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

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

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

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

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

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?

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

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

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

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

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

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

Microsoft Continuing Its Fight with i4i

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

The dispute over the creation and use of the Obama "Hope" poster was recently 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"

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

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?

Eight months 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”

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?

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"

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.

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.