Pritchett v. Pound No. 05-41445 December 18, 2006 (5th Cir)

Pound was an employee of Pritchett; and his employment agreement/ job description included that he would be“completing regular written
assignments and the development of new products and procedures;” and that “[s]hould the Employee produce any written materials in the course of
his work with the Employer, then such shall be done for and on behalf of the Employer and all work produced shall be the exclusive property of the Employer.”

While still employed in 1988 and 1989, Pound co-authored two books which Pritchett both filed for copyright applications at the United States Copyright Office, and published and sold successfully.

When completing the copyright application, Pritchett erroneously checked “NO” in response to the question, “Is this a Work Made For Hire?”; and went on to identify Pound as an “author” on that form. The copyright applications resulted in registrations; and an effort to correct that error at the Copyright Office was blundered in 1990.

In 1995, Pound died. Pritchett was generous in accomodating the widow including paying the entire one million dollar bonus that year even though Pound had only worked one quarter of that year.

In 2002, Pound’s widow sued Pritchett as a joint author demanding an accounting and damages.

Pritchett defended that Pound was not an author, and that the Work Made For Hire doctrine trumped the errors in the copyright application.

The Fifth Circuit agrees with Pritchett stating that a more clear agreement of the parties was needed to change the status of Work Made For Hire. The error in the copyright application was not substantive or effective in changing ownership.

Faessler v. United States Playing Card Co 1:05-cv-00581; U.S. District Court for the Southern District of Ohio

Michael Faessler was a cadet at the United States Military Academy when he composed a playing card set modeled on the military ranking system (lowest rank correlates to lowest card and so on). Faeseller registered his set with the United States Copyright Office; offered to sell the cards through the military commissaries but was declined that opportunity.

Upon learning that his identical card sets were being manufactured, and distributed by the military commissary, Faessler sued.

Two of the defenses raised were that there is no copyright in the set; and that the location of copyright notice solely on the joker card and not on any of the other cards caused any copyright to be forfeit and the work in the public domain.

The trial court held that the copyright in the set is valid and enforceable; and that the notice on the joker card alone is sufficient.

Roger Miller Music, Inc. v. Sony/ATV Publishing 2007 WL 443048
In what is becoming a normative complicated and attenuated set of facts for a renewal case, this case involves whether the renewal of Roger Miller’s 1958 - 1964 music was timely.

Mary Miller, the widow of Roger, sued Sony for copyright infringement asserting that the Roger Miller estate and not Sony owned the renewal rights. Key to the complicated set of facts is that Sony filed the renewal documents on behalf of Miller personally in the twenty eighth year, before Miller died later in that same twenty eighth year.

This tee-ed up the question simply as: can a copyright renewal term vest before the renewal term begins?

The issue is further complicated because these pre-1978 musical works are now governed by the 1998 Bono Copyright Extension Act which states:

Section 304(c)(2)(A) At the expiration of the original term of copyright in a work specified in paragraph (1)(B) of this subsection, the copyright shall endure for a renewed and extended further term of 67 years, which —

(i) if an application to register a claim to such further term has been made to the Copyright Office within 1 year before the expiration of the original term of copyright, and the claim is registered, shall vest, upon the beginning of such further term, in the proprietor of the copyright who is entitled to claim the renewal of copyright at the time the application is made; or

(ii) if no such application is made or the claim pursuant to such application is not registered, shall vest, upon the beginning of such further term, in the person or entity that was the proprietor of the copyright as of the last day of the original term of copyright.

The trial court ruled that because Roger Miller was alive at the time that Sony filed the renewal, the renewal rights went to Sony.

The renewal rights of the pre-1978 works are proving to be valuable; and the courts are giving us more guidance on when and how the timing of the renewal dance works. More proof that copyrights are economically vibrant, still.

Tenn. Walking Horse v. Nat’l. Walking Horse 2007 WL 325774 (M.D. Tenn. Jan. 31, 2007)

Out of Tennessee, we learn that facts about horses that are selected, arranged and organized in a registry are copyrightable.

Here are the facts: The Tennessee Walking Horses Breeders Association of America (TW) has been keeping a registry since 1935 which keeps the details of just under half a million horses’ pedigree and related information such as identifying details, unusual markings and legacy data.

In part precipitated by the controversy over ’soring’ the Tennessee Walking Horse, a separate association, The National Walking Horse Association, (NWHA) was formed in 1998 to promote the breeding of that specific horse breed without the training technique called ’soring’ that makes the horse lift their feet in the archetypal manner of that breed. In July of 2004, the NWHA rolled out a registry that was to be analogous, but separate from the TW registry.

TW obtained a copyright registration for its registry; and, filed a copyright infringement action against the NWHA alledging that the NWHA registry infringes the TW registry compilation copyright. TW’s summary judgment motion details that their registry comprises facts that are specifically selected, organized and arranged, including unique colors and combinations, markings, identifiers and abbreviations. (“blaze lower lip, sock left hind leg,
fetlock right hind leg”).

Judge Todd Campbell, of the Tennessee federal trial court ruled, in January of 2007, that the copyright registration is valid and that NWHA’s copying constituted copyright infringement. The court discarded the NWHA’s defense that that the small facts of that were used were ‘de minimis’.

Or at least you should be. On February 2, 2007, Cheryl Bentley sued Donald Trump and the creators of the NBC television series The Apprentice for allegedly creating an illegal lottery in the state of Georgia.

The “Get Rich With Trump” sweepstakes is a watch-and-win promotion where entrants watch the television show and, at the prompting of the announcer, text in which Apprentice contestant should be sent to “Tent City.” The rules state that in addition to any mobile phone text charges that may apply, Sponsor will charge entrant a $.99 “premium” charge per text entry. The rules also allow for a free method of entry online.

Perhaps the sweepstakes attorney who vetted this promotion should be sent to Tent City instead. Many states carry laws on their books that clearly state that a free method of entry does not cure an otherwise illegal lottery. If the pay-to-play method of entry does not provide the entrant with something equal in value to what was paid, the lottery is still illegal. In this case, an entrant gets no more for its money that does an entrant who chooses to use the Internet entry method.

Trademark 101: two companies cannot use an identical mark for similar or related products. This is to avoid consumer confusion. The company that owns an earlier federal registration with the U.S. Patent and Trademark Office (”PTO”) generally prevails; the other must change the name of its product (with many nuances and exceptions, of course!).

Now everyone is talking about the Apple iPhone. But have you heard of the Linksys iPhone? Probably not until Cisco (Linksys’ parent company) filed a much publicized lawsuit against Apple over the mark “iPhone” two weeks ago. Cisco claims that it owns senior rights in the mark and that Apple cannot use the name.

Cisco’s complaint is available here

Cisco has owned a PTO registration for “iPhone” since 2000 (when it purchased the company Infogear). Apple owns foreign applications for the mark (in Asia, Europe and Australia). Cisco’s registration is for “computer hardware and software for providing integrated telephone communication with computerized global information networks” (Reg. No. 2,293,011). In December 2006, less than a month before the anticipated launch of the Apple Iphone, Linksys, a division of Cisco, released its iPhone handheld device.

The differences between the devices may play a role in resolving the dispute. Cisco’s iPhone products work with Voice over Internet Protocol (VoIP) services (like Skype), while the Apple iPhone is more like a conventional cell phone that uses internet connections, not to make calls, but to browse the web or check emails. The differences are subtle, but judges and the PTO have been known to allow identical marks to coexist in the telecommunications and software industries if the products have different uses and markets.

Another issue that may come up in the case is Cisco’s use of the mark since 2000. Infogear was using the mark for its line of “phone-plus-internet” products, but did Cisco use the mark in commerce before launching its own iPhone device in 2006? This is important because if a mark has not been in use for 3 consecutive years and the owner has done nothing to try to resume use of the mark, the PTO may presume that the owner has abandoned the mark. Apple may use that argument to try to invalidate Cisco’s registration.

Stay tuned for updates on the dispute…

In the meantime, bloggers are already coming up with alternate names for Apple’s iPhone: MacPhone, iTalk, iCall, iWishIHadABetterName…

On January 1, Bulgaria and Romania became the 26th and 27th members of the European Union (”EU”). Bulgaria and Romania are probably not on your radar now, but they may be in the future, as the two countries continue to grow their economies and modernize their infrastructures to meet EU standards.

In the meantime, the news is likely to affect your trademark rights if you are doing business in Europe, or if you are planning to expand your business to the Balkan states.

First, a few words about trademarks in Europe. The EU has a system, called the European Community Trademark (”CTM”), that allows companies and individuals to file a single trademark application that covers all member countries (instead of having to file individually with each country’s trademark office). When new countries join the EU, like Bulgaria and Romania did two weeks ago, they join that system automatically.

What does this mean practically?

First piece of good news for companies with pre-01/01/07 CTM applications and registrations: their trademark rights are automatically extended to the two new member countries. They can now enforce their marks in Bulgaria and Romania — even if the infringers have filed trademark applications in those countries. Of course, with the good comes some bad (and possible confusion). To help in the transition, owners of national trademarks in Bulgaria and Romania have been granted an exceptional right to oppose confusingly similar CTM marks filed between July 1 and December 31, 2006. The extension of the EU also means that the CTM office can now object to marks on the basis that they are generic or descriptive in Romanian and Bulgarian. This will not be a problem for most companies as their marks probably do not have a meaning in those languages. Nevertheless, companies looking to file trademarks in the EU may want to take these new elements into consideration when chosing a mark to be used in the European market.

For more information about what the EU enlargement means from a trademark perspective, the European Trademark Office published a circular available at:
http://oami.europa.eu/en/enlargement/enlargement2007.htm

A couple of individuals whose last names are Tucker and Ruth have filed a couple of important law suits in the last month. Class action law suits which means that the plaintiff is asserting that the true number of plaintiffs that form the ‘class’ in the ‘action’ are too numerous to count. The operative word is “individuals” here because that is the constituency of people who are downloading music from Apple’s iTunes and buying music from the conventional big music players (Sony, BMG, Universal, TimeWarner).

The two class action cases are based on a claim that Apple and the big music players are effectively a monopoly because they collectively are over 75% of the market providers of music; and, because they have deliberately and consciously disabled the individuals in the market from having the right/ability to use the music that they are acquiring over different platforms. In short, it is the choke hold that Apple and the big music players have over the music buyers options of how or where to play the music that is the problem.

The law suits are a further indication that the consumer market is growing intolerant with being dictated to and restricted in how the music plays. The ‘Consumer Technology Bill of Rights’ has been percolating through the grassroots communities for some time and involves these rights:

1. Users have the right to “time-shift” content that they have legally acquired.
This gives you the right to record video or audio for later viewing or listening. For example, you can use a VCR to record a TV show and play it back later.
2. Users have the right to “space-shift” content that they have legally acquired.
This gives you the right to use your content in different places (as long as each use is personal and non-commercial). For example, you can copy a CD to a portable music player so that you can listen to the songs while you’re jogging.
3. Users have the right to make backup copies of their content.
This gives you the right to make archival copies to be used in the event that your original copies are destroyed.
4. Users have the right to use legally acquired content on the platform of their choice.
This gives you the right to listen to music on your Rio, to watch TV on your iMac, and to view DVDs on your Linux computer.
5. Users have the right to translate legally acquired content into comparable formats.
This gives you the right to modify content in order to make it more usable. For example, a blind person can modify an electronic book so that the content can be read out loud.
6. Users have the right to use technology in order to achieve the rights previously mentioned.
This last right guarantees your ability to exercise your other rights. Certain recent copyright laws have paradoxical loopholes that claim to grant certain rights but then criminalize all technologies that could allow you to exercise those rights. In contrast, this Bill of Rights states that no technological barriers can deprive you of your other fair use rights.

These cases pursue number two and four, above, the right to space shift and the right to use legally acquired content on the platform of their choice.

The Recording Industry Association of America (RIAA) seems to have gotten a grasp on the solution ahead of the big music company members who comprise the RIAA. Cary Sherman, president of the RIAA, recently joined in possibly supporting these two ‘rights’ when he said, “We are focused on interoperability”.

What interoperability will look like; and whether the leading device manufacturers, Apple and Microsoft, will begin to offer some version of ‘pret a porter’ remains to be seen. But the recipients of music are definately not passive recipients. Consumers want the music and they want to be able to take it with them beyond the machines from which they first legitimately access it. Watch this space. As it is known, we’ll be discussing it here.

Jeff Koons has contributed mightily to measuring the metes and bounds of what constitutes ‘fair use’ in making unauthorized use of someone else’s copyrights. He did it with images of puppies; he did it with celebrity photographs; and now, he’s done it again with ladies legs.

To begin at the beginning, Andrea Blanch, a professional photographer, took a series of photographs of women’s legs that were used in the August 2000 issue of “ALLURE” magazine.

Jeff Koons, in fulfilling on a commission from the Guggenheim Foundation and Deutsche Bank, elected to scan a portion of Blanch’s legs; and, then Koons took the digital scan of Blanch’s work and digitally superimposed those Blanch images against a background of pastoral landscapes. The resulting image is said to comprise to a ‘collage’ which was then reduced to templates for painting upon billboard sized canvases and entitled “EasyFun-Ethereal”. The Koons’ collage (with Blanch’s work embedded) was exhibited in 2000 and 2001 in Berlin and New York City.

Blanch sued; and, Koons succeeded at the trial court level on his defense of fair use. Blanch appealed; and the Second Circuit had a long look at the picture. After the court found that the first and second factors of the four-part fair use analysis demonstrated that the collage was both transformative and constituted social commentary. With ‘transformative’ recognized, it was not surprising that fair use was found, but it didn’t help when Blanch admitted that the use of her photographs did not harm her career, the market for her work or the value of the work in the market place. ( No. 05-6433-cv, 2nd Cir.; 2006)

Koons must be appreciated for his fondness for incurring legal fees. He is a Don Quixote of ‘Fair Use’ who has quite a track record for galvanizing fine copyright case law. Maybe there is a Guggenheim grant funding that quest on which Koons has led so many lawyers and students. Not surprisingly, Koons had his own team of lawyers; and the Guggenheim Foundation had their own team of lawyers; Deutsche Bank had their own team of lawyers…. and giving a grant to Koons begins to look like that old PRELL commercial for lawyers’ full employment.

Chris Gregerson, an individual professional photographer representing himself in Minneapolis federal court, fails in obtaining an injunction against a financial institution that appropriate his photograph of the Minneapolis skyline; but succeeded in eluding a defamation counterclaim.

Defendants use the allegedly infringing photograph in their real estate web ads, print ads, brochures and in third party business directory advertisements, changed only by the elimination of Gregerson’s copyright notice.

Gregerson, after learning of the infringement and finding no satisfaction in his demand that defendants stop infringement, posted on his own website to make his accusation of copyright infringement more public and explicit. The defendants in Chris Gregerson v. Vilana Financial Inc. et al (No. 06-1164, D. Minn.) counterclaimed that Gregerson’s website constituted defamation and trademark infringement. Specifically, the defendants claim that the organic search engine results are skewed as a result of the defendant’s trademarks depicted in Gregerson’s website.

Gregerson defended claiming a first amendment right to state his criticism of defendants.

This is another in a long line of cases where the First Amendment trumps intellectual property causes of action; and it especially predictable when the First Amendment claim includes a criticism.

Now with YouTube allowing 90,000 new videos to be posted daily, this action is remarkable not for the controversy but because Gregerson knew, could locate and serve the parties that are making allegedly unauthorized use of his photographs. Take a look at the YouTube site and especially the most popularly viewed. None of the photographs, music or other third party copyright is authorized on YouTube; and we haven’t see a spate of law suits. What a boon that safe harbor clause of the DMCA is for us all, right?