Penn Intellectual Property Group Blog

Class Action Alleging Violations of Facebook Users’ Right of Publicity in “Sponsored Stories” Survives Motion to Dismiss

2012-01-02T18:08:00.002-06:00

Since January 25, 2011 when Facebook launched its “Sponsored Stories” advertising service, you may have noticed the perimeter of your newsfeed populated with ads featuring your friends “liking” a particular brand or product. This innovative advertising scheme capitalizes on trusted referrals, or what Mark Zuckerberg calls the “Holy Grail of Advertising.” Facebook COO Sheryl Sandberg supplements that by making facebook’s customers its “marketers” in this way, the value of a Sponsored Story is worth 2-3 times more than a traditional facebook advertisement without a friend endorsement, keeping in mind that a user has an average of 130 friends. Fraley v. Facebook, Inc., 2011 WL 6303898, at *9 (N.D. Cal. Dec. 16, 2011). Not amused, in Fraley v. Facebook, the plaintiffs are currently bringing a class action suit on behalf of all facebook users in the United States who have been registered members of the site since January 24, 2011 and have been featured in a Sponsored Story Advertisement. The claim is seeking injunctive and compensatory relief.

Thus far, this claim is faring better than a strikingly similar class action dismissed on October 27, 2011 where the promotion of Facebook’s “Friend Finder” feature, which encouraged using this service by identifying friends that had done so, was instead the subject of dispute. Cohen v. Facebook, Inc., 2011 WL 5117164 (N.D. Cal. Oct. 27, 2011). In Cohen it was acknowledged that while facebook does not directly profit from the addition of users, it does garner revenue from advertisements that at least depends in part on the number of users it reaches. Id. ft. 4. Nevertheless the original complaint was dismissed for failure to state a claim because the plaintiff’s failed to show a “cognizable harm.” After amending their complaint to more particularly allege a right of publicity violation under California’s §3344, which provides a minimum relief of $750 for unquantifiable damages, the court was still not persuaded. A showing of injury was still required, which the complaint failed to demonstrate after omitting conclusory allegations. (Twombly-Iqbal standard).

However, the court in Fraley boldly distinguished the present “Sponsored Story” class action from Cohen, mainly based on the two quotes from Zukerberg and Sandberg, above. “Plaintiffs here have furthermore identified a direct, linear relationship between the value of their endorsement of third-party products, companies, and brands to their Facebook friends, and the alleged commercial profit gained by Facebook. Thus, Plaintiffs have alleged facts showing that their personal endorsement has concrete, measurable, and provable value in the economy at large.” Fraley v. Facebook, Inc., 2011 WL 6303898 at *10.

The court also distinguished a slew of cases cited by facebook, In re iPhone Application, Specific Media, In re Doubleclick, and Low, where economic damages where insufficient when plaintiff’s personal information was misappropriated to third-party data-compilation companies. By contrast, in this case the plaintiffs’ are claiming a misappropriation of their right of publicity in the form of their names and likenesses used for commercial advertising.

Integral to their complaint is that users are enticed to click the “Like” button on a company’s facebook page to access special offers, event photographs, support social causes, or enter a contest. Plaintiff’s are unaware that this action would be interpreted and publicized as their “liking” or endorsing a company. Moreover, while facebook attempted to demonstrate that users can limit their visibility and are not required to use their own photographs as their profile pictures, it still remains that one cannot completely opt-out of the Sponsored Story feature. If the sponsored story is noticed, then the user can delete it by clicking on an “x”, but these instructions are buried in facebook’s Help section and cannot be accessed through any page detailing Sponsored Stories. The feature was only incorporated on January 25, 2011 after many users had already registered a facebook account, and was not subject to acceptance.

The judge denied Facebook’s defense under §230 of the Communications Decency Act, which exempts service providers from tortious conduct by users. Facebook was deemed a content provider by surpassing an acceptable editorial role when it transformed users actions into a commercial advertisement by re-arranging user’s profile pictures with third-party logos and the “likes” and “sponsored story” header.

Nor was facebook’s attempted defense under subsection (d) of §3344 for “newsworthy” stories successful. According to facebook, its users are “public figures” among friends and their expressions of consumerism are newsworthy. The problem wasn’t whether users can be considered celebrities or public figures –in California statutory right of publicity protection extends to celebrities and non-celebrities alike (KNB Enterprises, 78 Cal.App.4th at 373 n. 12, 92 Cal.Rptr.2d 713) – but whether this use was journalistic or commercial in nature. Because the sponsored stories are used for commercial advertising rather than “any news, public affairs, sports broadcast, or political campaign,” the newsworthy exception does not apply.

While the court did dismiss Plaintiff’s unjust enrichment complaint, that was only because it could not be a separate cause of action and was already embedded in their right of publicity complaint. Therefore, it seems like Facebook’s best defense is the consent issue. The Terms of Use notify users that their profile pictures may be associated with “commercial, sponsored, or related” content, subject to the limitations placed by the users. The story appears only to confirmed friends and there is no requirement to “like” companies. Since the complaint was only being scrutinized under 12(b)(6) standards for failure to state a claim, the court did not provide further guidance on this question, but commented that whether consent was obtained was at least a question of fact.

Personally, I think that the plaintiffs’ claims have legal grounding, but wonder what they hope to achieve as a result of the suit. Facebook does not charge users for its services, and according to an LA Times article about the case, http://latimesblogs.latimes.com/technology/2011/12/facebook-lawsuit-like-ads-proceed.html garners 90% of its income from online advertising. If this source is diminished, facebook may have to begin charging users, limit users to certain, approved networks, or cut back on features. Facebook is undoubtedly a valuable commodity and for many people that has become a routine part of their day, not to mention the number of businesses that rely on marketing via social media. Notwithstanding this, there seems to be an undue sense of entitlement to facebook’s services surrounding any of their proposed changes or advertising schemes. If one doesn’t like the way their likeness is being used, then they have several options such as refraining from liking any company’s profile (after all, it’s not like facebook is randomly pairing users with companies that they have never interacted with), or even not joining facebook at all! What will most likely happen is facebook will revise its terms of use and will then burden users with accepting them if they want to continue using the site. And since of course no one reads the fine print, the entire issue may hinge on the typical “click-wrap” licenses dilemma.

It’s Like Comparing Apples and Pomegranates; Jury Doesn’t Buy Pom Wonderful’s False Advertising Claims

2011-12-23T17:00:00.003-06:00

In January 2009 Plaintiff Pom Wonderful LLC (“Pom”) filed a complaint against Ocean Spray Cranberries, Inc. (“Ocean Spray”), alleging false advertising and unfair competition in respect to the marketing of its “100% Cranberry and Pomegranate” juice (pictured). Apparently, the labeling prominently featured pomegranates when in fact the juice contained only 2% pomegranate juice with the main ingredients being grape and apple juice. According to Pom, this deceived consumers and thus diverted sales from its own pomegranate juice product.

Ocean Spray countered with an “unclean hands” affirmative defense by alleging that Pom misled consumers by (1) failing to disclose that water is a primary ingredient of “POM Wonderful brand beverage products,” (2) failing to disclose that Pom's product is made from concentrate, and (3) misrepresenting that Pom products are fresh squeezed into bottles, when in fact Pom makes its juice from concentrate. Pom Wonderful LLC v. Ocean Spray Cranberries, Inc., 2011 WL 4852481 (C.D. Cal. Oct. 12, 2011). Based on these allegations, Ocean Spray lodged its own false advertising counterclaim against Pom. Pom Wonderful LLC v. Ocean Spray Cranberries, Inc., 2011 WL 4852472 (C.D. Cal. Oct. 12, 2011). Admitting that it has no evidence supporting the impact of Pom’s advertising on its own sales, and that if such impact did exist, it would be negligible and unquantifiable, Ocean Spray urged the court to use its discretion in permitting monetary relief based on the totality of the circumstances.

While the court refused to strike Ocean Spray’s defense, it granted summary judgment for Pom on Ocean Spray’s counterclaim. Not only did Ocean Spray fail to provide why the totality of the circumstances warrants relief, it appears that Ocean Spray has benefited from Pom’s deceptive trade practices. “Ocean Spray's Chief Operating Officer testified that strong sales of Ocean Spray's pomegranate-flavored product were attributable, at least in part, to the popularity of pomegranate juice resulting from Pom's advertising efforts.” Pom Wonderful, 2011 WL 4852472.

Aware of this, Ocean Spray persisted that this was a comparative advertising case, where a direct reference to a competitor’s product presumes injury because it diminishes the brand’s value in the mind of the consumers. As evidence, it offered Pom’s reference to “cranberry juice cocktails” in Pom’s advertising. Ocean Spray claimed that its brand is exclusively associated with cranberry juice cocktails since that is its “primary product.” However, the court was not persuaded. “Pom's reference to a generic product or class of products does not exhibit the specificity required of a comparative advertisement.” Pom Wonderful, 2011 WL 4852472.

Ocean Spray had a better chance with its evidence of Pom’s “Pomegranate Truth” website, which features images of three competing juices, including Ocean Spray’s Cranberry & Pomegranate Juice. However, the website merely lists the ingredients of the juice, the veracity of which Ocean Spray does not dispute. “Had Pom made some false comparative statement regarding Ocean Spray's Juice, the use of an image of the Juice's bottle would likely be sufficiently specific to constitute a comparative advertisement. The website, however, makes no misleading statement of the type described in Ocean Spray's counterclaim.” Id. The referenced page can be found here: http://www.pomwonderful.com/about/pom-truth/read-the-label/

However, even though Pom managed to get to trial, it didn’t fare so well with its own claims among the jury. JurisNotes reports that after a two-week trial, the jury only deliberated for two hours before issuing their verdict. The jury curtailed the question of Pom’s damages by agreeing that it was unable to prove that Ocean Spray’s label or advertising was misleading. http://www.jurisnote.com/News/pomw565.pdf.

Pom has also been unsuccessful with similar cases against other competitors such as Tropicana and Welch. Nevertheless, for some reason I feel that a class action may be brewing against all of these companies.

Copyright Legislation Prospects

2011-11-13T07:19:00.002-06:00

Both the House and the Senate have presented bills in the past year that, if passed, would introduce increased liability to copyright infringers on the internet. The bills have had deeply different receptions amongst industries affected by copyright law. The entertainment industry steadfastly supports increased attempts to control copyright infringement while many in technology and computer industries believe the bills overstep necessary enforcement strategies and will negatively affect their ability to carry on their business as usual.

The Senate bill was introduced in May and is called the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (PROTECT IP Act). The entire text of the bill can be found here. The act creates a right of action for infringement against domain name owners of websites that are found to be "dedicated to infringing activities." S. 986, 112th Cong. § 3. The act goes on to note that Internet Advertising Services and Information Location Tools have a responsibility not to facilitate access to infringing websites. This could mean that Google and other search engines would be held liable when their search engines provide users with links to websites that contain infringing material. Not surprisingly, this portion of the act is particularly controversial because of the huge costs it would impose on search engines. Additionally, the act repeatedly notes that it is applicable to direct, various, and contributory copyright infringement; hinting at the idea that websites that may only tangentially have an effect on copyright infringement might now be subject to lawsuits.

The PROTECT IP act would also implement important measures to more effectively crack down on websites with infringing material that threaten the public health. These type of websites are generally fraudulent pharmaceutical websites that infringe on company copyrights and trademarks to illegally sell prescription drugs. S. 986, 112 Cong. § 5. Despite the Act controversy, The Senate Judiciary Committee approved the PROTECT IP act but it has yet to make it to the floor of the Senate as it was blocked by Senator Ron Wyden.

In coordination with the Senate's act, the House introduced the Stop Online Piracy Act (SOPA) at the end of October. The text for that bill can be found here. The provisions in this Act overlap with PROTECT IP and are opposed or supported by the same industries. Website and domain name owners are additionally worried about SOPA because of its broad language that would not give possible contributory infringers reasonable time to clean up their website before either being sued or having their site attacked. The House of Representatives Judiciary Committee will hold a hearing on the Act this Wednesday, at which time the proponents and opponents of the bill will have a chance to try to integrate their opposing views into the bill.

For more information on the passage of these bills, see The Stop Online Piracy Act: Big Content’s full-on assault against the Safe Harbor, House Hearing on Stop Online Piracy Scheduled.

“Richard Cheese” Sheds Insight on the Right to Publicity / Right to Privacy Distinction

2011-11-04T18:42:00.002-05:00

While the unique “right of publicity” is often, yet understandably, overlooked as being a subset of intellectual property, this classification proved crucial in a fresh Second Circuit decision. On November 1^st, the court upheld Hartford Casualty Insurance Company’s refusal to defend independent music label Oglio in a separate suit involving right of publicity allegations.

The other suit was instigated in 2006 by Mark Jonathan Davis, known to his fans as “Richard Cheese,” a comedian/lounge singer whose character performs lounge versions of famous pop and rock songs. He entered into a contract with Oglio from 2000-2003 in which he was to record an album entitled Lounge Against the Machine (LATM) as Richard Cheese, which Oglio would then distribute. In addition to owning the copyrights to the recordings, Oglio also had the right to use the name “Richard Cheese” and his likeness in promoting and advertising the album. In addition, Oglio retained the option. exercisable for two years after execution of the agreement, to require Davis to record a second album with similar terms upon a minimum advance payment of $15,000.

Following the financial success of LATM in 2001, Oglio attempted to exercise its option, but sought to reduce the minimum advance from $15,000 to $7,000. After Davis refused, Oglio threatened to replace him with other singers. Oglio followed through and in 2002 released two lounge-style albums: Diary of a Loungeman by “Bud. E. Love” and Sub-Urban by “Jaymz Bee & Deep Lounge Coalition." According to Davis’ complaint, “the Competing Albums [were] a way to piggyback on [LATM] and to trade on the goodwill and public recognition earned by Davis. […] Both the names of the competing artists and the titles of the Competing Albums were obviously intended by Oglio to attract fans of Richard Cheese's lounge-style versions of songs and to capitalize on Davis's celebrity […] and reduce the value and unique goodwill of Davis's Professional Name throughout the entertainment industry.” Oglio Entertainment Group, Inc. v. Hartford Casualty Ins. Co., 2011 Cal. App. LEXIS 1361, 4-5 (Cal. App. 2d Dist. Nov. 1, 2011). Upon expiration of their three year agreement, Oglio continued to sell and promote Davis’s albums along with the competing albums on its website, www.richardcheese.com.

Oglio and Davis eventually settled for $80,000 in September 2006 after Hartford disclaimed coverage in May 2006. Oglio then filed the present suit against Hartford for breach of contract. Oglio claimed that Davis’ alleged injury for appropriation of his name and likeness was included in the policy’s coverage for privacy violations. However, Hartford answered that the right of publicity is not only separate from privacy rights, but falls under intellectual property rights, which were specifically excluded from coverage. The exclusion provision pertained to any advertising injury “[a]rising out of any violation of any intellectual property rights, such as patent, trademark, trade name, trade secret, service mark or other designation of origin or authenticity.” Oglio Entertainment Group. LEXIS 1361 at 17.

As a final chance, Oglio attempted to demonstrate that their advertising injury was one, covered by the policy, arising out of “[c]opying, in your ‘advertisement,’ a person's or organization's ‘advertising idea’ or style of ‘advertisement.’” Id. at 20. However, Hartford’s counter that this policy extended only to the style of advertisement, as distinguished from the product being advertised, was sufficient to sustain their demurrer. The court held that, “this does not allege that Oglio copied, in an advertisement, Davis's advertising idea or style of advertisement, but that Oglio sought out artists to copy Davis's product and later sold a competing product, injuring Davis's sales and the value of his professional name.” Id. at 21.

Indeed California’s infamous right of publicity law, codified in Cal. Civ. Code §3344, defines a right of publicity violation as consisting in, “any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods [emphasis added], or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent.

Twitter and Twittad Settle Trademark Infringement Suit; Twitter agrees to restore Twittad’s account

2011-10-28T13:51:00.006-05:00

Due to the popular social networking site Twitter, the noun/verb “tweet” is now a familiar and exhausted term in everyday discourse. However, it is also a registered trademark, and Twitter expressed its protectiveness over the mark in a recent complaint against advertising company Twittad’s registration of “Let Your Ad Meet Tweets.”

Twittad, a limited liability company with its principal place of business in Iowa, maintains the website twittad.com, which offers advertising services contingent on Twitter’s services. Twittad currently pays a network of over 27,000 private users for tweeting commercial ads. In its federal trademark application for “Let Your Ad Meet Tweets,” Twittad specified that the registration was namely for providing advertisement space on the internet for others.

In its complaint, Twitter points out that Twittad failed to mention that its advertising services were meant to be used solely in connection with Twitter’s services. According to Twitter, “Tweet” is the only distinctive portion of this mark, which was registered in order to exploit the “popularity and fame of Twitter’s ‘Tweet' brand." (2011 WL 3983379 (N.D.Cal.)). As Twitter also owns a host of “tweet” marks including “Cotweet,” “Tweetdeck,” and of course “Retweet,” Twittad’s mark could appear to be in this family of marks and confuse consumers.

Twitter is specifically claiming that “Let Your Ad Meet Tweets” should be cancelled pursuant to 15 U.S.C. §1502(d), §1064, and §1119. Also known as the Lanham act, the federal statute provides that a trademark registration should be refused if it “comprises a mark which so resembles a mark registered in the Patent and Trademark Office,” 15 U.S.C.A. § 1502(d) (West)). A petition to cancel registration may be filed by “any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment.” Id. § 1064 (West). Courts have the power to cancel such registrations under §1119.

However, according to JurisNotes, as of 10/19/2011, Twitter has agreed to drop its suit against Twittad in exchange for being assigned the entire interest in the mark. While other terms of the settlement are confidential, it seems that Twittad’s Twitter account will be restored and it can continue its advertising services while still using the tagline “Let Your Ad Meet Tweets.”

For more information, see the original complaint for declaratory judgment filed in the Northern District Court of California. (2011 WL 3983379 (N.D.Cal.). The trademark registration for “Let Your Ad Meet Tweets” can be found here: http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:bpjbqg.2.1The assignment of title history for the mark clearly indicates that Twitter was assigned the entire interest on 10/11/2011. http://assignments.uspto.gov/assignments/q?db=tm&qt=sno&reel=&frame=&sno=77513740

Reddit's Right in a Movie Script?

2011-10-24T20:36:00.004-05:00

An unknown author writes a script that gets purchased by a major production company. It sounds like a fairly straightforward story and licensing deal, right? Not for James Erwin who wrote "Rome, Sweet Rome" a story about a modern day U.S. Marine who goes back in time to fight in Ancient Rome. Erwin then sold the exclusive movie rights to Warner Brothers. However, this deal presents some interesting copyright issues because Erwin originally shared his ideas for "Rome, Sweet Rome" on Reddit, a social news website whose content is entirely user created. In addition to publishing his story here, user content was contributed by the community and arguably used by Erwin to finalize his story.

Reddit has a stake in Erwin's deal because of the User Agreement that all Reddit users agree to when they join the website community. The agreement specifies that users "agree that by posting messages, ... or engaging in any other form of communication with or through the Website, you [the user] grant us [Reddit] a royalty-free, perpetual, non-exclusive, unrestricted, worldwide license to use, reproduce, ... distribute, ... or sublicense any such communication in any medium ... and for any purpose, including commercial purposes, and to authorize others to do so." This presents the possibility that Reddit could now turn around and sell the portions of "Rome, Sweet Rome" divulged on the website. Section 205(e) of the Copyright Act states that a "nonexclusive license ... prevails over a conflicting transfer of copyright ownership" which seems to indicate that Reddit could legally license away the movie rights to "Rome, Sweet Rome," specifically the portions of the story and feedback trading on Reddit.

James Erwin, per Warner Bros. advice, has since removed "Rome, Sweet Rome" from Reddit and Reddit has not made any public efforts to sell its rights in the script. However, Reddit is operated by Advance Publications, a subsidiary of Conde Nast Publications. This means that they might be more likely than a small, independent website to license rights out to test the legal waters on the issue.

Regardless of whether Reddit acts on "Rome, Sweet Rome," it brings about an interesting issue of the rights of nonexclusive rights of licensees and licensors. For more on this story, see Does Warner Bros. Really Have Exclusive Movie Rights to a Story Posted on Reddit?

PIPG Wine & Cheese Salon

2011-10-19T20:29:00.004-05:00

Please join the Penn IP Group for a Wine & Cheese Salon to discuss some relevant and interesting IP issues. The event will be held tomorrow, October 20 at 4:30 in Gittis 213. PIPG members and interested students are encouraged to come out, discuss IP topics, and enjoy some cheese, wine, and non-alcoholic beverages. Prompts for tomorrow include the new Smith-Leahy America Invents Patent Act and IP issues related to Fashion Law (to get excited for the Spring Symposium). We hope to see you there!

Leahy-Smith America Invents Act Goes Into Action

2011-09-28T07:16:00.003-05:00

On September 16, President Obama signed the Leahy-Smith America Invents Act. This Act is Congress' attempt to revamp the patent system in the U.S. which has been criticized over the years for being costly, inefficient, and difficult to maneuver. The new Act is also aimed at reducing needless litigation over patent rights. This is being implemented with a switch from a first-to-invent system to a first-to-file system. This means that from now on the first person to file their patent with the USPTO will gain the patent rights. This encourages inventors to file for a patent as soon as they conceive of an invention, rather than sitting on the idea. This has the potential to reduce litigation which can often arise when parties both maintain they were the first-to-invent. The potential drawback is that it favors inventors who are familiar with the patenting process while leaving out smaller inventors who do not realize the urgent need to file. However, it greatly simplifies the overall process and streamlines the U.S. version with the patent systems of Europe and Japan.

Another important aim of the Act is to encourage innovation by small inventors who historically have been shut out of the patenting process because of its costliness. It can cost thousands of dollars and several years of paperwork to get a patent through the USPTO. Many small inventors simply do not have the time, resources, or patience for this process. In order to reduce the barriers to patenting for small inventors, the Act creates the category of "Micro-Entities." This refers to inventors with 4 or less filed patents who do not have a median household income of 3 times the median according to the IRS for the previous year. These micro-entity inventors receive as much as 75% off of the usual fees associated with patent filing. The idea behind this is that new and small inventors are reluctant to file their patents and thus, either the invention goes unpatented and potentially unmarketed, or bigger inventors and companies are able to infiltrate the market for the new idea even though the small inventor may have thought of the product first. The drawback of this provision is that it might not be very far reaching since micro-entities have a fairly specific definition in the Act which may even leave out many small inventors. Additionally, many of the industries that rely heavily on patents, like pharmaceuticals and medical devices, really only have inventions coming out of years of R&D funding from major corporations or in connection with universities. These groups would presumably all be left unaffected by the micro-entity provision.

To read the entire act or to learn more about the implementation of Leahy-Smith America Invents go to uspto.gov or click on this link: Leahy-Smith America Invents Act.

Court Rejects Google Books Settlement

2011-03-28T17:30:00.003-05:00

Last Tuesday, Judge Chin of the Southern District of New York threw out the Amended Settlement Agreement that Google had to agreed to with the Author's Guild and the various other plaintiffs involved in the a lawsuit regarding Google Books. The suit was originally brought by publishers and authors who were concerned with the potential for mass copyright infringement by Google with its creation of Google Books. The lawsuit was originally brought in 2005 after Google set up Google Books by working with various University libraries to scan countless texts which would then be made available on the internet. Google has maintained that their goal with Google Book is to better catalog books with a special aim at reintroducing out-of-text books to the general public. The problem with the program is that the copyrights on many of these scanned works have not run out.

Google and its adversaries proposed a settlement in 2008 that would allow Google Books to continue to be developed but that would insure the rights of publishers and authors were not forgotten. Under this plan, Google would pay the groups for the rights to the books and the authors and publishers would receive a certain amount of money made on book sales through Google Books. The settlement contained a default inclusion clause, meaning that authors that wished to be excluded from Google Books would have to explicitly opt out.

Judge Chin ended up throwing out this settlement because he found it to be inadequate, mainly it how favorable it is to Google. He noted the fact that author's must opt out and as well as how greatly it favors Google over its potential market competitors. It would have the effect of favoring Google over its competitors because if the settlement were to go through, Google would have legally recognized deals with any author to put their work on their website in the absence of an opt-out. Additionally, Google has a huge head start as it has been working on Google Books throughout the lawsuit and settlement. For more information and a copy of Judge Chin's decision on the issue see the following article from CNET.

Penn Intellectual Property Group Copyright Symposium

2011-03-14T17:01:00.006-05:00

Next Tuesday (March 22nd, 2011), the Penn Intellectual Property Group will be holding its annual symposium at Penn Law School. All are welcome to attend, so if you find yourself in the Philadelphia area, please stop by. This year the symposium will be on copyright law, and there will be panels on content licensing on the Internet, open source law, and copyright and author issues. The schedule for the symposium is as follows:

Keynote Speaker (4:30pm - 5:00pm)

Ken Richieri (New York Times)

Content Licensing and Distribution on the Web (5:00pm - 5:50pm)

Roger Cramer (Selverne & Company)

Bruce Rich (Weil Gotshal)

Jeff Farmer (Limewire)

Open Source and Derivative Work (5:50pm - 6:40pm)

Aaron Williamson (Software Freedom Law Center)

Van Lindberg (Hayes and Boone)

Jay Westermeier (Finnegan)

Copyright and Authors - Three Unique Perspectives (6:40pm - 7:30pm)

Nina Paley (author and cartoonist)

Michael Boni (Boni and Zack)

Marcia Paul (Davis Wright Tremaine)

The symposium has been approved for 3 hours of substantive C.L.E credit.

MPAA Brings Copyright Case Against Hotfile

2011-02-13T20:38:00.004-06:00

The Motion Picture Association of American filed a suit against Hotfile.com last Tuesday, February 8 for copyright infringement. Hotfile is a cyberlocker website in which users gain access through paid subscriptions. The MPAA alleges that not only does Hotfile aid users in uploading copyrighted information but that they encourage users to disseminate the uploads they have gotten through the site. The claim targets Hotfile instead of other file sharing websites because the MPAA believes Hotfile discourages personal filesharing by incentivizing popular files. Because Hotfile has membership fees, MPAA alleges that the website is also profiting from the infringement of its users.

Curiously, the MPAA did not also file claims against other online locker services like Rapidshare and Megaupload. This is because the MPAA does not contend that all file lockers are unlawful. The distinction is defined by the Digital Millennium Copyright Act's safe harbor clause. The act protects Internet service providers that obey certain rules of sharing, but MPAA believes Hotfile is not following the rules, and instead is encouraging breaking the law. The case will bring online locker services and their legality under fire as they have become a more popular way for people to gain access to files, some copyrighted, on the Internet.

MPAA's complaint against Hotfile

Google v. Bing(?)

2011-02-07T11:57:00.009-06:00

In recent news, you may have heard that Google operated a sting to catch Microsoft's search engine, Bing, copying Google's search results on Internet Explorer and implementing them in Bing's search results. To do this, Google created a specific webpage that would appear if words like “hiybbprqag” and “mbzrxpgjys” were typed into Bing. Bing is contesting the allegations of "copying" and says that it merely monitored users, a fair online practice according to Bing's Harry Shum. Bing doesn't deny that it monitors its users' browsing online, rather the search engine argues that it oversees all of the internet activity across the web, not just when Internet Explorer users search through Google. This is called a clickstream, which Bing observes over time, tracking results of each user in the webpage's URL. This search signal, and not Google signal, is an aggregation of all the different searches that users perform, including those on other sites like Yahoo. To Bing, it is irrelevant if Google is a popular search, because the intention is not to solely perform a Google search. Bing can also show that only about 9% of the specific searches for nonsensical words that Google performed were found using Bing. Where does this leave the case? Well, Google has adamantly stood by its original purpose for bringing these search results to light, the engineers behind Google search believe that it is plainly unfair for Bing to copy any of its search results.

Given the extent of copied material, it seems less likely that Google will pursue a challenge in court. Instead, Google may choose to use these facts to further emphasize its prominence among search engines, allowing it to propel its image among users who may not be dedicated Google searchers.

For a more in-depth analysis of this case, please visit http://searchengineland.com/bing-why-googles-wrong-in-its-accusations-63279.

Microsoft Continuing Its Fight with i4i

2011-02-03T12:42:00.003-06:00

Microsoft is heading for the Supreme Court later this year in its ongoing battle with i4i, Inc., a Canadian technology company. The case started in 2009 when i4i sued Microsoft for infringing on its Patent No. 5,787,449 for Microsoft's use of a method to make Microsoft Word products capable of processing or editing custom XML. Since the original filing, i4i has been successful against Microsoft in both the District Court and the Court of Appeals. The USPTO has refused to invalidate i4i's patent and the courts have awarded i4i $290 million in damages and a permanent injunction against Microsoft. As Microsoft attempts to overturn the lower courts' devastating decisions, the usually pro-patent company is finding some unlikely allies in the open source world.

Electronic Frontier Foundation and the Apache Software Foundation, usually critics of Microsoft for its vast portfolio of patents, have filed an amicus brief in support of Microsoft. Strange bedfellows: EFF, Apache back Microsoft in patent dispute. In the brief, the groups support Microsoft's suggestions for alterations to the present patent system when it comes to software patents. For instance, Microsoft advocates for stricter standards that would lower the bar to invalidate patents. The current test to throw out a patent is that the infringer must show "clear and convincing" evidence that the patent is invalid. Microsoft instead believes the standard should be lowered to a "preponderance" of evidence.

In addition to the above mentioned amicus brief, several other big players filed an amicus brief for Microsoft this week. This newest group of unexpected Microsoft supporters includes RedHat, Verizon, and Google. The massive support from Microsoft's former foes may convince the Supreme Court that the software patent system is broken, or at least in need of some careful tweaking. In addition to suggesting a lower standard to invalidate patents, Microsoft is also behind various other patent reform steps such as switching from a first to invent to a first to file standard. Admittedly, this will not affect their present case but reflects their attitude to the present patent system. Look for more on this case as potentially more parties get involved and to see how the Supreme Court handles the issue of software patents.

"Hope" Poster Dispute Settled

2011-01-30T18:19:00.005-06:00

The dispute over the creation and use of the Obama "Hope" poster was recen tly settled.

In Fairey v. AP, as previously mentioned on this blog, the Associated Press had accused the artist Shepard Fairey of infringing its copyright on a photograph of Barack Obama by creating the popular "Hope" posters that were frequently seen during the 2008 presidential election campaigns. Fairey claimed that the poster he designed was fair use.

The case was particularly interesting because it nicely demonstrated the complexities of giving copyright protection to photographs. The issue is that a copyrighted work must be original, in the sense that the work must originate with the author of the work. This means that you cannot copyright facts, because facts are not independently created by the author; they are part of the state of the world. For example, the AP cannot copyright the fact that Obama was at the National Press Club or the fact that he was sitting in a certain seat, looking in a certain direction. Because a photograph necessarily encompasses facts such as these, courts are careful when it comes to photographs. See, e.g., Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) (giving copyright protection to photographs of Oscar Wilde).

One way to distinguish uncopyrightable facts from copyrightable original works is to identify the original contributions of a photographer. See Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2006). When creating a photograph, a photographer has many opportunities to be original; she can select the content, choose a camera angle, pose the subject, time the picture, frame the subject, and add lighting. Each of these elements of a photograph can be given copyright protection.

Why is any of this important to the Fairey v. AP case? Because if a court had decided that Fairey had only copied the fact that Obama was sitting in a certain spot, looking a certain way, then he was unlikely to be liable for copyright infringement. Similarly, if a court had decided that Fairey had taken only a few of the copyrighted elements of the AP photograph, it would have supported a finding of fair use and could also have made him not liable for infringement. Because the AP has settled the dispute with Shepard Fairey, these issues might go unanswered for a while.

Then again, the AP has not yet settled a related case against Obey Clothing, where a company was manufacturing T-shirts and other apparel that bore the "Hope" design. The details of giving copyright protection to photographs could become an issue for AP and Obey Clothing as that case progresses.

Source: Shepard Fairey and The A.P. Settle Legal Dispute [NYT]

Dispute over the name "iPad"

2010-02-15T08:46:00.003-06:00

Fujitsu began selling a device named, "iPad," in 2002 and is currently disputing the name of Apple's newest gadget. The Japanese Company applied for a trademark for the name in 2003. Apple has until February 28th to announce whether it will oppose Fujitsu's claims to the name "iPad." To read more about the dispute, please visit: http://www.nytimes.com/2010/01/29/technology/companies/29name.html?scp=3&sq=patent&st=cse

Battle over Copyright Royalties of the Gershwin Brothers

2009-11-08T08:24:00.003-06:00

Nearly a decade ago, George and Ira Gershwin, known as the Gershwin brothers, fought to have copyright extended to their songs. Now, after their deaths, the heirs of these songwriting brothers are disputing over how to divide the royalties, which have come from the copyrighting of this music. Since the American royalties were previously divided equally between the brothers, there is no dispute regarding them. However, in the EU copyright law differs from US copyright law. Since, Ira Gershwin outlived his brother by about 40 years, there arises a problem with European copyright law. In the EU, the copyright of a lyricist and a composer are distinct. Furthermore, these rights expire 70 years after the death of the lyricist or composer, and the music then enters the public domain. Thus, since technically George’s copyright earnings on his compositions expired in 2007 in the EU, there is a dispute. Since Ira’s copyright of his lyrics is still effective, his estate still gains royalties from the use of his songs. Thus, Ira’s heirs believe they deserve foreign royalties on his lyrics.

For more on this story, please go to: http://www.latimes.com/entertainment/news/arts/la-ca-gershwin1-2009nov01,0,6051370.story.

So What Exactly is Fair Use?

2009-10-28T16:25:00.005-05:00

Eight mont hs ago on this blog we discussed the case Fairey v. AP, in which Shepard Fairey claimed that his depiction of Barak Obama constituted a fair use of an Associated Press picture. But what exactly is "fair use"? Tim Wu, law professor at Columbia University, writing for Slate, breaks the concept down. Professor Wu writes about the way in which the fair use defense has been used in the past, and what policy considerations courts have weighed in deciding on whether a fair use defense is legitimate. As the case is still being litigated, we do not know if the fair use defense will save Fairy or not.

The fair use defense was used unsuccessfully in the Joel Tenebaum case. Tenebaum was sued by the RIAA for copyright infringement when he downloaded mp3 songs from KaZaA. The court ruled for the RIAA, saying that the fair use defense would not apply in this case. On his blog, Professor Charlie Nesson, who represented Joel Tenebaum, ponders who the word "fair" in fair use is supposed to refer to.

If fair use is to be judged from the industry’s perspective only, then the permission or lack of it from the copyright holder is all that counts ... But if fair use is to be judged from the user’s perspective, then making use of a new, superior form of music product – downloadable, fully transferrable music files – while there was nothing comparable available on the market, can easily be seen as a fair use.

Please read Nesson's blog for further discussion.

ACLU and PUBPAT say “Do Not Patent My Genes”

2009-10-16T08:08:00.000-05:00

In May 2009 the American Civil Liberties Union (ACLU) and the Public Patent Foundation of Cardozo Law School (PUBPAT) filed suit against the U.S. Patent and Trademark Office, Myriad Genetics and the University of Utah Research Foundation, who hold patents for the BRCA1 and BRCA2 human genes. These genes are associated with breast and ovarian cancer, and, according to research, women with mutations of such genes have a higher risk of developing these cancers. Although screening for these genes can allow women to catch such cancers early and thus advance their treatment more quickly, the ACLU and PUBPAT believe that patents on the BRCA1 and BRCA2 genes can prevent such screening. The ACLU and the Public Patent Foundation argue that these patents thus are unconstitutional and invalid. The first hearing on this case was held on October 1, 2009, based on the defendant’s motion to dismiss. Due to the wide-reaching effect of these patents on women’s health and cancer research, it seems this debate will not quiet down in the near future. With organizations, such as the American Medical Association and the March of Dimes, supporting the ACLU in this suit and the amount of awareness the ACLU has raised regarding this topic, even if this suit is dismissed, the fight against such genetic patents will continue.

For more on this topic and events held by the ACLU and PUBPAT please go to http://www.aclu.org/freespeech/gen/brca.html.

Joker Obama: Copyright Infringement or Political Parody?

2009-08-19T13:23:00.000-05:00

It’s certainly no joke. Yet another image of Obama has stirred up “copyright infringement concerns,” according to the photo-sharing website Flickr. This time, the image features U.S. President Barack Obama painted with the Joker’s clown makeup from the movie, “The Dark Knight.” Firas Alkhateeb, a 20-year-old college student from Chicago, created the image by using Adobe Photoshop to “Jockerize” the Obama photo. During the time that the Obama-Joker photo was hosted on Flickr.com, it generated over 20,000 pageviews until Alkhateeb received an email from the website informing him that the photo had been removed due to “copyright infringement concerns.” Now, many are lashing out at the website, insisting that image constitutes fair use as a political parody, a protected form of free speech. For this reason, there has been much controversy over whether Flickr’s removal amounted to political censorship.

More about this story can be found at LA Times.

Prof. Christopher Yoo on "The Transformation of the Internet"

2009-05-04T11:31:00.000-05:00

The emergence of the Internet as the dominant means of communication over the past decade represents one of the most remarkable developments of our nation's technological history. A medium that began as a way for academics to send e-mail and exchange files has become a nearly ubiquitous phenomenon that has transformed almost every aspect of daily life.

The vision of the Internet as it existed in the late 1990s continues to serve as the starting point for current debates over communications policy. In framing the issues in this manner, policymakers overlook important changes in the economic and technological environment surrounding the Internet, including:

* The number and nature of Internet users
* The nature and variety of Internet applications
* The variety of networking and end user technologies
* The diversity of business relationships
* The maturation of the industry

In this lecture, delivered on April 21, 2009, Professor Christopher Yoo of the University of Pennsylvania Law School analyzed the nature of these changes and explored their potential for reframing current debates over Internet policy.

SEAS will host Lawrence Lessig on Friday the 17th.

2009-04-10T14:46:00.000-05:00

The page with information about the event does not specify whether the event is open to the entire campus or not. The information is as follows:

For anyone who has ever used an image or other digital media under the "creative commons" license, or who would like to learn more about digital rights and intellectual property issues with respect to the internet, the following event will be of particular interest:

"Change v2: What Changes Obama Will Need"
Lawrence Lessig, Professor of Law, Stanford Law School
Friday, April 17, 2009, 5:00 pm
Location: Wu and Chen Auditorium, Levine Hall

In discussing the advice being given to our elected officials and current technological policies, Lessig, founder of the creative commons, will bring to light current problems and issues we now face when it comes to copyright law in a digital platform.

Lessig is a professor of law at Stanford Law School and is a former board member of the Electronic Frontier Foundation (EFF), was advisor on technical issues to Barack Obama during his presidential campaign, and is author of several books on the policy issues of intellectual property.

This event is sponsored by Penn Engineering, the Science and Technology Wing and The Dining Philosophers.

Symposium: Global Trademark Protection

2009-04-02T19:00:00.000-05:00

The second panel presentation discussed trademark protection in a globalized world. Panelists discussed the economics of trademark protection, new issues in protecting trademarks internationally, and the impact of the recession on counterfeiting. Speakers on the panel included:

Moderator: The Honorable Kent Jordan, Third Circuit Court of Appeals
Glenn Gundersen, Dechert LLP
Marcia Paul, Davis Wright Tremaine LLP
Jef Pearlman, Public Knowledge
Martin Schwimmer, Trademark Blog and Moses & Singer
Peter Vogl, Jones Day

Symposium: Trademark Use in Virtual Environments

2009-04-02T18:41:00.000-05:00

The first panel presentation of the day discussed the use of trademarks in virtual environments. Panelists discussed what it means to have virtual trademark, how trademarks in virtual worlds differ from real-world trademarks, and what types of issues arise in the new medium. Speakers on the panel included:

Moderator: Professor Christopher Yoo, University of Pennsylvania Law School
Bryce Coughlin, Steptoe & Johnson
Kevin Goldstein, Stradley Ronon Stevens & Young, LLP
James Grimmelmann, New York Law School
Sharon Marsh, US Patent & Trademark Office

Video Coming Soon

PIPG to Host International Trademark Symposium

2009-03-27T04:53:00.000-05:00

Penn Intellectual Property Group's second annual symposium, to be held on Wednesday, April 1st, is titled "Trademark Law in a Global Economy." We are interested in exploring modern issues in trademark law that have arisen as a result of the globalization of businesses and the rise of the Internet. Specific panel topics are (1) trademark use in virtual environments, and (2) trademark protection in a globalized world (discussing the trademark problems businesses face as they attempt to expand globally, as well as the increasing importance of the Internet for global IP law).

The symposium will be held on the Penn Law campus in Philadelphia, and will run from approximately 10:00am - 3:00pm.

PIPG would like to thank Jones Day for its generous support.

The full schedule is as follows:

10:00: Check-in and breakfast

10:30-12:00: Panel 1
“Trademark Use in Virtual Environments”
Moderator: Prof. Christopher Yoo
• Bryce Coughlin, Steptoe & Johnson
• Kevin Goldstein, Stradley Ronon Stevens & Young
• James Grimmelmann, New York Law School
• Sharon Marsh, U.S. Patent & Trademark Office

12:00-12:30: Lunch

12:30-1:15: Bret Parker, VP, Chief Trademark & Copyright Counsel, and Asst. GC, Wyeth
"View from the Corporate Frontline: Practical Thoughts on the Benefits and Pitfalls for Brand Owners in the Global Online World"

1:15-1:30: Break

1:30-3:00: Panel 2
“Trademark Protection in a Globalized World”
Moderator: The Hon. Kent Jordan
• Glenn Gundersen, Dechert
• Marcia Paul, Davis Wright Tremaine
• Jef Pearlman, Public Knowledge
• Martin Schwimmer, Moses & Singer
• Peter Vogl, Jones Day

If you are a practicing attorney or a law student and you would like to attend, please contact me at karenac@law.upenn.edu. There are 3.5 CLE credits available for this event.

VIDEO: FCC Commissioner Deborah Taylor Tate at Penn Law

2009-02-17T13:16:00.000-06:00

In December, FCC Commissioner Deborah Taylor Tate gave a presentation entitled "From the Boardroom to the Classroom: Piracy Impacts and Solutions." Her talk was sponsored by Penn Intellectual Property Group and the Center for Technology, Innovation, and Competition.

Commissioner Tate focused on industry innovations to guard against piracy, explained the effect of "net neutrality" on those efforts, and defined what the government's role should be in ensuring that intellectual property rights are not infringed upon in the digital communications age.

Video of Commissioner Tate's presentation is available here.

It's All About Change: Fairey v. AP

2009-02-11T00:24:00.000-06:00

Did Shepard Fairey, creator of the ubiquitous images that formed a central part of the Obama campaign, change a photograph by an Associate Press photographer enough to qualify for a fair use defense?

A federal judge in Manhattan will ultimately decide the issue, but both images are posted here so that you can draw your own conclusions (courtesy of the NY Times). Fairey has asked the court to grant a declaratory judgment against any potential copyright infringement claims advanced by the AP.

More about the case can be found via the New York Times, WSJ's Law Blog, and Am Law Daily.

International: Software Pirates - where do they all come from?

2009-02-05T10:06:00.000-06:00

The Pirate Bay has just released a Google-powered map that tracks the number of IP-infringing connections per country.

The TorrentFreak's "pirate bay map" records bittorrent communication, logging the locations to and from which its trackers are transferred. The map indicates the origin of the users who are connecting to its trackers, and it updates in real time.

According to the map at the time of this posting, the leader in traffic is China. The map indicates that 33% of all connections to the trackers originate from the .cn domain, which equals about 7 million peers. Considering that the site is officially blocked in China, these numbers are even more impressive.

Other Asian locations host massive amount of users as well, with 5.9% of connections coming from Taiwan and 4.2% from Japan.

The United States is a home to 8% of the users, and Sweden - the home of the Pirate Bay - hosted over 1% of them. Sweden had about 250,000 peers, which--out of a population of nine million --is not nearly as bad as some of the other countries.

In Europe, Spain has been the leading country, owning a little less that 5% of the connections.

The map is arguably only the beginning of a larger project to provide detailed statistics on the tracker’s users.

Read more here and here.

International: Pirates in Britain will not be disconnected from the internet

2009-01-26T10:30:00.000-06:00

One of the new strategies of the music industry internationally is to find new policemen to enforce its rights in the digital world.

ISPs are extremely appealing candidates in this regard, since they can disconnect users from the Internet. Using ISPs can prevent repeated infringements and deter new ones. The music industry lobbied aggressively in various countries to enact a law that will force ISPs to disconnect repeated infringers from the Internet. The BRI, which represents the British record industry, has almost succeeded in passing such legislation in Britain, as the British government had seriously intended to compel internet companies to cut off customers who ignore warnings not to download music and video files illegally.

However, an interview with The Times with Mr. David Lammy, the British Intellectual Property Minister, revealed that the Government had ruled out creating a law. He questioned whether such a law can actually be possible.

While the music industry expressed disappointment of the reverse turn, ISPs--who consistently objected the heavy hand of the legislator being involved in their business--expressed satisfaction, saying that it is impossible to attract people to use the Internet and at the same time to scare them away.

Seven million British share files illegally every year, and the damage to the industry is said by the industry to amount to £180million a year.

Apple is sued over the search technology of the IPhone

2008-11-25T10:05:00.000-06:00

EMG Technology LLC, a one-man's company, filed a patent infringement lawsuit on Monday against Apple in the US District Court in Tyler, Texas.

The suit alleges that the navigation and display technology used for mobile websites by the IPhone infringes a patent that was obtained last month by EMG's founder and two co-inventors and assigned to EMG.

Mobile websites are modified versions of regular websites, designed for display on small screens.

The complaint is available here.

HLS Professor Challenges the Constitutionality of RIAA File-sharing Lawsuits

2008-11-20T08:07:00.000-06:00

Joel Tenenbaum, a graduate student from Harvard, is just one of the random assortment of individuals being sued for sharing music via peer-to-peer application.

For Harvard professor Charles Nesson this lawsuit was the last straw. He is defending Tenenbaum, and has filed a counterclaim against the specific plaintiff and against the RIAA, challenging the constitutionality of the Digital Theft Deterrence and Copyright Damages Improvement Act of 1999, upon which the suit was filed.

This act is one of several legslative initiatives designed to provide a stronger protection to copyright owners in the digital age. Nesson claims the act has basically made the courts “a low-grade collection agency” for the RIAA. Suits are being brought randomly, singling out few out of the many Americans who use peer-to-peer networks, and seeking to punish them beyond any relation to the damage that they have allegedly caused. Many of these suits lead in fact to significant results for the RIAA in outside the court settlements, only because their targets do not have the resources to defend themselves in court.

Prof. Nesson’s ultimate goal is to drive the music industry to find new ways of distributing music in the digital age and encourage the legalization of the phenomenon of sharing of music on-line.

This is not the first attempt to render copyright legislation excessive and unconstitutional, so expectations should be reduced for Prof. Nesson. However, questioning the RIAA strategy may have the power to drive a change in the arena of on-line music consumption.

Read more:
Eon (Charles Nesson’s blog): The Copyright Theft Deterrance Act of 1999
Computerworld: Harvard professor offers new challenge to RIAA antipiracy campaign

Is the Poor Economy Affecting Patent Filings?

2008-11-16T11:58:00.000-06:00

It is commonly accepted wisdom that patent lawyers will be in demand no matter how badly the market is faring. However, a recent Patently-O post, courtesy of Paul Janicke at the University of Houston Law Center, now casts doubt on that belief.

Since the economy tanked in September, Prof. Janicke has found that patent filings are down by 20%. In September and October of 2007, 513 patent suits were filed; during that same period in 2008, there were only 409 filings.

Could the decrease be due to the fact that there are fewer deep pockets to sue? As one Patently-O commentator put it, "When the host dies, the parasites die with it. With fewer profitable companies to leach off it is inevitable that there are fewer leaches."

The Digital Millennium Copyright Act Turns 10

2008-11-10T09:45:00.000-06:00

October 28th marked an important anniversary for the digital IP community, as the Digital Millennium Copyright Act celebrated its tenth birthday. For a birthday present, the Electronic Frontier Foundation issued a scathing report, arguing that the law has been unjustly applied against "consumers, scientists and legitimate competitors."

The DMCA, designed to protect copyrights in the digital age, bans circumvention of digital rights management and other technological protection measures in return for limited safe harbors for ISPs who comply with the law's notice-and-takedown provisions.

The Act remains highly controversial, challenged from the perspectives of practical aspects as well as policy considerations. The EFF report claims that the act has failed to prevent digital piracy, and has instead succeeded in creating severe side-effects--such as harming fair use, free speech, scientific research, technology progression and legitimate competition.

You can access the EFF's full report here: http://www.eff.org/deeplinks/2008/10/dmca-ten-years-unintended-consequences

Is Google Books Fair Use? We May Never Know.

2008-10-29T10:16:00.000-05:00

Instead of battling it out in court, Google has agreed to pay $125 million to settle two copyright lawsuits by publishers and authors over Google Books. The deal will make millions of books searchable and printable online, although downloads of copyrighted material are going to cost you.

The settlements requires Google to obtain content owners' permission before publishing snippets for in-print books, although pages of text from out-of-print will still be available. Unfortunately for copyright scholars, this part of the settlement precludes a court decision about whether such snippets constitute "fair use"--a subject that has inspired a great deal of debate since Google Books launched in 2004 (see here for comments from the pro-fair use crowd (check out the video!), here for an argument that more legislation is needed in this area, and here and here for a more detailed analysis).

Here's the full story, including more details about the settlement. Google's press release about the deal can be found here.

Sony accuses Rev. Phelps of copyright violation for online video parody

2008-10-26T14:13:00.000-05:00

This week, Sony/ATC Music Publishing in New York City wrote to Rev. Fred Phelps and his church group, known for picketing soldiers’ funerals across the nation, telling them to stop what it claimed was “unauthorized use” of the song “Holding Out for a Hero,” featured in the 1984 film “Footloose.” Sony accused Phelps and the Westboro Baptist Church of violating copyright laws with their online video parody, “There Are No Heroes.”

The video highlights the church’s controversial stance against homosexuality in connection with the belief that soldiers’ deaths in the Iraq and Afghanistan wars serve as God’s punishment for the U.S. tolerating homosexuality.

Fred Phelps’ daughter and the church’s attorney said the group will continue hosting its video of the song on its Web site. She maintains that Sony “said in their letter that it is a parody, but they lost their perspective. They hate these words. We said plainly there are no heroes and that is what the song is about. Under the fair use doctrine, this is proper for us to do.”

Phelps responded to the letter from Peter Brodsky, Sony’s executive vice president for business and legal affairs, this past Friday, claiming that Westboro’s use of the song is exempt from copyright laws because the video is a parody.

This is the second time in recent years that a music company has accused Phelps and his church of copyright infringement. Last year, Warner/Chappel Music Inc. in Los Angeles viewed the group’s parody of “God Hates the World,” to the tune of “We are the World” as a violation of its copyright.

Find this article in Business Week. Further details on this story and a link to the “There Are No Heroes” video can be found here.

Analysis: The Politics of IP Law

2008-10-22T15:54:00.000-05:00

Apparently, politics and intellectual property are more related than I thought! Two articles this week discuss the role of YouTube in the presidential campaign.

A Wired article describes the problem of DMCA notices in the political context. The McCain campaign, which has seen several videos yanked from YouTube based on alleged DMCA violations, has asked the site to commit a full legal review of all take-down notices for content posted by political candidates and campaigns.

In the New York Times, Prof. Lawrence Lessig explains that the use of excerpts from debates and interviews should be considered fair use when employed to create political advertisements. Instead of relying on the existing nebulous fair use analysis, however, Lessig suggests that copyright law be revised to clearly exclude political content. Otherwise, Lessig says, free speech will be unjustly stifled. The editorial can be found here.

Background:

The Supreme Court has hinted that the fair use doctrine is necessary to reconcile the inherent tension between the Copyright Clause and the First Amendment. See Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 558 (1985) (describing copyright law as "the engine of free expression"). This doctrine is particularly well-developed within the Second Circuit, which has explained that the role of the fair use doctrine is to balance "the public interest in the free flow of ideas with the copyright holder’s interest in the exclusive use of his work.” Warner Bros., Inc., v. Amer. B’casting Co., Inc., 720 F.2d 231, 242 (2d Cir. 1983). Thus, where matters of public interest are concerned, courts have held that the importance of the public’s right to full information may outweigh the content owner’s profit interest. See, e.g., Time, Inc. v. Bernard Geis Asscs., 293 F. Supp. 130 (S.D.N.Y. 1968) (holding the reprint of video stills from President Kennedy’s assassination to be fair use).

The notion of fair use has often come into conflict with the Digital Millennium Copyright Act (DMCA), passed in 1998 to prevent copyright infringement on the Internet. The DMCA set up a notice-and-takedown system, requiring those who believed their rights were infringed to notify a website. So long as the site removes the offending content, it avoids liability. In order to have their content allowed back on the site, posters must affirmatively challenge the DMCA claim. Because this encourages sites to remove content first and ask questions later, this system has been subject to criticism on First Amendment grounds (see the EFF's site for more).

Political advertisements fall in an interesting area of First Amendment doctrine. In general, political speech receives the highest degree of First Amendment protection, because it is at the core of a democratic society. Commercial speech, however, may be subject to greater restrictions. In its most recent decision dealing with campaign advertisements paid for by third parties, the Supreme Court declared, "Where the First Amendment is implicated, the tie goes to the speaker, not the censor." See FEC v. Wisconsin Right to Life, 551 U.S. __ (2007).

Analysis:

Although the removal of political advertisements mid-campaign is troubling, there is an easy solution to the McCain campaign's soundtrack problem--buy a license to use the songs! We have a mandatory licensing scheme for music in the U.S., and those who wish to use the creative works of others should pay them for it. Moreover, a use will not be "fair" when it affects the licensing market for a work, which unfettered access to the works of others may well do. It is one thing when a creator makes a mashup for fun and posts it on YouTube, but here we are dealing with presidential campaigns that have millions of dollars to spend. Licensing fees tend to be quite reasonable, so is it really too much to ask campaigns to pay them? Feel free to disagree with me the comments.

The use of debate clips and interviews is more problematic. Although most courts would find it to be fair use, the DMCA system allows websites--not courts--to make the initial call. Websites have every incentive to err on the side of caution, and remove the content from their sites. For this narrow use, I believe Lessig's suggestion is an important one to consider.

No You Can't: Obama Campaign Sued for Trademark Infringement (but not really)

2008-10-21T16:02:00.001-05:00

Generally, politics and IP law don't come into contact much, but this story was too fun to ignore. According to a humor column in New Jersey's Politicker, the phrase "yes we can" is trademarked by the National Center for Home Food Preservation and Canning, a D.C. lobbying group. (Get it?) A protest rally against the campaign's alleged trademark infringement drew a whopping 35 people. Asked about the lawsuit, a canning executive stated, "That slogan is known all over the country for just one thing: canning.”

Although not a real claim, we thought it would be interesting to give it a brief analysis. Since no consumer would reasonably believe Obama has entered the canning industry, presumably the claim here would be one of dilution. Under the Trademark Dilution Revision Act of 2006, the NCHFPC need only show that the campaign's use of the phrase is likely to cause dilution. However, they must also demonstrate that their use of the phrase is "famous" and "distinctive." Canning executives' claims aside, the "plaintiffs" here would be unlikely to meet this burden.

The full story can be accessed here.

Penn Law Review Seeks IP-Related Submissions

2008-10-21T15:45:00.000-05:00

The University of Pennsylvania Law Review is seeking essay submissions advancing a legal argument related to the 2008-2009 symposium topic, "Foundations of Intellectual Property Reform." The symposium will explore possible reforms, innovations, and impending issues in patent, copyright, and trademark law.

The winning paper will be published in the University of Pennsylvania Law Review’s Symposium Issue in Spring 2009, and the author will be invited to attend the conference in Philadelphia on January 16-17, 2009.

For more information, following this link.

Prof. Lessig Praises Amateur Remixing

2008-10-17T02:24:00.000-05:00

In an essay for the Wall Street Journal Online, Prof. Lawrence Lessig of Stanford Law condemns copyright owners for pursuing legal action against amateur creators. He urges several changes in the law, including the deregulation of the "amateur remix" and the de-criminalization of peer-to-peer file sharing. The full article can be read here.

The essay is excerpted from Lessig's book "Remix," which will was released yesterday.

Welcome Back!

2008-10-10T01:00:00.000-05:00

The Penn Intellectual Property Group (PIPG) develops and promotes intellectual property programs within the Penn Law and greater Philadelphia community. Among its activities, PIPG has hosted panels on topics including IP Careers, Biotechnology, and Arts and Entertainment. Last year, we organized a symposium on copyright and technology that brought prominent legal scholars and representatives of Google, Viacom, Comcast, and Sony, among others (see posts below).

This year, we hope to be even stronger by creating additional on-campus programs and developing this blog as a resource for current developments in IP law. If you are interested in serving as a contributor to this blog, or in helping with our activities in any way, please contact Karen Chesley at karenac@law.upenn.edu.

More information about the club will be provided at our introductory meeting on Wednesday, October 15, 2008, in room G-213 at noon. Pizza will be served.

Video: William Patry on Internet Metaphors

2008-03-27T17:00:00.000-05:00

William Patry, copyright blogger and Senior Copyright Counsel at Google, spoke about "Internet Metaphors and Why we Need to Lose Them." Mr. Patry explained that because judges have absorbed language in which the Internet is described as a "place" you can visit, courts have often come to the wrong conclusion.

Mr. Patry also countered Prof. Werbach's suggestion that Google had "no idea" how to make YouTube profitable. "I don't think we'd pay $1.65 billion dollars ... being clueless about how to [make a profit]." Mr. Patry said the plan for the site was to engage in more licensing deals.

Click below for the full video:

Video: Kevin Kuzas of Comcast Interactive Media

2008-03-27T15:16:00.001-05:00

Kevin Kuzas, VP and General Counsel of Comcast Interactive Media, delivered a keynote address entitled "Copyright Challenges in Internet Video." Mr. Kuzas spoke about the issues faced by those trying to license video for the Internet. CIM runs Fancast, an Internet video site which hosts content licensed from Viacom and other content providers.

For the full video, click below:

Video: Panel on User-Generated Content

2008-03-27T13:08:00.001-05:00

Our first panel of the day was titled "User-Generated Content: Cooperation or Litigation?" Topics included the Viacom-YouTube lawsuit, the validity of litigation in creating beneficial legal precedents, and the impediments to full cooperation between content owners and content providers. For the full video, scroll down to the bottom of this post.

Kevin Werbach asserts that "YouTube doesn't even know how it's going to make money" as Google's Bill Patry looks on.

Viacom's Stanley Pierre-Louis (right) discusses his company's recent initiatives to add online content. Professor Michael Carroll of Villanova (left) listens.

Kevin Werbach of Wharton (center) registers his objection to the term "user-generated content" when describing copyright infringement problems caused by sites like YouTube.

Video, Part 1:

Video, Part 2:

The panelists, seated from left to right, were:
• Michael Carroll, Professor of Law, Villanova School of Law
• Stanley Pierre-Louis, VP and Associate General Counsel, Viacom
• Kevin Werbach, Assistant Professor of Legal Studies, Wharton
• Lance Koonce, Partner, Davis Wright Tremaine
• Gideon Parchomovsky, Professor of Law, UPenn Law (moderator)

Blogging the Symposium: Government Role in IP

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The third panel featured a lively debate on the proper role for the government in enforcing intellectual property rights. In particular, discussion focused on the PRO-IP act, a controversial bill which had proposed increased damages for infringement and a new government bureaucracy to ensure the protection of copyright.

Sherwin Siy, above left, discussed the recent markup of the bill, which moved out of subcommittee only after the provision to disaggregate damages was struck.

Many of the questions focused on whether it was proper for the government to spend a significant amount of money to protect a private right. Prof. Post pointed out that the nature and protection of property rights changes with technology, noting that at one point flying an airplane over one's land was considered a trespass. The government, he said, should not be in the business of protecting outdated business models. From the audience, Prof. Parchomovsky, the moderator from the first panel, questioned whether the benefits would outweigh the costs of such a proposal.

Charles Sanders (far left) said that less protection for artists would lead to the decline of professional artists in favor of amateurs, countering a comment by Prof. David Post (far right) that people create even in the absence of an ability to make money. There may be more works of art than ever, Sanders said, but they are not of the same quality as professional products. Also pictured are Sherwin Siy and Sigal Mandelker from the DOJ. Ms. Mandelker opposed the creation of a new government office for copyright, noting that the DOJ has already been prosecuting large-scale infringers.

Prof. Christopher Yoo (far left) moderated debate between Mr. Sanders and Prof. Post. Mr. Sanders told Prof. Post that if they sat down and talked, they would probably agree 98% of the time. Prof. Post said if that was true, he would buy him a beer--by the end of the panel, it became clear that no beer would be forthcoming. They did agree, however, that the music industry needed to adopt a new business model in the face of changing technology.

Blogging the Symposium: Filtering and Fair Use

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The second panel focused its discussion on whether current methods to control copyright infringement, especially filtering and DMCA takedown notices, unduly impinge on fair use. David Sohn voiced concerns that the filtering technology would be unable to recognize content that would be considered fair use. The panel also considered whether the current fair use is working, and agreed that although it is an imperfect system, it's the best we've got. Kathleen Carignan said that it would be easier if things could categorically be determined to be fair use, but the factors test is necessary to ensure that the use is indeed "fair."

ABOVE, LEFT: Gregory Marchwinski of Red Lambda, a manufacturer of filtering software, and the rest of the panel listen to a question from the moderator. ABOVE: Jennifer Pariser of Sony explains why copyright infringement harms the music industry. Also pictured are Gregory Marchwinski (left) and David Sohn of the Center for Democracy & Technology (right).

Robert Terrell (right) explains how the University of Pennsylvania responds to DMCA takedown notices while David Sohn (left) and Kathleen Carignan of Philadelphia Volunteer Lawyers for the Arts look on.

Moderator R. Polk Wagner, far left, and the full panel.

For more on this panel, see Sherwin Siy's commentary here.

Copyright & the Internet Symposium

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March 20, 2008--Yesterday, PIPG hosted notable scholars, practitioners, and policy advocates at its inaugural symposium, entitled “Copyright & the Internet: Solutions for a Digital World.” The discussion focused on the entertainment industry's ability to respond to challenges posed by mass copyright infringement on the Internet, the use of filters, and what role, if any, the government should play in protecting copyrighted works.

In the upcoming days, we will post commentary and pictures from the event. The full schedule was as follows:

Panel 1: “Industry Response to User-Generated Content: Cooperation or Litigation?”
Moderator: Prof. Gideon Parchomovsky
Panelists:
• Michael Carroll, Professor of Law, Villanova School of Law
• Lance Koonce, Partner, Davis Wright Tremaine
• Stanley Pierre-Louis, Vice President and Associate General Counsel, IP and Content Protection, Viacom
• Kevin Werbach, Assistant Professor of Legal Studies, Wharton

Featured presentations
• Kevin Kuzas, VP and General Counsel, Comcast Interactive Media
"Challenges in Internet Video"
• William Patry, Senior Copyright Counsel, Google Inc.
"Internet Metaphors and Why We Need to Lose Them"

Panel 2: “Can Copyright and the First Amendment be Reconciled in the Internet Age? Filtering, Takedown Notices, & the Role of Fair Use”
Moderator: Prof. R. Polk Wagner
Panelists:
• Kathleen Carignan, Director, Philadelphia Volunteer Lawyers for the Arts
• Gregory Marchwinski, CEO, Red Lambda
• Jennifer Pariser, Executive Vice President, Sony/BMG
• David Sohn, Senior Policy Counsel and Director, Project on IP and Technology, Center for Democracy & Technology
• Robert Terrell, LAW ’86, Associate General Counsel, UPenn

Panel 3: “Government Involvement in Copyright Regulation: Discussing the U.S. Role in Monitoring IP Infringement Online”
Moderator: Prof. Christopher Yoo
Panelists:
• Sigal Mandelker, LAW '00, Deputy Asst. Attorney General, DOJ
• David Post, Stern Professor of Law, Temple's Beasley School of Law
• Charles J. Sanders, Counsel, Songwriter's Guild of America
• Sherwin Siy, Staff Attorney and Director, Global Knowledge Initiative, Public Knowledge

PIPG would like to thank Hogan & Hartson for its generous support.

Welcome to the PIPG Blog!

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This blog is run by the members of the Penn Intellectual Property Group (PIPG), who are students at the University of Pennsylvania Law School. We hope to create a resource for web users interested in intellectual property law, and to keep the legal community updated about our events.