

Continue Reading Facebook Status v. the Law

By: Dale C. Campbell 

The United States Supreme Court heard oral argument last month in the Kirtsaeg v. John Wiley & Sons, Inc. case that may finally determine if the First-Sale Doctrine in copyright law applies to goods manufactured outside of the United States. 

The holder of a U. S. copyright has the “exclusive rights . . . to distribute copies . . . of the copyrighted work to the public by sale or other transfer of ownership . . ..”  (17 U.S.C. § 106(3).)  Importation of a copyrighted work into the United States without the authority of the owner of the copyright constitutes infringement.  (17 U.S.C. § 602(a).)  The First-Sale Doctrine is codified in section 109(a) and provides that, notwithstanding other provisions of the Copyright Act, “the owner of a particular copy . . . lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy . . ..”  The First-Sale Doctrine is based on the concept that, once the copyright owner consents to the first sale of a protected copy, the owner has exhausted its right to control the subsequent distribution or sale of those copies.

Continue Reading THE FIRST-SALE DOCTRINE AND FOREIGN MANUFACTURED GOODS: THE ANSWER IS FORTHCOMING

By: Scott Hervey

Often in trademark cases, the goods or services at issue are either exactly the same, related or complementary.  In cases where the goods are non-competitive or not related, often that will be the end of the inquiry into likelihood of confusion.  However, in the case of non-competitive goods, infringement can be found where a junior user began using a mark for such goods before the senior user where the senior user is able to show it is likely that it will enter into this market.  Courts refer to this as “bridging the gap.” Some courts examine this under the framework of the senior user’s interest in preserving avenues of expansion and entering into related fields.   Other courts look at it as a question of whether it was likely that a senior user would enter into a different product market currently occupied by a junior user.  Either way, in certain cases it can be a crucial factor in determining likelihood of confusion.

The test of trademark infringement under state, federal, and common law is whether there will be a likelihood of confusion.  In the 9th Circuit, to determine whether there is a likelihood of confusion, a court will engage in an analysis of the eight factor test set forth in the seminal case of AMF Inc. v. Sleekcraft Boats.  Those factors are the, (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines, sometimes also referred to as “bridging the gap.” Some Sleekcraft factors, such as the first three, tend to get more attention and are considered more important than the others.   However, in trademark cases dealing with noncompeting goods, courts will look at the “bridging the gap” factor to determine whether it is likely that that trademark owner will expand its line of trademark products to include the type of product being sold by the defendant.

Continue Reading Bridging the Gap in Cases of Trademark Infringement

By: James Kachmar

Frequent readers of this column will recall our discussions concerning the defense of laches in copyright infringement actions. Last month, the Ninth Circuit revisited this issue and considered the willful infringement exception to the laches defense in the case, Evergreen Safety Council v. RSA Network, Inc.

Evergreen and RSA are both involved in providing training for pilot escort vehicles (these vehicles that help escort oversized vehicles). Evergreen and RSA publish training manuals in connection with state pilot vehicle training programs.

Continue Reading Evergreen – Copyright Infringement, Laches and the Willful Infringement Exception