Archive for June, 2012

A perspective on why copyrights should NOT be abolished

Friday, 29 June, 2012 15:23 Written by Mark Malek 12 Comments
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By: Mark R. Malek

As many of you know, I am quite active on twitter.  Feel free to follow me if you would like @ptolawyer.  With over 23,000 followers, I often discus intellectual property topics using the twitter interface.  For the most part, I provide updates to intellectual property law and answer questions of some of my followers. I have met many colleagues on twitter, and often use it to bounce questions off of them.  I especially like hearing about the success of some of my colleagues in the patent and/or trademark prosecution process.  Twitter is also a great way for me to follow the various conferences that may be going on around the country.

Over the past couple of days, however, I found myself in a debate with a few twitter users about copyrights.  For the most part, I understood most of their points, and I did not necessarily disagree.  The big issue was the extent of copyright protection.  At least that is what I thought it was.  Turns out that a few people who decided to chime in were trying to advance the position that copyrights should be abolished completely.

 That’s where they lost me.  Let me first address the argument that copyrights are overly broad and that they are sometimes overly enforced.  I agree with the later part, but not so much the first part.  I guess if someone is trying to use copyrights to enforce something that they are not meant to protect, there is an issue.  For example, I have seen too many times over zealous parties trying to enforce the function of software using a copyright.  Let me say this in no uncertain terms – COPYRIGHTS DO NOT PROTECT FUNCTION.  There simply is no discussion to be had on this.

Copyrights do have their place though, which is why I even begin to understand where the copyright abolitionists are coming from.  During the twitter debate this past week, the copyright abolitionists were trying to explain to me how copyrights infringed their civil liberties and that Congress is not empowered to provide for copyright protection. Seriously?  The United States Constitution specifically provides Congress with the power to promote arts and science through copyrights and patents.  Guess what?  They did just that.

Let me take another approach regarding the copyright abolition view.  Let’s pretend that you are musician and you and your band have scratched and clawed to make it.  You have played in dive bars on late Friday nights to a rowdy crowd (yes, I have been a part of those crowds before) and you might be paid barely enough to cover the expense of the fuel to and from the bar.  One day, a song of yours becomes really popular and it turns out that there are some people who are willing to pay for your music.  You have finally made it, and the way that you are going to make a living from now on is to sell your music.  Unlike the big music business of today, you decide to go it alone without a label, put your music up on iTunes, and sell it for a reasonable price.  Despite selling it for a reasonable price, some folks decide that it is not worth paying for it.  These are the ones that start sharing your music in the form of digital files on some nefarious internet sites.  What can you do?  You can attempt to use copyright law to stop them from distributing your music without your consent and, more importantly, without paying you.

The copyright abolitionist is ok with this.  Apparently, no one should be compensated for creating new works of art.  To be fair, the copyright abolitionist does not come out and say this.  Instead, they stop short and just say that there should no longer be copyrights.  Ok, tell me the end of the story.  How does the creator of an original work of art ensure that the original work of art is not misappropriated?  Is the creator simply left to rely on the decency of people and hope they will pay for something that is otherwise available for free?  Get real.

I guess that brings me to the question of the day to the copyright abolitionist – what does the creator of a work of art do if the work of art is misappropriated in the absence of copyright?

I will continue to post on this topic.  Let me know what you want to chat about and I’ll write some more.  I figure my next article will be about the over enforcement of copyright.  Perhaps I’ll even discuss some copyright cases that I have had in the past and how some copyright owners are just out there on what they believe their rights really are.

TO TRADEMARK A CATCHPHRASE

Tuesday, 26 June, 2012 18:00 Written by danieldavidson 0 Comments
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By Daniel Davidson

Catchphrases have become the new gold rush.  Proof in point: when the “one percent” marched on Wall Street, everyone rushed to trademark “Occupy Wall Street.”  When seal team 6 assassinated Osama Bin Laden, Disney rushed to pan up the trademark “Seal Team 6,” and if Disney is doing it, it is to make money.  Recently settled, David Hester of the reality t.v. show Storage Wars and rapper Trey Songz went to the court to see who in fact owned the rights to the catchphrase “YUUUP.”

So what is a catchphrase?  Dictionary.com defines the word as, “a phrase, as a slogan, that comes to be widely and repeatedly used, often with little of the original meaning remaining.”  If you have a group of friends, I am sure a catchphrase has developed between you all.  Now, why would a catchphrase be important to trademark?  Can it be trademarked?

Catchphrases can be trademarked as long as it identifies and distinguishes the goods or services, offered by the owner of the catchphrase, from those of others, and if it indicates the source of the goods or services.  Simply putting the catchphrase on a shirt would not fulfill this requirement though, and would most likely be refused registration due to being merely ornamental.  In order to fulfill the requirements of a trademark or service mark, the catchphrase would need to be displayed on a tag, display associated with the goods or services, etc.  Questions of proper uses of catchphrases as trademarks or services marks would be best answered by a trademark attorney.

Have catchphrases been trademarked before?  Of course.  Below are some catchphrases that you may recognize.

“Let’s Get Ready To Rumble” registered in 1995.

“That’s Hot” was registered by Paris Hilton in 2007.

“Thug Life” was registered by Amaru Entertainment, Inc. (Tupac) in 2011 but was filed for in 1996.

“LIFE IS LIKE… A BOX OF CHOCOLATES” was registered by Paramount Pictures in 2012.

Cybersquatting: What It Is and What It Isn’t

Monday, 25 June, 2012 06:00 Written by Aaron B. Thalwitzer 0 Comments
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A friend recently asked for my counsel with respect to a claim that his company was cybersquatting. In short, he was accused of registering and using another company’s domain with the intent to profit from the other company’s goodwill. In this case, my friend, in a stroke of foresight, bought a host of domains in the late 1990s, to secure his company’s online presence. One of these included a domain very similar to the alleging company’s trademark. But he had purchased the domain with the intent the use it in his business, and, get this, it was over 10 YEARS before the alleging company even used the name! They had the gall to send a cease and desist demanding that he turn over the domain, without compensation, and stop using it (and probably to say he was super duper sorry and really bad too).

He had a few options. Turn it over and be done with it. C’est la vis. I didn’t like that one since the other company was being a bully, and they had no rights to the domain. The better option was to string them along a little while longer until they made an initial offer to purchase (or came up with better proof of our infringement). I was hesitant to advise that we offer to sell, as offering the domain for sale is part of an element of cybersquatting. But what is cybersquatting, specifically, and what isn’t it?

Cybersquatting is registering, selling or using a domain name with the intent of profiting from the goodwill of someone else’s trademark. It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses.

Allow me to add that my friend and his competitor are not “famous” like some of the early victims of cybersquatting (such as Panasonic, Hertz, and Avon).

Under the provisions of the Anticybersquatting Consumer Protection Act (ACPA), a trademark owner may sue an alleged cybersquatter in federal court to seek an order transferring the domain back to the trademark owner. Sometimes, the cybersquatter must pay damages to the owner.

To prove cybersquatting, the trademark owner must prove the following:

  1. the domain name registrant had a bad-faith intent to profit from the trademark
  2. the trademark was distinctive at the time the domain name was first registered
  3. the domain name is identical or confusingly similar to the trademark, and
  4. the trademark qualifies for protection under federal trademark laws — that is, the trademark is distinctive and its owner was the first to use the trademark in commerce.

If the accused cybersquatter demonstrates a reason to register the domain name other than selling it to the trademark owner, he will probably get to keep it.

Here, my friend registered the domain. No question there. But even he lacked bad faith intent, that is ultimately a question of fact. Next, the trademark was not distinctive when my friend registered his domain — it didn’t even exist! So, the second element should win the day. Skipping element 3, since we could argue all day over whether it was “similar”, does the mark qualify for protection and was the owner the first to use it in commerce? We know he wasn’t first to use it, since we beat him to the punch by at least a decade.

Going back to whether my friend had a bad faith intent to profit, a court may consider many factors, including nine that are outlined in the statute:

  1. the registrant’s trademark or other intellectual property rights in the domain name;
  2. whether the domain name contains the registrant’s legal or common name;
  3. the registrant’s prior use of the domain name in connection with the bona fide offering of goods or services;
  4. the registrant’s bona fide noncommercial or fair use of the mark in a site accessible by the domain name;
  5. the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
  6. the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
  7. the registrant’s providing misleading false contact information when applying for registration of the domain name;
  8. the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others; and
  9. the extent to which the mark in the domain is distinctive or famous.

I believe we prevail on all enumerated factors. We were using the domain for legitimate business, before the other party even used the mark they now own. I don’t take well to bullies, especially when their claims are groundless. Before threatening others, you’d be wise to learn what cybersquatting is, and what it isn’t.

IAM Seine … Really …

Tuesday, 19 June, 2012 13:52 Written by Bill Harding 1 Comment
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Intellectual assets encompass intellectual property and potentially a lot more.  To simplify the startup of a company’s Intellectual Asset Management (IAM) program, focusing on one or more of the traditional intellectual asset (IA) categories of Products, Processes, Services, and Brand is a good way to establish a baseline inventory of IA candidates from which to initiate disciplined management and exploitation of those assets.  Sounds easy, right?

Well, actually, no.  Complicating question:  At what level of abstraction should the company track its intellectual assets?

Why Not CM?

Configuration management practice is concerned with identification, change management, status accounting, and audit of the fundamental structural units of a company’s assets.  These fundamental units are commonly called configuration items, and can comprise such intangibles as individual requirements documents, software, models, and plans.  Most organizations practice some level of configuration management.  Depending on the organization, configuration management is often treated as falling on a spectrum somewhere between a lifecycle change management function and a librarian function (don’t get me started on that!).

As an old software configuration manager myself, I can imagine saying to an IAM professional seeking to audit my company’s intellectual assets, “Listen, our team already tracks our software configuration items down to the individual file level … sometimes even to the function level.  Can’t you just use our software configuration item list? (translation: “… and spare me the time and bother of yet another audit?”)

Level of Abstraction Test

Tracking of assets for IAM purposes likely requires a different level of abstraction than tracking of configuration items for change management purposes.  The trick to avoiding unnecessary duplication of tracking effort is to seine out just the assets that merit management attention for IAM purposes, and to leave the other assets to be tracked at the right levels using other, more appropriate procedures.  The following series of questions serves as a good test for determining a workable level of abstraction for tracking IA:

Is it Sellable?  -  If the defined unit conceivably could be sold to an acquirer as a stand-alone asset, or certainly if the unit is being marketed for sale as a coherent whole, then that defined unit is a candidate to be tracked as an individual intellectual asset.  For example, a software company that anticipates selling a particular product line to another software provider in the future at very least would track its full complement of source code, design documents, training manuals, and other software artifacts as a single intellectual asset.  Alternatively, if that company can imagine a scenario whereby the source code and the software training documentation could be sold separately to two different buyers, that might suggest tracking the code and the documentation as two distinct intellectual assets.

Is it Licensable? – If the defined unit is currently licensed as an operable whole to one or more consumers for use, or if the unit could conceivably be so licensed, then it is a candidate for individual IA tracking.  Furthermore, if the defined unit is now or could conceivably be licensed to another vendor (e.g., a value added reseller) for inclusion in that company’s product or service offering, that licensability as a plug-and-play unit suggests the right level of abstraction for uniquely tracking the asset.  Note this test lends itself to monetization flexibility.  For example, our fictitious software company above may shudder at the thought of licensing its full complement of source code to anyone, for fear of its cash cow being pilfered.  However, that same company may see little risk in licensing for inclusion in a non-competing product a stand-alone subset of that software: say, for example, its login function written for a smart phone platform.

Is it Protectable for a Business Purpose? – If the company would be harmed beyond acceptable cost and effort to replace the defined unit should it be lost, destroyed, or “discovered” by a competitor; then the unit should be considered for individual tracking and management.  Also, if the defined unit is mentioned by name in employment agreements, subcontractor agreements, and/or nondisclosure agreements executed by the company, that suggests the unit is an intellectual asset worthy of individual tracking.

Is it Reusable? – If a defined unit is a component of an asset that is nearing end of life, but can conceivably be reused in another asset; then tracking that unit as an intellectual asset in its own right can prevent accidentally ignoring or losing that asset during a product or service offering transition at the company.

Wise selection of the appropriate level of abstraction for tracking of intellectual assets can make or break a business’s IAM program.  Wasteful duplication of tracking effort or unnecessary complexity can cause the program to collapse under its own weight.  But don’t let that challenge deter program start:  Much like in seine fishing, if you happen to net an asset that turns out not to be what you were expecting to catch …

throw it back, and just keep fishing!

The Oatmeal v. FunnyJunk: Winning and Losing in the Court of Public Opinion

Monday, 18 June, 2012 06:00 Written by Aaron B. Thalwitzer 0 Comments
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Matthew Inman, aka "The Oatmeal".

This one will be short and sweet, because (ironically, as you will see), other lawyers have already created excellent content which I want to share with you. An excellent content-provider site of which you may be aware, The Oatmeal, has recently been involved in what is best described as a feud with content reproducing website, FunnyJunk (which does not deserve a link), a site which generates over 10 million hits each day.

Short story long, the owner/operator of The Oatmeal, Matthew Inman, wrote a blog post deriding FunnyJunk for blithely mirroring virtually The Oatmeal’s entire website on its site and reaping advertising dollars all the way:

Here’s how FunnyJunk.com’s business operates:

  • Gather funny pictures from around the internet
  • Host them on FunnyJunk.com
  • Slather them in advertising
  • If someone claims copyright infringement, throw your hands up in the air and exclaim “It was our users who uploaded your photos! We had nothing to do with it! We’re innocent!”
  • Cash six-figure advertising checks from other artists’ stolen material

Inman concluded by concisely summing up the current state of Internet copyright enforcement: “I realize that trying to police copyright infringement on the Internet is like strolling into the Vietnamese jungle circa 1964 and politely asking everyone to use squirt guns. I know that if FunnyJunk disappeared, 50 other clones would pop up to take its place overnight, but I felt I had to say something about what they’re doing.” And really, Inman just wants attribution, “Just proper attribution; just give me a link!” he told ArsTechnica.

FunnyJunk whined that it’s content was uploaded by third-party users (true) and so it wasn’t responsible. Inman noted that even a DCMA takedown notice would likely be ineffective since other users would just re-upload the content (also true). Things went back and forth and all around the Internet.

Eventually, FunnyJunk lawyered up, hiring attorney Charles Carreon, who demanded all manner of things, including that an online fundraiser for The Oatmeal (and some worthy charities) be shut down for vague but ultimately nonsensical issues Carreon raised. Indie GoGo, the host of the fundraiser, flatly refused to shut it down, since there was nothing wrong with it, and Inman lawyered up.

Inman’s lawyer sent a well-written and researched response to Carreon, who has hopefully ended his ill-considered crusade against a beloved Internet cartoonist.

The lesson is clear. On the Internet, unless you have truly deep pockets, and often even then, the court of public opinion can be every bit as important as any court of law.

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