Posts Tagged ‘over enforcement’

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By: Mark R. Malek

As promised in my last article, I wanted to provide you with an example that I have come across of the overenforcement of copyrights. The articles that I am posting lately regarding copyrights find their origin in a debate I had recently on twitter with some folks that believe that copyrights should be abolished.  As indicated in my last article, I just do not understand the thoughts of copyright abolitionists.  That is despite the several times that they have tried to explain it to me.  Go back and read some of the back and forth comments in the last article.

I do understand the view that copyrights are sometimes over enforced.  The example I provided in my last article was when an alleged owner of software attempted to bring a copyright infringement lawsuit against one of my clients, but took the position that since my client’s software performed the same function, it must have infringed the copyright of his software.  WRONG!  The unfortunate part is that my client had to engage in federal litigation in order to win his case, but it just should not have ever even come to that point.

In that particular case, the two parties attempted to enter into a business relationship, but for a number of reasons, they decided to go their separate ways.  One party moved forward with a very old version of his software.  The other party, my client, decided to independently create a new version of the software without copying a single line of code or any screen shot of the original version of the software.  In fact, the new version of the software was written in a completely different software language, had a different appearance, and carried out far more functions than the original.

Despite all of the above, my client was, nonetheless, served with a lawsuit alleging, among several other ridiculous causes of action, copyright infringement.  There are two options at that point.  First, ignore the lawsuit, have a default judgment entered against him, and the court grant all the relief that the plaintiff is asking for.  Second is to fight the suit.  Of course, a third option, settlement, was explored, but that did not exactly work out.

Throughout the process, I was up against an attorney that really did not have much experience in copyright litigation.  This is despite being admitted to the bar for about 30 years (probably more, but I didn’t care to ask).  I have always said that intellectual property law is not something that an attorney should dabble in.  It is pretty specialized, and although times may be tough for some attorneys, that does not mean they need to start practicing door law, i.e., they can handle any case that walks in the door.  It was very frustrating to continuously try to explain copyright law to opposing counsel, and to have to appear before the court simply for the court to also explain why certain things were not discoverable.  Turns out the case was just an attempt for the plaintiff, who was not a proficient computer programmer, to get his hands on my client’s source code so that he could infringe it.

Almost needless to say, the case ended in my client’s favor, but to what end?  My client spent substantial sums of money defending a case for copyright infringement when there really was no case to be made for copyright infringement.  This was an example of someone trying to overenforce a copyright.  This guy had a copyright in the original software, but was not pleased that someone else had a software that carried out a similar function.  Again – function is not protectable with copyright.

I’m going to keep posting on this topic.  Some of the issues I want to discuss in the future is going to be about the copyright term (why it may be too long) and the blurred lines between copyrights and patents.

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By: Mark R. Malek

Back in September, International House of Pancakes sued the International House of Prayer for trademark infringement and trademark dilution.  We first wrote about this story here.  Of course, we had some fun with the article, but at the same time, provided our analysis of why IHOP (Pancakes) may have had a point.  The LA Times reports that the pancake giant has now dismissed its suit against the religious group noting that the parties have agreed to resolve their dispute out of court.

Since the case was filed, I have observed a lot of chatter (yes I am referring to my fellow tweeps) about how bad the big corporation was for bringing suit against a church.  Dig a little deeper folks.  It is not as though this is a tiny community church of a few families in the middle of nowhere.  This was a very large organization that served the needs of many families.  Further, and according to the article in the LA Times, it is not as though they should have been surprised when the suit was filed.  The pancake giant, like many other trademark holders, sent warnings to the church group.  These warnings are generally in the form of a “cease and desist” notice.

I am one who appreciates a cease and desist notice and take them as an opportunity to remedy a situation prior to litigation.  At the end of the day, if both parties can check the ego at the door, and I mean both parties (even the trademark holder) then there is likely some sort of middle ground that can be reached.  That is not to say that all cases should settle.  In this particular case, the pancake giant really has no choice but to enforce their trademarks.  If they do not, then their trademarks become nearly valueless.  This case wound up in litigation because their notices (or attempts to resolve the matter) apparently went ignored.  What choice did they have?  It is overly-aggressive enforcement of trademarks that drives me nuts – see my series on Facebook here, here and here.

It is unclear what the terms of the settlement are, but I suspect that the settlement will include some sort of terminology that preserves IHOP’s (Pancakes) rights to enforce its trademarks, and some sort of recognition by IHOP (Prayer) of the validity, distinctiveness, etc. of the IHOP (Pancake) trademarks.  The moral of the story is that if you find yourself on any side of a trademark dispute, you really should attempt to engage in meaningful settlement negotiations prior to taking the dispute to the next level, i.e., costly litigation.  Any attorney that tells you otherwise is really just looking out for his/her own interest!

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Gravatar Iconby Mark Malek

Although this happened a few weeks back, I still get a kick out of this story, and I’ve been hearing more and more about it.  The Naked Cowboy (Robert Burck) has sued The Naked Cowgirl (Sandy Kane) for allegedly infringing on his trademark.  I am not too sure what his trademark is, but I suppose it is a nearly naked person strumming a guitar in the middle of a major metropolitan area and generating revenue by getting television coverage on the likes of The Today Show.  Before you ask, the answer is no.  I don’t get it!  A lot of you ladies out there might get it, but not me.

It sure is cold out here….shrinkage???

The Naked Cowboy earned his fame by walking around New York City in nothing but his cowboy boots, cowboy hat and a pair of draws while strumming his guitar and, in the process, entertaining New Yorkers.  He’s not a bad looking man, and he has a body that is ever so slightly nicer than mine (insert fat joke here) so naturally, he was able to make some money off of his bit.  As the saying goes, if you’ve got it, flaunt it.  I’ll stick to writing these articles.  I’ll leave the naked lawyering to someone else.

I don’t see why they can’t co-exist!

I did a quick bit of research and I did not find a registered trademark for “The Naked Cowboy.”  I am truly wondering what the cause of action is here.  Mr. Naked Cowboy is likely asserting common law trademark causes of action, and it attempting to stop someone else from profiting from his unique act.  At this point, it will be up to a court to decide whether or not trademark protection can be afforded for his act.

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Gravatar Iconby Mark Malek

The lawsuit between Ozzy Osbourne and Tony Iommi over the Black Sabbath trademark has been “amicably resolved” (source).  Ozzy filed a lawsuit in May of 2009 after finding out that Iommi filed a trademark application for “Black Sabbath” with the U.S. Patent and Trademark Office.  The lawsuit claimed that Iommi illegally took sole ownership of the trademark when he filed the application with the USPTO.  The relief sought in the complaint for a 50 percent interest in the trademark, along with a portion of the profits that Iommi may have realized from use of the trademark.  Ozzy claimed that it was his vocals that gave the band it’s extraordinary success.  I’d bet that’s the same case for “The Osbournes,”  the MTV reality show.

Black Sabbath is an English band formed by Ozzy, Iommi, Geezer Butler and Bill Ward in 1968.  The band went through many iterations, but the one constant throughout the years was Iommi.  Ozzy left the band in 1979.  The original lineup reunited in 1997 and released one album. 

Don't we all own this trademark????

Don't we all own the trademark???

This case was kind of interesting to me because it seemed to be a trademark dispute between two guys (Iommi and Ozzy) over a trademark that many people could probably claim an ownership interest in.  From what I can see, there were more than 20 members of Black Sabbath over the years.  It seems to me that many of those members, or their estates, could be entitled to some of the profits that are derived from the “Black Sabbath” trademark.  Without question, Iommi and Ozzy are the most popular members of that band, and probably did lead to most of its success, but this case had every potential to get ugly quick.  I am sure that this came up in the settlement discussions, i.e., some attorneys probably sat around a table and advised the two that if the case got dragged out, they should not be surprised if several other members of the Band came out of the woodwork to claim their piece of the pie.

Iommi is welcome to join our family anytime!

Appraently, the possiblity of yet another reunion has not been ruled out.  It is a crying shame that “The Osbournes” reality show is not still around.  Theycould have had entire episodes based solely on this lawsuit.  The ratings would have been through the roof.  Wishful thinking!

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Gravatar Iconby Mark Malek

The Digital Millennium Copyright Act (DMCA) was signed into law by President Clinton in 1998 and is an implementation of two World Intellectual Property Organization (WIPO) treaties.  To make it much simpler than it really is, the DMCA is directed to provide protection to copyright owners that find their copyrighted materials improperly posted on the Internet.  Again, that is a big oversimplification of the provisions of the DMCA, but it is enough of a background for this story.  The full text of the DMCA can be found here.

On its face, the statute provides an important enforcement mechanism for copyright owners who can’t necessarily afford to hire a legal team.  As it works now, copyright protection is created without any real effort on the part of the author, and as a result, it is incredibly easy for someone to have enforceable copyrights.  With the current state of technology, it is becoming equally easy to infringe on them, so lawmakers wanted to make them just as easy to enforce.  However, as with nearly every other well-intentioned legislative initiative, the DMCA’s power to do good has been twisted by the hands of the wicked into a weapon for evil.

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