Infringement – Law Street

One More (Legal) Reason You Can’t Be Batman

Fri, 25 Sep 2015 14:20:45 +0000

Image Courtesy of [Jo Jakeman via Flickr]

With nearly 13,000,000 likes on Facebook, it comes as no surprise that Batman has a large group of devoted fans who likely relish the idea of traveling in true Dark Knight fashion. Mark Towle, owner of Gotham Garage and manufacturer of functional Batmobile replicas, has made that dream a reality for many loyal fans and avid car collectors. Boasting ticket prices of approximately $90,000, Towle’s vehicles include features such as “custom bat insignias, wheel bats” and a “bat steering wheel.” However, the iconic Batmobile, driven by the comic book hero in his efforts to protect Gotham, is now exclusively available to Batman himself. A court has ruled that the iconic crime fighting vehicle, equipped with onboard weapons systems, has enough distinct character traits to be eligible for copyright protection and holding that Towle’s replicas qualify as infringement.

The U.S. Ninth Circuit Court of Appeals for Central California issued a 28-page opinion, written by Judge Sandra Ikuta, affirming a ruling against Towle, who advertised his vehicles as the “Batmobile” and marketed them on his website batmobilereplicas.com.

DC Comics, who initiated an infringement lawsuit against Towle in May 2011, holds the rights to the Batman character, as well as all of his crime-fighting adventures. Towle argued that the protection of the Batman character does not extend to the car and that The Batmobile, as it appeared in the 1966 television show and 1989 film, is not subject to copyright protection.

However, Ikuta wrote Wednesday that “no matter its specific physical appearance, The Batmobile is a ‘crime-fighting’ car with sleek and powerful characteristics that allow Batman to maneuver quickly while he fights villains.” Therefore the vehicle qualifies as a comic book character, identifiably distinct by its features and protectable by copyright.

In its decision, the court engaged in some serious (and bad-ass) legal analysis, examining the car’s history of tearing up “the street like a cyclone,” making specific reference to its “jet engine” and referring to the vehicle as a “sidekick.” Careful consideration was given to the “emergency bat turn,” the automobile’s “Batmissle mode” and the “flame-shooting tubes that undoubtedly give the Batmobile far more power than an ordinary car.”

“As Batman so sagely told Robin,” Ikuta concluded, “In our well-ordered society, protection of private property is essential.”

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Katy Perry Claims Left Shark is Her Intellectual Property and Files Suit

Anneliese Mahoney — Sat, 07 Feb 2015 14:30:44 +0000

Image courtesy of [Samantha Sekula via Flickr]

Katy Perry’s halftime performance at last week’s Super Bowl was really great, but it wasn’t without its moments of humor. Unfortunately, one of those moments of humor has now sparked the pop star’s legal team to file a lawsuit.

One of those great moments that came out of the performance was during Perry’s rendition of her hit song “Teenage Dream.” She did it as a beach-themed segment of the show, and no beach-themed dance would be complete without giant humanoid sharks doing complicated choreography. Unfortunately, one of Perry’s two sharks, now dubbed “Left Shark,” didn’t really do so well. Instead of following the sharp choreography, “Left Shark” kind of just flopped around. See for yourself:

Oh Left Shark. We’ve all known the struggle.

Left Shark has sparked a bunch of spin offs though:

This meme is soooooo much fun…. Valentine’s Day anyone? #sharks #leftshark pic.twitter.com/StDC2xEDc1

— John (@Hayler97) February 4, 2015

Everyone really does love Left Shark. So much so that people have started producing Left Shark items. One company that tried to monetize Left Shark was called Shapeways; it’s a 3D printing company that sells 3D-printed figurines of famous people, such as politicians or celebrities. It started selling a Left Shark figurine; however, it just received a cease and desist letter from Perry’s lawyer.

Fernando Sosa who runs Shapeways, posted a picture of the cease and desist letter on Instragram. It claimed that Left Shark was Perry’s “intellectual property.” Part of the letter read:

As you are undoubtedly aware, our client never consented to your use of its copyrighted work and [intellectual property], nor did our client consent to the sale of the infringed product. Your infringing conduct entitles our client to significant legal relief against you, which may include actual damages, statutory damages, and punitive damages, as well as immediate and permanent injunctive relief.

What exactly does Katy Perry claim is her intellectual property though? The shark costume itself? It looks like a pretty basic shark costume if you ask me, and courts have often ruled that you can’t trademark costumes. Because they’re clothing, and viewed as an “essential article,” they’re often considered beyond what copyright protection can protect.

So, is she trademarking the concept of “Left Shark” then? That also seems like a stretch. The whole Left Shark debacle occurred because the dancer screwed up and/or forgot the choreography. It wasn’t planned, it was a happy, hilarious accident. Can she really claim that something is her intellectual property if it wasn’t something she came up with?

The cease and desist letter seems more like it was an attempt to scare Sosa and Shapeways, rather than a legitimate threat of legal recourse. Sosa has stopped selling the figurines, but it still seems like a petty move on Perry’s part. After all, all the buzz about Left Shark means people are talking about her halftime show. There’s also been plenty of other Left Shark merchandise produced:

Just bought my very own #LeftShark tshirt!! pic.twitter.com/3qD54F2Syb

— Methibosheth Ichabod (@methibosheth) February 5, 2015

Will Katy Perry send letters to everyone who creates something that’s Left Shark-themed? With the proliferation of pictures on the internet, that may be difficult. It will be a shame if Left Shark disappears just because Katy Perry is grumpy.

Anneliese Mahoney

Anneliese Mahoney is Managing Editor at Law Street and a Connecticut transplant to Washington D.C. She has a Bachelor’s degree in International Affairs from the George Washington University, and a passion for law, politics, and social issues. Contact Anneliese at amahoney@LawStreetMedia.com.

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Getty Images’ New Approach to Copyright is Bad For Artists

Wed, 19 Nov 2014 11:30:30 +0000

Image courtesy of [Mary Crandall via Flickr]

As a future law student who plans to focus my studies on Intellectual Property, I navigate news aggregation sites thirsty for some juicy copyright and trademark infringement stories. Protecting and recovering property is what I’m about. After all, there’s ingenuity, labor, and profit to protect!

Therefore, when Getty Images turned over a new legal leaf this week, I found myself confused, annoyed, and relying on my inherent sarcasm to get me through this bit of tough IP news.

Getty Images, a large and well-known image licensing company, is seeking to make less aggressive copyright enforcement a priority. Aww, so endearing, isn’t it? *Cue eye roll*

For years, Getty has been equipped with (and fully utilized) software that flags illegal reproductions of its images on the Internet. Once flagged, Getty would send a rather stern note to the party that is allegedly infringing its content. Threats in the letter include costly litigation avoidable by settlement penalty payments and licensing and enforcement fees.

Recently, the leader of Getty Images’ global legal team, John Lapham, explained to GigaOm how Getty’s “enforcement policies are being ramped down…We’ve changed the program quite a bit to remove penalty and fees.”

Retrospectively, there were hints along the way. In March, Getty allowed free embedding of a majority of its images. For Getty, the move allowed access to more user data, advertisement insertions, and metered payments to Getty photographers. For users, the watermark was removed from this group of images, but critics still say “the implementation is hideous.” Ouch.

A Getty spokesperson extended Lapham’s explanation, stating in an email:

Our aim is to approach infringers as customers and to educate them—and anyone else who is new to licensing—about how to license imagery properly. To this end, at the beginning of this year we changed our approach to remove additional fees—“fees” being a percentage of the costs we incur in detecting unauthorized use and recovering the cost of the license. We now endeavor to recover the cost of the license fee only—there is no additional fee or penalty—and we only seek payment from registered businesses that are using an artist’s exclusive content to promote their own business.

So, Getty wants to treat infringement as just a customer mistake. A far cry from the intense lawsuit spree it executed earlier this year.

I appreciate the little licensing lesson that Getty is offering. But I disagree. A photographer worked hard for that photo, positioning the subjects, adjusting the lighting, staging the background. As Getty tries to promote its new tactic as one that helps the creative community, my years of studying communication and media make that hard for me to believe. The credibility associated with Getty is built upon the corporate and legal muscle it provides for artists. By diluting that practice, I worry and feel for the artists who license their work through the company.

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Your Nighttime Eiffel Tower Pictures Are Illegal

Wed, 12 Nov 2014 20:03:58 +0000

Image courtesy of [Flikr via Tommie Hansen]

Previous fun facts about French life have let us in on a little secret: French people are picky. Each French city’s mayor or maire possesses the authority to establish policies that maintain public order. In Paris, rules vary according to arrondissement, or district.

So, the French are detail oriented. They like their rules and that’s okay.

However, their latest regulation—on copyright—is so strict that it’s funny. La Tour Eiffel, the Eiffel Tower’s official website states that although snapping some photos of the famous landmark is alright in the daylight, pictures are off limits when the sun goes down. My deepest condolences to anyone who ever dreamed of having a nighttime Parisian wedding photo shoot. The website explains, “its various illuminations are subject to author’s rights as well as brand rights. Usage of these images is subject to prior request from the “Société d’Exploitation de la Tour Eiffel.”

The structure of the Eiffel Tower itself is in the public domain. What isn’t in the public domain is the show put on at night during which different color lights are projected onto the landmark. That, instead, belongs to an artist who takes liberties and utilizes style to determine which lights, colors, speed the illuminations take place. Therefore, a reproduction of the work would require permission—and perhaps compensation—of said artist.

Essentially, it’s a time issue. The Eiffel Tower was built long before pretty lights were shone on it. This EU Information Society Directive includes a clause asserting that buildings in public spaces are to be in the public domain. However, France is one of the countries that refrained from adopting the directive into its law. Italy and Belgium also refused the directive and retained their stricter policies. Belgium experiences the same issues with its Atomium, delineating on its website that “the image of the Atomium is protected and can only be used under certain conditions…Prices depend on whether it is to be used for a cultural, educational or commercial purpose.”

One must ask: when copyright law restricts something so large, so famous, and so iconic, how can it truly be enforced?

Wikipedia pages are being careful about it. Atomium pages include censored images or photographs of Atomium models. Poor Instagram will probably never see the legal light show. Illegal, however, can be found by a simple search of #eiffeltower. Google Images is chock-full o’ examples.

Ultimately, the regulation probably isn’t causing any tourists severe angst. That doesn’t, however, detract from the fact that it is copyrighted and nighttime Eiffel Tower pictures constitute infringement. We may take for granted our ability to legally Instagram post Lady Liberty at 3:00am with abandon.

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U.S. Copyright Law: Enough Protection for Artists?

John Gomis — Fri, 12 Sep 2014 18:00:52 +0000

Image courtesy of [Horia Varlan via Flickr]

In the age of the internet, phones with cameras, and digital picture-taking, it’s become much easier to “steal” artistic property. Both the United States and the international community try their best to prevent the theft of artistic and intellectual material through copyright laws. In addition to regular copyright laws, there also exists something called “moral copyright.” Moral rights are artists’ rights to protect the integrity and ownership of their copyrighted works. They include the right of attribution, the right to have the work published anonymously or pseudonymously, and the right to the integrity of the work. Preserving the integrity of the work creates limitations upon the rights of others to distort the work, alter it, or do anything that attenuates the artist’s relationship with the work.

Read on to find out how both artists’ copyright and moral copyrights are protected by law, the effectiveness of the laws, and the arguments for and against the different laws in place to protect artists’ rights.

U.S. Copyright Law

The stated purpose of U.S. Copyright law is “to promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Copyright law protects many forms of artistic works including literary, musical, dramatic, pantomimes and choreographic works, pictorial, graphic, and sculptural works, audiovisual works, sound recordings, derivative works, compilations and architectural works. Even though the realm of works protected is wide, there are differing levels of protection that apply for some of these works. For example, sound recordings are protected in a different manner than written documents are.

Copyright law protects the author’s manner of expressing the idea but it does not protect the idea itself. This means that copyright-protected works of authorship can still be plagiarized under the law. For example, a paper that describes a scientific theory may be protected from reproduction or distribution, but someone else can restate the theory with a different manner of expression and circumvent the original creator’s copyright protection.

Copyright protection ensures that the protection of the work lasts longer than the person who created it. Current law mandates that an individual person’s copyrighted works are protected for the duration of his or her life, plus 70 years afterward. For works created by multiple authors, the length of the protection is based on the life of the last surviving author. If a work is made for hire, an anonymous and pseudonymous works (where the author’s identity is not in Copyright Office records), the duration of protection will be ninety-five years from publication or one hundred and twenty years from creation, whichever is shorter. This makes it less likely that an author’s work will fade into the public domain before he or she has a chance to reap its full commercial value. This also serves as somewhat of a safeguard to an author’s legacy after he or she has passed on.

Copyright protection does not exist for articles that have a “useful function.” For example, an artist’s drawing of a train would be protected by copyright, also the creation of a 3D model of the train would be actionable. However, creating an actual, working version of the depicted train would not be actionable under copyright law. Some creators’ work have both useful and non-useful, aesthetic attributes. Copyright law protects the aesthetic attributes but not the useful ones. If the aesthetic attributes cannot be separated from the useful ones, then the owner does not receive federal copyright protection. This means that owners can potentially lose copyright protection because their creation has applications that are useful to society.

Why do proponents argue in favor of current American copyright laws?

Proponents of the adequacy of U.S. copyright law argue that the duration of the rights gives authors time to effectively profit from their work without fear of having their labors stolen. The law properly makes exceptions for certain socially valuable non-commercial uses of copyrighted material by providing such users with Fair Use as a defense to an infringement claim. This allows copyrighted works to be used for socially beneficial purposes before the expiration of protection without infringing on the author’s commercial or economic interests. The substantiality requirement prevents frivolous uses of copyright protection e.g. for single words.

Why do opponents argue against current American copyright laws?

Opponents of the adequacy of U.S. Copyright protection argue that the exceptions are too broad and too easy to invoke. In certain situations, alleged infringers can cause significant economic damage to a creator’s interests and still be protected by a defense granted by copyright law. Copyright protection only protects the author’s manner of expression, not his ideas. Ideas can often still be plagiarized without giving rise to a copyright infringement claim. Also, useful articles that don’t qualify for patent protection still don’t get copyright protection. Since patent protection is more difficult to obtain and has a shorter duration than copyright protection, some authors are disadvantaged by the usefulness of their work, which is contrary to the purpose of the Copyright Clause of the Constitution. Finally, if content is too minimal then copyright law does not protect it.

Moral Copyright Laws in the United States

U.S. Copyright law does not recognize moral rights beyond the extent to which they are recognized by the Berne Convention, of which the U.S. is a member.

The rationale for the lack of additional moral rights protections in federal law is that Congress believed that they were unnecessary because other areas of law are sufficient to protect artists’ interests. U.S. copyright law, governed by the Copyright Act of 1976, already grants artists the exclusive right to create derivative works. Defamation laws, unfair competition laws and trademark laws governed by the Lanham Act grant artists sufficient civil claims against entities who intentionally or recklessly mislead the public about an author’s work and those who attempt to profit from such conduct. Moreover, certain states have created their own moral rights laws, mitigating the need for a federal statute.

Furthermore, the Visual Artists Rights Act of 1990 (VARA) provides increased moral rights to certain types of art i.e. paintings, drawings, prints, sculptures and still photographic images that are produced for exhibition only, and existing in single copies or in limited editions of 200 or fewer copies, signed and numbered by the artist. These rights include the right to claim authorship, the right to prevent the use of one’s name on any work the author did not create, and the right to prevent use of one’s name on any work that has been distorted, mutilated, or modified in a way that would be prejudicial to the author’s honor or reputation. Authors of works of “recognized stature” may prevent the grossly negligent or intentional destruction of their work. The phrase “recognized stature” has not been statutorily defined, but there is a lot of case law interpreting the same. VARA rights only apply to a limited set of works but the protections for those works are substantial. Buyers of the works must get written waivers from the copyright owners if they wish to employ any VARA rights. If the rights are not waived then the author or last surviving author of a joint work generally retains them for life.

What are the arguments for keeping the moral copyright laws as they are?

Proponents of the sufficiency of U.S. moral rights law argue that VARA grants vast protection to artists. VARA rights generally last for life and they can only be extinguished by signed, written waivers. They are secure enough to ensure that artists have recourse to act when owners of individual instantiations of their work infringe their creative rights. Furthermore, even when VARA rights don’t vest in an artist’s work, he or she can still utilize copyright, defamation, unfair Competition laws, or any relevant state statute, to defend moral rights of their work.

What are the arguments against keeping the moral copyright laws as they are?

Opponents argue that there are many works that VARA does not protect. For example, VARA doesn’t apply to written works or to works made for hire. Also, since copyright law does not protect ideas, an author who is known for innovating an idea cannot utilize copyright law to protect the moral rights to that idea. Finally, state moral rights laws vary and it is difficult for an artist to know if the state he or she is located in will have jurisdiction over the alleged infringer of their Moral Rights.

Conclusion

Given that art is so subjective and so rarely indexed, it can certainly be difficult for artists to protect their work. There are many different kind of laws in place to protect artists’ copyrights, including some laws that loosely protect moral copyrights. While there are disagreements about the effects and implementations of the laws, its clear that artists’ works do need to be protected.

Resources

Primary

U.S. Congress: 17 USC 501 Infringement of Copyright

Cornell University Law School: Visual Artists Rights Act of 1990

U.S. Congress Committee on the Judiciary: Copyright Law Revision

Additional

McClanahan Powers: Innocent Copyright Infringers: The Importance of an Adequate Copyright Notice to Defeat Them

Electronic Frontier Foundation: New Study Affirms Fewer Copyright Restrictions Benefit the Economy, Amid Renewed Calls for SOPA 2.0

Copyhype: Who Benefits from Copyright?

Law and Economics Consulting Associates: Agreed Use and Fair Use: The Economic Effects of Fair Use and Other Copyright Exceptions

Harvard Law School: Moral Rights Basics

Library of Congress: Waiver of Moral Rights in Visual Artworks

Washington University in St. Louis: Economists Say Copyright and Patent Laws Are Killing Innovation; Hurting Economy

TechDirt: Yet Another Study Shows That Weaker Copyright Benefits Everyone

Buffalo Intellectual Property Law Journal: A Case of Bad Credit? The United States and the Protection of Moral Rights in Intellectual Property Law

Washington and Lee Law Review: Toward an American Moral Rights in Copyright

Boston University International Law Journal: Protecting Moral Rights in the United States and the United Kingdom

Information Today: Moral Rights for Authors and Artists

Stanford Encyclopedia of Philosophy: Intellectual Property

Brian Leiter’s Law School Reports: Protecting Philosophical Ideas With Copyright?

U.S. Copyright Office: Reproduction of Copyrighted Works by Educators and Librarians

College Art Association: Intellectual Property and the Arts

Leech Tishman: Litigation; a Counterfeit Pays

Golden Gate University Law Review: The Visual Artists Rights Act of 1990: Further Defining the Rights and Duties of Artists and Real Property Owners

vLex: VARA Rights Get a Second Life

John Gomis

John Gomis earned a Juris Doctor from Brooklyn Law School in June 2014 and lives in New York City. Contact John at staff@LawStreetMedia.com.

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Supreme Court Makes it Easier to be a Patent Troll

Erika Bethmann — Thu, 05 Jun 2014 13:45:41 +0000

The Supreme Court set software industry precedent on Monday with the unanimous reversal of a 2006 ruling in the patent infringement suit between Akamai Technologies Inc. and Limelight Networks Inc. Akamai had originally testified that Limelight encouraged its customers to violate an Akamai patent by copying technology to improve website traffic efficiency. The initial ruling was made under the doctrine of “induced” infringement, which tests liability by determining if the violator “knowingly induces others” to fully commit the crime, rather than first party infringement.

With five dissenting votes the decision was one of much dispute because it did not fit the parameters of classic patent infringement. In December 2013, the Solicitor General advocated a review of this ruling based on the concept of “divided” infringement. This notion challenged the traditional definition of patent infringement, which typically includes a purposeful violation committed by a single entity. In the case of Akamai v. Limelight, multiple independent users took some steps toward infringement, thus muddling the controversy and ultimately leading to this week’s reversal. Many top tier companies, such as Facebook, Google, and Oracle supported the reversal, asserting that they would have faced mountains of claims and skyrocketing litigation costs across the board had Akamai won the suit.

The complexity of this case’s nuances bring up greater concerns about the growing disparity between the context of the Patent Act’s conception more than two centuries ago, and today’s technological advances. Copying someone else’s invention is now as simple as downloading a file with the click of a button. Had Limelight been defeated, we would have seen a staggering increase in the already heavy burden of patent infringement suits on the technology community.

The nature of the patent industry has developed in the twenty first century from tangible products to cloud-based software. According to the Wall Street Journal, as of 2012 technology patents accounted for more than half of all the patents granted that year. This trend in software research and development has essentially turned patents into the type of invaluable investments that brick-and-mortar manufacturing used to be.

Due to this change it seems that trolling is no longer exclusive to social media. We’ve seen the rise of non-practicing entities (NPEs), more commonly known as “patent trolls”. These players work to build and enforce litigation for other people’s patents in the effort to collect licensing fees. The reversal of the Akamai v. Limelight case lifted helped to restrict the possible business of this secondary patent industry that typically hindered innovation by tying up inventors in legal trials.

It seems to me that while top companies, like Apple and Google, continue to push the limits of technology, they are simultaneously presented with a paradoxical challenge. As the only safeguard against having their ideas stolen by or credited to others, patents continue to serve as the blood of the technology industry.

On the other hand, patent trolls and entrepreneurs that use patent licensing business models to prematurely buy, sell, and trade patents have effectively altered the industry. In a way, patents are no longer fostering innovation but are rather sold to the highest bidder who may not actually create the best product, despite their sole rights to it. Unfortunately, these third-party entities of patent trolls and NPEs are driven by money, and when money is paired against the dreams of inventors, money typically wins. This is especially true with startups that don’t have the gross capital and market share of companies like Apple. In the end, true innovators, and the consumer audience they hope to serve, are the ones that tend to be on the losing end.

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Erika Bethmann (@EBethmann) is a New Jersey native and a Washingtonian in the making. She is passionate about travel and international policy, and is expanding her knowledge of the world at George Washington University’s Elliot School of International Affairs. Contact Erika at staff@LawStreetMedia.com.

Featured image courtesy of [Alexandre Dulaunoy via Flickr]

Erika Bethmann

Erika Bethmann is a New Jersey native and a Washingtonian in the making. She is passionate about travel and international policy, and is expanding her knowledge of the world at George Washington University’s Elliot School of International Affairs. Contact Erika at staff@LawStreetMedia.com.

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Free-Per-View: Facebook vs. BreakYourFacebook

Gena Thomas — Wed, 30 Oct 2013 23:10:12 +0000

Cody Romano, creator of BreakYourFacebook, has been threatened with a lawsuit by the social media powerhouse that I love to hate: Facebook. (And no, I don’t have an account.) BreakYourFacebook is a webapp that allows Facebook users to regulate how much time they spend on the site. Users indicate how long of a hiatus they’d like to take from Facebook, and then the app generates a new password (not to be memorized) and sends a reminder on the scheduled date. Now that’s a new concept for the younger members of society — a technological tool to schedule your detachment from technology. It helps reduce time wasted on Facebook so people can actually live the lives that they simulate on the site. I like it. Facebook? Eh. Not so much.

Romano, a software engineer from Cambridge, said that he was “rudely” told in an email that he would face fines and a possible lawsuit if he did not immediately obliterate his webapp. The cease-and-desist letter was sent to him on Monday, and included brief discussions of why his registration and use of BreakYourFacebook.com violated the Lanham Act and infringed on the ‘Facebook’ trademark. Facebook doesn’t seem to be attacking the application itself, but rather the domain name BreakYourFacebook.com.

When I read the email for myself, I didn’t think that it came across as crass or tactless. Honestly, it was much more amicable than the cease-and-desist letter I formulated in Trademarks Law last year, but I did want to delve into their claim of infringement under the Lanham Act. That’s right -proooo bonoooo. [Disclaimer: this is a legal opinion from a J.D. awaiting bar results. I am not licensed, and my remarks should not be used to incite any action. Analysis is provided to inspire discussion only.]

To show infringement of a mark under the Lanham Act (for a mark that has already been federally registered, like Facebook) the plaintiff would have to show:

1. That they own a valid mark;

Not an issue here. Facebook is a distinctive service-mark used in commerce to identify and distinguish its social media services from other social media platforms.

2. That another party has used the mark in commerce without their permission;

BreakYourFacebook has arguably been used in commerce because it was, presumably, used in the advertising of the site’s services — the ability to schedule time away from Facebook. Offering services through the internet has already been held to be “commerce” under the Lanham Act.

3. That the other party’s use of the mark causes a likelihood of confusion between plaintiff’s mark and the mark at issue;

Now, this is the sticky part. In the interest of time, I’ll summarize a few arguments on both ends. There are numerous factors the court considers in determining likelihood of confusion. As far as appearance, Romano could say that the marks are not visually similar because “Break” and “Your” precede the mark “Facebook.” He may win this one. Also, the marks differ on a phonetic basis as well. However, Facebook could argue that its fame makes it more susceptible to infringement. (Yes, that’s a factor to consider.) Also, the marks both concern social media services, though one is attempting to decrease the usage of social media, this could still be a factor found in favor of Facebook. Also, if Facebook’s lawyers can ascertain any evidence of actual confusion by its users, which they have the deep pockets to search for, the needle would lean significantly towards Facebook’s end of the spectrum. There’s much, much more to this, but you can see where it’s going.

4. There are damages.

Facebook could easily quantify some form of economic harm because BreakYourFacebook endeavors to limit the amount of time spent on their site. They could claim that they’ve lost consumers, that Romano somehow benefited from his unlawful conduct, etc etc.

I decided to take the time to sift through Facebook’s claim because, although I took no issue with the general tone of the letter, I did find Facebook’s use of their winning court record to be akin to bullying. Why is it acceptable for a company to say “all domain names [that have previously been] at issue were ordered to be transferred to [us]” to instill fear in potential infringers? It waives a proverbial index finger at opponents instead of simply laying out the options that a defendant may choose to invoke.

If you go to BreakYourFacebook.com, your browser will redirect you to a posting written by Romano entitled “Facebook Threatened to Sue Me.” In the note, you see that Romano has surrendered his site because he doesn’t “want to contend with Facebook’s endless legal resources.”

Well, Romano, I’m no licensed attorney, but I thought you deserved to get a glimpse of what you’re up against from an analytical standpoint versus a financial one.

Gena.

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Featured image courtesy of [Boxring Atlas Leipzig via Flickr]

Gena Thomas

Gena Thomas, a recent graduate of Howard University School of Law, was born and raised in Lafayette, Louisiana. A graduate of The University of Texas at Austin, she enjoys watching scary movies and acquiring calories from chocolates of all sorts. Contact Gena at staff@LawStreetMedia.com.

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Is “Mattelalistic” a word?

Gena Thomas — Sun, 20 Oct 2013 20:33:50 +0000

This is a fun one. Mattel, parent company of the makers of the popular board game Scrabble, has attempted to assert their U.K. trademark rights to the letter tiles used in the game. The California company sued Zynga, Inc., creators of “Scramble with Friends,” for allegedly infringing on their tile trademark. I’m sorry…what?

Mattel acquired trademark rights to the tile trademark in 2000. However, last November, Zynga obtained a summary judgment against Mattel on the grounds that the mark was not entitled to registration. Rightfully so. If Mattel were able to preclude the creation of any tile with a letter on it, wouldn’t that only increase the number of corporations attempting to monopolize trademarks? Earlier this month the decision was upheld because the trademark covering a tile, accompanied by its alphabetic and numeric markings, had the potential to be extremely large in breadth.

*gasp* You don’t say?

Needless to say, I’m pleased with the outcome of this case. Trademarks are to be used to protect the goodwill of your business. They are a vehicle for promotion and maintaining distinctiveness in the marketplace so as not to confuse consumers. However, here, Mattel was utilizing their mark to gain unfair competitive advantage. The mark the company wanted to enforce could allow them to keep competitors from creating variations of square blocks with numbers, letters, and combinations thereof.

Here’s the thing: I’m all for protecting the likeness of your brand. I can see how viewers of Zynga’s game may associate it with Scrabble. We have a word game: check. Tiles with letters on them: check. But that’s really as far as the comparison train takes us.

There are stark differences to be noted. First, Zynga’s placement of a number on the tile is in the top right versus the bottom right number placement by Mattel. Soooo…if I wanted to create a word game and indicate the value of each letter, even if I placed the number in the center, I would be subject to a trademark infringement suit? Second, even though the two games have the same objective of creating words with the letters you are given, the rules aren’t the same. One is timed and the other isn’t. One only allows you to connect letters that are adjacent to each other and the other doesn’t. Not to infer that there needs to be a long list of similarities for a judgment of infringement, but I’d say there is enough difference between the two that Mattel can’t unequivocally claim harm.

In my humble and personal opinion, this is just a matter of gluttony.

Gena.

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Featured image courtesy of [torbakhopper via Flickr]

Gena Thomas

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SOPA: The Argument is Over, but the Dust Hasn’t Settled

John Gomis — Wed, 09 Oct 2013 03:25:26 +0000

Image courtesy of [Yogesh Mhatre via Flickr]

The Stop Online Piracy Act (SOPA) was a bill proposed in Congress in 2011 that immediately made headlines because opponents argued that it was too restrictive and had the potential to hamper free speech. It did not end up passing, but the ideas and motivations behind it still remain up for debate. Read on to learn about SOPA, the legislative battles surrounding it, and where we stand now.

What was SOPA?

The provisions of the bill primarily included increased federal enforcement of copyright laws and increased government action against entities involved in copyright infringement. These provisions include allowing both the U.S. Department of Justice and private copyright holders to obtain injunctions against copyright infringement by foreign-based entities. The bill would have allowed the Justice Department to bar internet advertising networks and payment network providers from servicing infringing websites e.g. torrent websites, sites that allow streaming of copyrighted movies or TV shows, etc. SOPA also would have prevented search engines from providing links to those websites.

SOPA aimed to increase the criminal penalties infringers face under the law. For example, the penalties for economic espionage would have been a maximum of 15-20 years imprisonment and fines up to $5 million. The bill would have increased the realm of copyright crimes to include those perpetrated by “electronic means.” Criminal penalties would have increased for IP infringement of government information or infringement that results in harm to government personnel or interests.

SOPA also would have had major implications for IP civil jurisprudence. Private entities are given rights against infringers as well. If a private entity is damaged by infringement and wishes to exercise SOPA rights they could have sent written notification to payment agents and advertising networks connected with the alleged offending site who then have to inform them and cease service unless the alleged infringer can respond with a counter-notification, indicating that they are not infringing. The copyright holder would have been able to bring an action for injunctive relief against the infringing site’s owners if either a counter-notification was provided or payment networks continue serving the alleged infringer without a counter-notification. Applying SOPA rights to foreign sites would have required them to consent to U.S. jurisdiction to determine if they are dedicated to infringement.

What was the argument for SOPA?

Proponents of the bill believed that SOPA could have created a lot of benefits for the public. It created major difficulties for perpetrators of IP crime because it would have given private companies the means and authorization to enforce and protect their own intellectual property rights. This allowed IP crimes to be remedied more quickly and at a far lower cost to the public because it could be done without the time constraints and expense of adjudication. This would improve the economy by decreasing government spending on investigating and prosecuting IP crimes. The fear of facing civil litigation under SOPA and the strengthened criminal penalties would have created a strong disincentive for many forms of infringement. Furthermore, by hamstringing IP infringement SOPA would make the U.S. more attractive to authors and innovators and reinvigorate the economy with increased job creation.

What was the argument against SOPA?

Opponents highlighted SOPA’s drawbacks. Under the law, even when a valid counter-notification would have been sent, third-party servicers were not required to resume serving accused websites. SOPA also insulated the third parties from all lawsuits except those initiated by the copyright holder. Therefore, the law allowed and perhaps even incentivized companies to limit other companies’ legal and commercial rights without judicial oversight, leaving SOPA vulnerable to the objection that it violates individuals’ constitutional due process. Non-infringing companies may be damaged by having valuable business relationships taken away from them without a meaningful opportunity to be heard and without legal recourse. This is because even if a company is found to be non-infringing there is no requirement that the discontinued services be reinstated. Finally, SOPA would not have accounted for the proportionality of the alleged infringement relative to the alleged infringer’s website. For example, under SOPA if one person uploaded an allegedly infringing video on Facebook and the owner exercised his SOPA rights he could potentially bring SOPA action against Facebook in its entirety.

What happened with SOPA?

There was a lot of backlash against SOPA from high-profile and much-used websites. On a few different days websites blacked themselves out to protest SOPA. The blackouts not only called attention to the issue, but also served as a sort of warning to consumers that if they did not get involved in stopping SOPA, some of their favorite websites would be threatened. Participants included Wikipedia, WordPress, and BoingBoing. Eventually, SOPA ended up failing. There were attempts to revive it about a year later, but nothing really came of those.

SOPA is the perfect example of the disconnect between technology and the people making our laws. On paper the idea sounded good, but in practice there were significant problems with the proposed law. While the debate over copyright and technology is far from over, SOPA almost certainly is.