Re:Marks on Copyright and Trademark

Reposted from DLA Piper's Media Intelligence Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

HarperCollins Publishers LLC ("HarperCollins") has filed a law suit against digital publisher Open Road Integrated Media ("Open Road") for copyright infringement in relation to the e-book rights to the children's book, 'Julie of the Wolves' (the "Work").

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Follow up post to SUPREME COURT WILL DECIDE CONSTITUTIONALITY OF REMOVING WORKS FROM THE PUBLIC DOMAIN

By Tom Zutic and John Nading

In a 6-2 decision today in Golan, et al. v. Holder, et al., the U.S. Supreme Court upheld U.S. Copyright protection for foreign works which had fallen into the public domain prior to the U.S. joining the Berne Convention for the Protection of Literary and Artistic Works in 1989.  See Slip Opinion.  Under the Berne Convention, signatories agree to treat authors from fellow signatory countries as they would treat their own.  

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Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011

By: Stefania Baldazzi and Annalaura Avanzi  (Milan)

In 1967, the well-known Italian fashion designer Elio Fiorucci founded the fashion brand Fiorucci S.p.A.  After more than two decades of success in Italy and around the world, Mr. Fiorucci sold the company and all of its creative assets to the Tokyo Company Edwin Co. Ltd in 1990.  The sale encompassed all the Fiorucci trademarks, including numerous marks containing the element “FIORUCCI.”

In 1999, Edwin Co. registered the mark “ELIO FIORUCCI,” by filing an application with the Office for Harmonization for the Internal Market (OHIM), which is a body of the European Commission, for a broad category of goods, including cosmetics, apparel, footwear and leather products. 

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By: Job Seese (New York)

Our Spring 2011 issue discussed a pending U.S. legislative bill that would expand copyright protection to fashion designs – something that generally is not available under existing U.S. law.  Known as the Innovative Design Protection and Piracy Prevention Act (IDPPPA), the bill was first introduced in the Senate in August 2010.  However, the bill was never taken up by the full Senate and effectively died at the end of that Congressional session.  Currently, a legislative bill of the same name is pending before the U.S. House of Representatives Subcommittee on Intellectual Property, Competition and the Internet.  

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This e-newsletter is written by the DLA Piper Trademarks team. For more information about the articles or the trademark services of DLA Piper, please contact trademarkemea@dlapiper.com.

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Reposted from DLA Piper's Media & Sport Group Bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

The copyright infringement suit filed in New York alleges "widespread and unauthorized reproduction and distribution of millions of copyright books" by five universities and the HathiTrust through cooperation agreements entered into with Google Inc.

The copyright infringement suit filed on 12 September 2011 by the Authors Guild, two international writers groups and eight authors, alleges that the universities and HathiTrust (a large-scale collaborative repository of digital content from research libraries) are violating copyrights by scanning, duplicating and distributing their books. The plaintiffs are particularly concerned by the plan by HathiTrust to make available a small number of 'orphan works', where no author or publisher can be located.

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Reposted from DLA Piper's Media & Sport Group bulletin

Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell

Mr Justice Floyd has referred to the Court of Justice of the European Union ("CJEU") the question of whether live streaming of television programmes over the internet is a "communication to the public" and therefore subject to copyright laws.

TV Catchup Limited ("TVC") operate an internet based live streaming service of broadcast television programmes, including films, in which the copyright is owned by broadcasters ITV, Channel 4 and Channel 5.  TVC's website allows members of the public to access live UK television on computers, games consoles and smart phones. There are over 50 channels available.

In November last year, with the threat of a copyright infringement action looming, TVC applied to the High Court for summary judgment against the broadcasters, on the basis that their claim would have no real prospect of success at trial.  TVC argued that in order to infringe copyright in a broadcast under section 20 of the Copyright, Designs and Patents Act 1988 ("CDPA 1988") ("communication to the public"), the alleged infringer's transmission must itself be a broadcast within the meaning of s.6 CDPA 1988.  Mr Justice Kitchin disagreed and the case proceeded to trial.

Last week, Mr Justice Floyd handed down the High Court's judgment.  He provisionally agreed with the claimants' contention that TVC's streaming service is a "communication to the public" for the purposes of section 20 of the CDPA 1988, but considered that the principles set out in the leading CJEU authority on this point, the Rafael Hoteles case, did not go far enough to enable him to answer the question conclusively in the claimants' favour.  He therefore referred the question to the CJEU.

Floyd J. also addressed the issue of whether TVC had reproduced a "substantial part" of the films and broadcasts in its buffers and on the screens of users.  This issue is currently awaiting judgment by the CJEU in the Football Association Premier League v QC Leisure case, in relation to the screening of live foreign broadcasts of Premier League matches in pubs.  Pending that judgment, Floyd J. expressed the provisional view that TVC had reproduced a substantial part of the films in its buffers and onscreen, but not a substantial part of the broadcasts.  Questions on these issues will also be referred to the CJEU, but are likely to be conclusively determined much more swiftly by the Premier League judgment.

Floyd J. also held that final judgment on TVC's defence under section 28A of the CDPA (which permits in certain circumstances the making of temporary copies which are transient or incidental and an integral and essential part of a technological process, and which have no independent economic significance) should be deferred pending the outcome of the Premier League case; his provisional view is that the defence does apply to reproduction in the buffers ("it is reasonably clear that the reproductions in the buffers have no independent economic significance"), but he was less certain in relation to reproduction on users' screens.

Follow up to my blog post SUING OVER THOSE INFAMOUS RED SOLES

The fashion world may have received yet another stifling blow from the federal court's decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., et al., in which the court refused to grant Louboutin's request for a preliminary injunction against YSL on claims of alleged trademark infringement resulting from YSL's red-soled fashion heels arguably similar to Louboutin's. The court ruled that Louboutin's claim to "the color red" and its 2008 U.S. federal registration covering "women's high fashion designer footwear" were "overly broad" and "inconsistent with the scheme of trademark registration established by the Lanham Act." The court further reasoned that, "[a]warding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants."

In light of the court's analysis, it is arguable whether this decision has, in fact, encouraged or stifled fashion innovation. On the one hand, this decision may have opened the door for other shoe designers to start using the color red or another arguably distinctive color on the soles of their fancy (or not-so-fancy) footwear, which in turn may further competition in the marketplace, as the court intended. On the other hand, this decision could potentially discourage fashion designers from maximizing their creativity and innovation in designing apparel and footwear out of fear that third-party copy cats will seek to imitate or trade off of their designs. 

Undoubtedly, the court's decision presents both opportunities and risks in the fashion industry that are yet to be revealed. However, as for those fashionistas who paid a pretty penny for Louboutin's signature red soles and for Louboutin himself, does this decision have the potential to negatively impact the value and/or notoriety of Louboutin's precious footwear?

In a landmark ruling, the UK High Court has delivered its verdict in Round Two of Hollywood versus the Copyright Pirates – despite Newzbin2 not even taking part in the fight.

Ringside rules

Rights-holders have long sought an effective legal mechanism to reduce the scale of online piracy of copyright material by UK users. Rights-holders are often prevented from taking action against primary infringers because they locate themselves beyond the jurisdiction of the courts or use decentralised networks in order to distribute content.  On the other hand, taking action against individual consumers has never been the favoured option.  Internet service providers ("ISPs"), the rights-holders argue, are the gatekeepers that provide the facilities that allow UK users to infringe copyright on a massive scale.  Moreover, they are not a moving target and have the practical means to restrict access to sources of infringements.

This case turned on the application of section 97A of the Copyright, Designs and Patents Act 1988, which provides that the High Court has the power to grant an injunction against an internet service provider ("ISP") where the ISP has "actual knowledge of another person using their service to infringe copyright".  The section was adopted in order to implement Article 8(3) of the Information Society Directive (2001/29/EC): "Member States shall ensure that rightsholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right".  However, despite having the potential to be a valuable weapon against infringers, the provision has long sat collecting dust, untested by rights-holders. 

Until now.

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By John Wilks and Damian Herrington, DLA Piper UK

In its first ever ruling on an intellectual property case, the UK's Supreme Court has decided in Lucasfilm v Ainsworth that the stormtrooper helmets used in the Star Wars films were not "sculptures", and thus were not protected by the English law of copyright.

Significantly, however, the Supreme Court also ruled that the infringement claims based on US copyright brought by Lucasfilm in respect of Mr Ainsworth's acts in the US were justiciable in the English courts, a ruling which could have wide-ranging implications for the ability of English courts to decide claims for acts taking place in foreign countries which infringe the copyright in those countries.  The case indicates that if a defendant is resident in England, the English courts will be prepared to deal with claims for infringement of foreign copyright.

Whether the decision leads to full scale forum shopping by copyright infringement claimants remains to be seen.  But it will give claimants a useful litigation option in cases where there is international infringement of copyright by an English-domiciled defendant.

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Guest blog post by Matthew Slevin.  Matthew is a Summer Associate in the San Francisco office of DLA Piper LLP. He is a J.D. Candidate at the University of California Hastings College of the Law.

Will children in the U.S. soon be unable to hear an orchestral performance of Peter and the Wolf?  In the coming fall term, the U.S. Supreme Court will hear Golan v. Holder, No. 10-545 (2011), which raises important questions about whether Congress can reinstate copyright protection to works formerly held in the public domain.  Among the works concerned are many important foreign films, music and art by authors such as Wolf composer Sergei Prokofiev, not to mention Hitchcock, Shostakovich, Stravinsky, Picasso and H.G. Wells.  The Court will consider two issues: (1) whether the Copyright Clause prohibits Congress from taking works out of the public domain and (2) whether the removal of works from the public domain violates the First Amendment by infringing on the free expression rights of those who rely on the use of those works.

Golan serves as follow-up to the landmark case Eldred v. Ashcroft, 537 U.S. 186 (2003), in which the Supreme Court held that Congress’ extension of copyright terms to keep works out of the public domain did not violate the First Amendment or the “limited [t]imes” provision of the Copyright Clause.  The Court in Eldred, however, left a door open for other potential violations, noting that if Congress "altered the traditional contours of copyright protection," then it could require First Amendment scrutiny. 

The two-pronged challenge in Golan concerns the “copyright restoration” provision enacted as section 514 of the Uruguay Round Agreements Act (URAA) in 1994 (and codified at 104A and 109(a) of the Copyright Act).  Intended to bring the U.S. into compliance with its treaty obligations under the Berne Convention, the URAA provided new copyright protection to tens of thousands of old foreign works that have long been in the public domain in the U.S. due to not having met registration requirements in the past.  In the case, a group of performers, publishers, distributors, and educators claim those “traditional contours” have been unconstitutionally altered.  They first brought suit against the federal government in the District of Colorado back in 2001, claiming that they relied on using the formerly public works for their livelihood and had to stop once the restored copyrights made licensing them cost-prohibitive. The case has been working its way through the federal courts ever since. 

On the Copyright Clause issue, the Tenth Circuit, in Golan v. Gonzalez, 501 F.3d 1179 (10th Cir. 2007), rejected one of Petitioners’ primary arguments: an attempt to apply Graham v. John Deere, 383 U.S. 1 (1966).  That old case stands for the rule that Congress cannot issue patents for inventions previously held in the public domain.  The appellate court found that Graham was inapplicable, citing a key difference between patent and copyright law: the quid pro quo of a patentee’s disclosure in exchange for protection is not present in copyright, under which authors, the court reasoned, are “eager” to disclose their work.  The court also relied on language in the Eldred case, which had upheld Congress’ “expansive” power to extend copyright terms absent an irrational exercise of authority. 

Now in their brief on the merits filed at the Supreme Court last month, Petitioners advance a more fundamental argument based in statutory interpretation of the “limited [t]imes” provision.  They argue that its plain meaning, along with Framers’ apparent intent to create a “permanent and stable” public domain and Congress’ history of maintaining one, point to the fact that Congress cannot restore protection to works already in the public domain.  They claim that if the URAA provision is valid, then Congress is potentially free to reinstate any work’s copyright after its initial termination, thereby treating no copyright term as truly “limited.”

As to the First Amendment issue, the Tenth Circuit held earlier this year that the URAA provision did not infringe on the petitioners’ free expression.  Golan v. Holder, 609 F.3d 1076 (10th Cir. 2011).  Applying intermediate level scrutiny to the provision, the court found that Congress had several sufficiently important interests to which the URAA was narrowly tailored, chief among them the goal of helping U.S. copyright holders by obtaining reciprocal international protection.  The Petitioners’ brief to the Supreme Court now launches an attack on that alleged interest.  They claim that goal “is not even a legitimate purpose,” because it does nothing but create private economic benefits to authors (or their estates) who created public domain works long ago.  Petitioners assert that as opposed to merely balancing the interests between the U.S. authors and parties who rely on foreign works, Congress sacrificed public speech rights in favor of potentially giving former domestic copyright holders more money.  They argue that creating private benefits is not a legitimate objective of copyright law.

As SCOTUSBlog described, Golan is “a major test of copyright power.”  It raises significant questions about the extent of Congress’ ability to regulate copyright and the complicated overlap that exists between it and First Amendment rights.  Although the facts here deal specifically with foreign works, the Court’s decision next term could have broad ramifications in all artistic spheres in the country.  To what degree can the U.S. public rely on the existence of a public domain? 

The Respondent’s brief on the merits is due to the Supreme Court on August 3.  For further examination of the procedural background and the others arguments raised by both parties, see SCOTUSBlog and Copyhype.

In its opinion, issued on June 6, 2011, the Supreme Court affirmed that the Bayh-Dole Act does not supersede the long-standing principle that the rights to an invention belong to the inventor.

The decision re-emphasizes the importance of university employers to require all employees and consultants to execute comprehensive and enforceable invention assignment agreements in favor of the university employer, and to monitor and analyze for potential conflicts each agreement required to be signed by a university employee in connection with a third-party consulting or collaboration engagement.

Read our brief overview of the decision. 

By Gina Durham & Debbie Rosenbaum

The Authors Guild v. Google, Inc., SDNY, No. 05 Civ. 8136 (DC), 3/22/2011.

The District Court for the Southern District of New York has rejected the proposed settlement of legal claims arising from Google's digitization of books and online display of excerpts in a class action copyright infringement suit brought by the Authors Guild and others against Google. 

Plaintiffs filed the suit claiming that Google had violated their copyrights and those of other copyright rightsholders by scanning their books, creating an electronic database, and displaying short excerpts without the permission of the copyright holders. In 2008, Google announced an agreement to pay $125 million dollars to settle the lawsuit. The settlement agreement also included licensing provisions, allowing Google to sell personal and institutional subscriptions to its database of books.  In 2009, the parties filed an amended settlement agreement, seeking court approval of the settlement pursuant to Rule 23 of the Federal Rules of Civil Procedure.  Several groups, including the Department of Justice and some class members, objected to the amended settlement agreement on a variety of grounds. This week, Judge Chin, writing for the District Court for the Southern District of New York, rejected the settlement.

The settlement was an attempt to balance concerns about copyright protection, antitrust issues, and privacy issues with the premise that "the creation of a universal digital library would benefit many."  However, certain objections regarding the proposed settlement's potential impact on copyright holders and on free competition prompted the Court to reject the agreement.

While Judge Chin expressed little concern with the backward-looking release aspect of the settlement, he concluded that there were portions of the settlement that went too far -- particularly the future releases -- describing it as “an attempt to use the class action mechanism to implement forward-looking business arrangements that go far beyond the dispute before the Court in this litigation."  Judge Chin continued, "The questions of who should be entrusted with guardianship over orphan books, under what terms, and with what safeguards are matters more appropriately decided by Congress than through an agreement among private, self-interested parties.  Indeed, the Supreme Court has held that 'it is generally for Congress, not the courts, to decide how best to pursue the Copyright Clause's objectives.' Eldred v. Ashcroft, 537 U.S. 186, 212 (2003)."    

Judge Chin postulated that "[w]hile the digitization of books and the creation of a universal digital library would benefit many, the ASA [Amended Settlement Agreement] would simply go too far ... Indeed, the ASA would give Google a significant advantage over competitors, rewarding it for engaging in wholesale copying of copyrighted works without permission, while releasing claims well beyond those presented in the case."  In the end, the Judge hinted that changing the procedure from opt-out to opt-in might past judicial muster.  

The court accepted over 500 briefs from various parties supporting or opposing the settlement and early last year held a hearing on the fairness of the settlement. Statements released from the Author's Guild and the Association of American Publishers suggest that they are more interested in renegotiating the settlement than appealing the decision. It will be interesting to continue to monitor this issue.  Some commentators predict that Google may pursue and opt-in approach to digitization in both the U.S. and Europe.

Mattel Inc v. MGA Entertainment Inc, U.S. District Court, Central District of California, No. 04-09049.

I originally wrote about the Bratz copyright case for my overview of 2010 cases blog post, and wanted to post an update as the story develops.  

January Update: In the dispute for the intellectual property rights to The Bratz Dolls, conceptualized during an individual’s scope of employment at Mattel but fleshed out and marketed elsewhere (Mattel-competitor MGA), Chief Judge Kozinski (who, in a prior opinion, had advised Mattel to "chill") remanded this case back to the district court. Kozinski ruled that even though the employee’s contract assigned his ideas to Mattel, the value of the trademarks the company eventually acquired for the entire Bratz line was significantly greater because of MGA’s own development efforts, marketing and investment.

February Update: The trial started Jan. 18 and was expected to last until late spring. But the story continued this week when Mattel asked a federal judge to declare a mistrial because the trial was tainted when MGA's Isaac Larian testified that Mattel caused the stress that led to his father's death and destroyed his family, among other things. 

What’s at stake: This case has huge implications for employment contracts and intellectual property developed during the scope of employment. The original case opinion focuses on whether corporations can claim ownership of their employee’s ideas, particularly where those ideas are conceived in a private context but during the employment period. This decision will have huge implications for companies whose main assets are ideas – and how they can continue to protect intangible assets in the future.

Although this case is from 2009, it is still highly relevant and useful to clients who regularly expand or are looking to expand their trademark portfolios to foreign jurisdictions.

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A 2009 U.S. Trademark Trial and Appeal Board (the "board") decision broke down the intent-to-use requirement under Lanham Act’s Section 44(e), which allows for foreign registrations as the basis for U.S. trademark registration. In Honda Motor Co., Ltd. v. Winkelmann, the Board concluded that, in filing an intention to use (ITU) application,  Section 44(e) requires more than the foreign registration of a mark to demonstrate a good faith bona fide intent to use that mark in U.S. commerce. It also requires objective evidence that the applicant intended to use the mark at the time of filing the application. Mere statements of subjective intent and a foreign registration alone are insufficient. 

Filing an ITU application based on a foreign registration, however, does not require actual use of the mark in U.S. commerce. Rather, the applicant must produce evidence, such as a written business plan or report, contracts, or records of ongoing discussions or promotional activities, to demonstrate a bona fide intent to use the mark. Where no such evidence exists, the applicant must explain why no documents exist and offer other evidence demonstrating an intent. Otherwise, the applicant risks denial of his application or loss of the pending registration. 

To avoid this dilemma, before filing for U.S. trademark registrations based on foreign registrations and use, the applicant should be prepared to produce written evidence of a bona fide intention to use the mark in U.S. commerce.