Are you kidding me? The law, government, and politics.

When does one’s contribution to a creative work rise to the level of authorship?

In Janky v. Lake County Convention and Visitors Bureau, Nos. 07-2350, 07-2762, and 08-1606 (August 3, 2009), the US Court of Appeals for the Seventh Circuit answered that question. The Bureau was looking for someone to write a song for their promotional campaign. Band-member Farag learned of the search, and so Band-member Janky wrote a song, Wonders of Indiana, and copyrighted it in her own name. Farag and the Bureau liked the song but felt its lyrics needed to be focused less on Indiana generally and more on Lake County in particular. Farag’s contributions represented 10% of the lyrical content of the revised song (although Farag claimed he changed the melody as well), which was then copyrighted again by Janky, this time with Farag listed as a “co-author,” and the work identified as a “joint work.” The Bureau was issued a non-exclusive license to the song, a copy of a music video for use in the promotion, and a live performance by the band at the opening of a new visitors’ center.

After some unspecified fall-out, Janky re-registered the copyright, intending to correct the “mistake” she made on the previous form by removing Farag as an owner. Janky then informed the Bureau that their license to the song was invalid, and they no longer had permission to use it. The Bureau continued to use the video and song until the law suit was filed in which Janky alleged the Bureau’s continued use of the video and song was copyright infringement.

The US District Court for the Northern District of Indiana granted summary judgment to Janky (that is, ruled for Janky without a trial because of the legal strength of her case), but the Seventh Circuit reversed that decision, granting summary judgment for the Bureau. The Seventh Circuit pointed out that, under 17 U.S.C. § 201(a), co-authors to a “joint work” have an undivided interest in the work regardless of how much each artist contributed. In other words, even if Farag contributed only 10% of the work, Farag would have the same rights to the song as Janky, which includes the right to license the song to the Bureau. So, if Farag were a co-author and gave the Bureau permission to use the song, Janky’s permission wouldn’t have been needed, and there could be no copyright infringement.

This brought the Seventh Circuit to the central issue in the case: Is Farag a co-author? In 17 U.S.C. § 101, the Copyright Act defines work as a “joint work” if (1) there is an intent to create a joint work at the time of registration, and (2) each author contributed material that by itself would be copyrightable. The intent was obviously present because in the second application Janky credited Farag as a coauthor and characterized the song as a “joint work.”

As for whether the contributions of Farag were independently copyrightable, the Seventh Circuit noted that mere “ideas, refinements, and suggestions” did not qualify as independently copyrightable contributions, but Farag’s contributions went much further than that.

Farag wielded considerable control over what the song finally looked like; one could say he demanded the changes. Farag’s contributions . . . were concrete expressions . . . . Farag’s changes may have accounted for only 10 percent of the lyrics, they were significant. They were important not only to the final sound, but also to its commercial viability. . . . The very purpose of copyright law [would be] defeated if important contributions are denied copyright protection.

Judge Ripple dissented from the case. Although agreeing that Janky should not have been granted summary judgment, Judge Ripple disagreed that the Bureau should have been granted summary judgment. Rather, the case should have been sent back to the district court for a trial.

Posted by rbodine at 12:33 PM | Permalink | Comments (0) | TrackBacks (0)

Homes aren't the only things that can be foreclosed on. Patents can be, too.

First, what is a patent? According to the United States Patent and Trademark Office FAQ, it’s “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.” The most common form of patent, the utility patent, is granted to “anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement” to one of those things.” So, if you invent something, you’re the only one who can take advantage of it in this country. Sometimes, that gives you a lot of market power.

The Federal government grants patents. It holds this power exclusively under the “arts and sciences” clause of the US Constitution, and so the states can’t grant patents; however,that doesn’t mean the states aren’t relevant to issues surrounding patents. For example, . . .

In Sky Technologies, LLC, v. SAP AG, 2009-1606 (August 20, 2009), the United States Court of Appeals for the Federal Circuit was faced with a dispute under both the federal Patent Act and Massachusetts state law. A patent owner, Ozro (a corporation), used its patent rights as collateral for a loan, much the way a homeowner will use a home as collateral for the loan to buy the house. Ozro and the lender, XACP, signed an agreement to secure the loan with the collateral (in the same way a homeowner and lender would sign a mortgage or deed of trust).

When Ozro defaulted on the loan, XACP foreclosed on the patents. Under Massachusetts state law, this automatically transferred ownership of the patents from Ozro to the XACP. XACP then transferred ownership of the patents to another company, plaintiff Sky Technologies, by written assignment.

When the defendant, SAP, made use of the patented invention, Sky sued SAP for patent infringement in the US District Court for the Eastern District of Texas. SAP asked the district court to throw out the case because Sky lacked standing. That is, SAP was arguing that Sky wasn’t the proper person to bring the lawsuit because Sky didn’t actually own the patents.

SAP argued that under the Patent Act, if a patent owner wants to transfer ownership of his patent to someone else, the assignment must be in writing, but there was no written assignment from Ozro to XACP, so XACP didn’t have the ability to assign the patents to Sky. Basically, SAP argued that the patent rights vanished into thin air when the company, Ozro, dissolved.

The Federal Circuit disagreed, stating that nothing in the Patent Act stated that an assignment was the only way to transfer ownership. Instead, any state law that transfered patent ownership automatically (that is, without the patent owner doing the transfer himself), was also valid. As support for its holding, the Federal Circuit relied on its prior holding in Akazawa v. Link New Technology Int’l, Inc., 520 F.3d 1354 (Fed. Cir. 2008), in which the patent owner died without a will, so his wife inherited the patent by operation of the state law governing inheritance.

So, if you want to take ownership of a patent directly from the current patent owner, that owner will have to execute a written statement giving you ownership. However, you can still inherit or otherwise receive ownership of a patent ‘automatically’ if a state law transfers the patent rights to you.

Posted by rbodine at 05:04 PM | Permalink | Comments (0) | TrackBacks (0)

The United States Court of Appeals for the Fourth Circuit affirmed the grant of summary judgment by the US District Court for the Eastern District of Virginia, holding that there was no likelihood of confusion as a matter of law between the Defendant's trademark, LEFT CENTER RIGHT, and the Plaintiff's trademark, LCR, both with respect to dice games sharing identical rules.

In George & Co., LLC v. Imagination Entm't Ltd., No. 08-1921 (July 27, 2009), Plaintiff George sued Defendant Imagination for infringement of George's trademarks, LEFT CENTER RIGHT and LCR. The district court granted summary judgment to the Defendant, finding that -- even if the Plaintiff's complaint was assumed to be completely accurate in its account of the facts -- the Plaintiff would still lose, so no trial was necessary.

The Court of Appeals affirmed (that is, upheld or validated the district court decision), going through each of the nine factors used to determine whether there is a likelihood of confusion between the Plaintiff's and Defendant's marks. Those factors are: 1.) The strength or distinctiveness of the plaintiff's mark as actually used in the marketplace; 2.) the similarity of the two marks to consumers; 3.) the similarity of the goods and services that the marks identify; 4.) the similarity of the facilities used by the market holders; 5.) the similarity of advertising used by the market holders; 6.) the Defendant's intent; 7.) actual confusion; 8.) the quality of the Defendant's product; and 9.) the sophistication of the consuming public.

Although the Court of Appeals recognized that there were some factors in Plaintiff's favor, it held that the most significant factor, actual confusion (#7), weighed heavily against the Plaintiff, because the Plaintiff sells about 500,000 gamers per year yet provided only two instances of actual customer confusion. Combined with a mark the Court of Appeals considered weak (#1) and disimilar to the Defendant's mark (#2), and without any evidence of bad intent by the Defendant (#6), the Court of Appeals held there was no likelihood of confusion, and so there was no trademark infringement.

Finally, the Court of Appeals held that George had abandoned his trademark for LEFT CENTER RIGHT in 1992, having used only LCR in connection with his dice game, so any claim for infringement of LEFT CENTER RIGHT must fail.

What was most interesting about this case is that the US Patent and Trademark Office granted the trademark, apparently on the grounds that the mark was "suggestive," which is stronger than a mark that is merely "descriptive."*** The district court also found that the mark was suggestive, and the Defendant conceded that the mark was suggestive. The Court of Appeals considered these positions questionable. The game required a player to move chips to the left, center, or right, depending on the roll of the dice, so the Court of Appeals "harbor[ed] doubt" that the mark was more than merely descriptive. Although the Court of Appeals was required to accept the finding of the district court that the mark was suggestive, it still found a way to hold the mark to be weak, and it chose to focus on other factors as being more significant.

The lesson: If the Court doesn't like what happened before, and it can't use direct means to reach its desired conclusion, it will always find a way. Sounds like an argument for legal realism to me.

*** Whereas a "descriptive" mark directly provides information to the purchaser of a product or service of what the mark represents, a suggestive mark requires that that the purchaser have to use some imagination to connect the mark with the goods, so a suggestive mark is considered "stronger" (factor #1). For example, 5 minute glue is descriptive of a glue that sets in 5 minutes, but Orange Crush is suggestive, not directly indicating that it applies to a carbonated beverage, but indirectly relevant because it claims to have a strong, orange flavor.

Posted by rbodine at 06:25 PM | Permalink | Comments (0) | TrackBacks (0)

The United States Court of Appeals for the Eleventh Circuit recently held that when you are found liable for infringement (essentially, theft) of a trademark or service mark and you hijack someone's identical domain name (cyberpiracy), there are two separate wrongs you've committed, and you'll pay for both.

In St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, No. 08-11848 (July 9, 2009), Defendant Sanderson, an eye surgeon formerly employed by Plaintiff St. Luke's, had the registration information for two domain names changed to himself after leaving. Sanderson was found liable for both taking the domain names and for infringing the service mark, and St. Luke's was awarded damages (i.e., payment for harm) for both. Sanderson claimed that the two awards for damages were duplicate and, therefore, inappropriate.

The Court of Appeals disagreed.

First, the text of the Anti-Cybersquatting Protection Act ("ACPA"), 15 U.S.C. Sec. 1125(d)(3), states that any damages awarded under the ACPA shall be in addition to any other appropriate damages awarded in the case, and a claim of service mark infringement under the Lanham Act, 15 U.S.C. Sec. 1125(a), was appropriate in this case. So, even if the two damages awards are duplicative, the ACPA allows for both to be awarded. Second, however, these aren't duplicate awards. The key difference is that a case for cyberpiracy requires a showing of a "bad faith intent to profit" from a protected domain name, and so the award for damages served to punish Dr. Sanderson for his conduct in order to deter future violations of the ACPA by him. On the other hand, the award for damages under the Lanham Act was intended to compensate St. Luke's directly for its injuries and losses (for example, loss of business and profit) due to the service mark infringement.

The Court of Appeals added that this distinction between deterrence and direct compensation is consistent with how the Copyright Act (17 U.S.C. Sec. 504(c)(1)-(2)), a similarly worded statute, is interpreted, and as a result, other Federal Courts of Appeal have reached the same conclusion.

The lesson: If you steal the logo for "laserspecialist" and the domain laserspecialist.com, you'll pay for both.

Posted by rbodine at 05:11 PM | Permalink | Comments (0) | TrackBacks (0)

I have a saying: "Those who hide things generally have something to hide." If it's your name your hiding, that really makes me nervous. See my latest blog entry here. Originally posted August 4, 2009, on the blog, What About Clients?, on which I'm a regular contributor.

Posted by rbodine at 02:41 PM | Permalink | Comments (0) | TrackBacks (0)