Who Is Your Lawyer? » infringement

Copyrighted

Robert Scott Lawrence — Tue, 13 Dec 2011 19:25:20 +0000

The other day I was talking to a non-lawyer friend of mine – a smart, successful guy – and he started telling me about this new website he had set up and how he was thinking of patenting the site. As an IP lawyer, I tend to cringe when I hear laypeople bandy about terms of art in ways that don’t make any sense, so of course I asked him what he meant, and whether his website performed any kind of magic hocus-pocus that could even hypothetically allow it to fall within the realm of patentable subject matter.

It did not.

It was merely your standard, cookie-cutter, off-the-shelf WordPress theme with no modifications or alterations, no unique HTML code and no embedded processes. The site did not even contain original photographs, since the web designer he had hired contented himself with stock photos purchased from Getty. While they were nice photographs, and the site itself was attractive, there was nothing about it that would cause a lawyer to make haste for the patent office.

After looking at his site, I told my friend I did not see a basis for a patent application, so he switched gears and asked if I could trademark the website, or copyright it. While both of these options are possible – and, in fact, trademarking a URL has historically been fairly common – of late the PTO has been turning away dot-com trademark applications like unwanted junk mail. And although copyrighting the content of a static website is technically feasible – all one has to do is send off a copy of the text with a check to the copyright office – as a practical matter it does not serve much purpose. Under prevailing U.S. law whatever you write and publish to the web is automatically protected by copyright, and formally registering that material with the government merely gives you the right to sue any subsequent infringer for statutory damages. While that may be enough to justify registration for some folks, usually it is just a waste of $35.

The one exception to this would be if you created a website using a new language (e.g.,YOU-NIX). However, unless there is something special about the code which you fear will give rise to copycats or make it attractive to the BitTorrent crowd, there is very little likelihood that your source code is going to wind up being sold at underground swap meets. If it does make its way into the public domain, then you can still register your copyright and sue for infringement. The after-filed registration merely limits your available remedies, and forces you to prove the factual issue of when the material was created. When I explained all of this to my friend, he shook his head and muttered something about the opacity of the law. Then he started telling me about a great investment called derivatives. Ten minutes into his convoluted explanation about subordinated notes, second tranches, and slicing-and-dicing sub-prime mortgages I gave up and mentally departed the scene. Even if it does have a few flaws and inconsistencies (e.g., the FACE trademark), intellectual property is still far more logical than investment banking.

The only derivative I want to concern myself with is “derivative use.” The analysis may be obscure, or obtuse — it may even be opaque — but unlike financial derivatives the theory behind it remains constant. And you can take that to the bank.

Grooveshark and the Copyright Pirates

Robert Scott Lawrence — Tue, 22 Nov 2011 01:53:57 +0000

Just before the closing bell on Friday, Universal filed a copyright infringement lawsuit against Grooveshark’s parent company, Escape Media Group, in New York district court alleging that the company’s employees had illegally uploaded as many as 100,000 songs to the Grooveshark playlist. Though the complaint is not yet available on the court’s website, the allegations bandied about in the press paint a damning picture of the company’s business practices. These new allegations follow hard on the heels of last month’s comments by an anonymous tipster who claimed to be a current Grooveshark employee. According to the tipster: “We are assigned a predetermined amount of weekly uploads to the system and get a small extra bonus if we manage to go above that (not easy). The assignments are assumed as direct order for the top to the bottom, we don’t just volunteer to “enhance” the Grooveshark database … Are the above legal or ethical? Of course not . . . .”

A number of reports quote the complaint as alleging that Grooveshark’s executive officers not only directed the illegal uploading, but participated in the wrongdoing themselves, going so far as to claim that CEO Samuel Tarantino personally uploaded at least 1,791 copyrighted songs to the Grooveshark system, Senior Vice President Paul Geller uploaded 3,453 copyrighted songs to the system, and Vice President Benjamin Westermann-Clark uploaded more than 4,600 illegal tracks. Although, as a general rule, I tend be skeptical about allegations of pervasive wrongdoing in the upper echelons of a company when they are casually bruited about without any accompanying proof, the allegations – if true – do not bode well for Grooveshark’s future. The company has been plagued by similar litigation in the past, which resulted in settlements and licensing agreements with Capitol and Virgin Records (among others), but in recent days the attacks have come with a relentlessness that bodes ill for Grooveshark. Among other setbacks, earlier in the week the anti-piracy group RettighedsAlliancen (renowned for taking on Pirate Bay) exhorted the Danish courts to have the country’s Internet service providers block Grooveshark in Denmark. While Grooveshark has managed to weather such storms in the past, the efforts now being brought to bear against the company may presage its doom.

Stay tuned for further news and updates.

Update 11/23/2011: Click here for a copy of the just-released Universal v. Grooveshark Complaint. Click here to see the Exhibits to the Universal v. Grooveshark Complaint.

The Patented Toothbrush, Part Two

Robert Scott Lawrence — Sun, 31 Oct 2010 00:51:15 +0000

Between 1961-1999 slightly more than 3,000 toothbrush patents were granted worldwide. One town in China — Hangzhou City — boasts that it has 358 patents on various toothbrush designs, such that virtually every citizen is an inventor of his own particular style of brush. The brands, styles and colors of toothbrushes are endless. One manufacturer markets a toothbrush with two heads which surround the teeth, claiming it cleans teeth more effectively; another sells a toothbrush with a built-in tongue scraper, designed to remove bacteria which build up on the tongue. Another manufacturer, stressing how important it is to keep your toothbrush clean, markets a toothbrush with a hole in the center of the bristlehead to help ensure that food and other detritus is easily rinsed off. Still other manufacturers stress that bristle orientation is the key to maintaining clean teeth, and sell toothbrushes with angled bristles, which attack plaque at different angles to maximize cleaning power. The one thing everyone in the toothbrush industry agrees on is the importance of being able to reach the back molars, the most neglected and difficult-to-reach area of the mouth. One popular remedy — seemingly obvious, but a real breakthrough in toothbrush technology – has been to bend the toothbrush handle at a slight angle, between 19 and 21 degrees, for ease of maneuvering inside the mouth (see, e.g., the Reach toothbrush).

The multiplicity of toothbrush models has, as one might expect, given rise to a number of high profile lawsuits between the significant market players. In 1999, Gillette and its subsidiary Braun, manufacturer of the Oral-B Plaque Remover®, sued Optiva Corporation for making false and misleading advertisements regarding its Sonicare® electric toothbrush. Gillette alleged that the defendant’s advertising misled consumers by falsely claiming that the Sonicare® broke up plaque through the use of sonic waves — such as those that discovered the wreck of the Titanic — rather than merely by virtue of a thorough scrubbing. The jury ultimately hit Optiva for $2.5 million in damages for false comparative advertising, but almost immediately afterwards Optiva and its $175 million-a-year Sonicare® were acquired by Philips for an undisclosed sum. A mere four years later, Philips turned the tables on Gillette and sued it for patent infringement, claiming that the electronic toothbrush technology embedded in the Oral-B® infringed on patents Philips had acquired in 1995 and 2000 and incorporated in the microcircuitry of its flagship product, the Sonicare®.

The other big player in the electronic toothbrush market, Procter & Gamble, hasn’t been shy about protecting its intellectual property interests either. In 2001 it filed and quickly settled a patent infringement suit against the unfortunately-named HoMedics. The suit alleged that HoMedics’ Powerdent toothbrush infringed on P&G’s rights in the Crest® SpinBrush’s patented “Try Me” feature, which allowed consumers to turn on the brush while it was in the package — a feature guaranteed to stimulate in-store interest in the product. Astonishingly enough, in just three short years after its introduction the SpinBrush® became the most popular power brush in America and led the consumer trend of conversion from manual to power brushes. According to historical data, in 2001 nearly six out of ten power brushes purchased by consumers were Crest® SpinBrushes®.

Despite the mechanical toothbrush trend, however, many recidivist toothbrush users have refused to make the switch, and claim that they are perfectly content with the free toothbrush they get from their dentist every six months. Whether they are truly happy, or simply unaware of the grace and power that could be theirs for a mere $6.99 — and which almost (but not quite) guarantees to brighten their smile along with their day — is a story that is yet to be told. Stay tuned for part III, when I report back from Yoknapatawpha County after interviewing local residents about upgrading their toothsticks to something that ends with an ®.

Factoids About the Google Books Settlement

Robert Scott Lawrence — Fri, 04 Jun 2010 20:12:52 +0000

For those of you who are confused about what Google actually hopes to accomplish by digitizing more than 12 million books, and what the implications are for copyright holders, the Open Book Alliance has published a very interesting analysis of the proposed Google Books Settlement, which attempts to parse rhetoric from reality. The article can be found here.

The RIAA Will Sue Your Grandma

Robert Scott Lawrence — Fri, 28 May 2010 20:37:12 +0000

The RIAA has now sued or threatened to sue more than 28,000 people in the United States, in most cases extracting settlements of several thousand dollars from college students, housewives, and families with precocious preteens who downloaded music from Grokster, Kazaa, LimeWire, or BearShare. In many cases the infractions alleged are minimal (e.g., 5 songs) but the damages sought are not. The litigation strategy is intended to create the public perception that even the smallest infraction will be prosecuted and even the most naive teenager will be punished. The lawsuits are clearly not brought to win damages – suing unemployed college students has never been a winner on the Mensa list of ways to make a buck. Obviously, the real intent behind the lawsuits is to strike fear into the hearts of everyone contemplating file-sharing, to instill the thought in the back of your mind that you could be next. What the RIAA wants is for you to pause before downloading, remember the litigation horror stories, and delete LimeWire from your desktop. If you remember that RIAA lawyers are so aggressive they will not hesitate to sue your deceased grandmother, perhaps that will deter you from your illicit quest to download “I Wanna Know What Love Is” for free.

Though the RIAA’s litigation strategy apparently has a certain surface appeal to music industry egos, in real life the RIAA’s rigid litigation model has not yielded meaningful results. Apart from alienating the general public and creating an enormous amount of superfluous litigation for the courts’ already overcrowded dockets, the results have been abysmal. The RIAA has failed to discourage file-sharing, and created an underground file-sharing community that — like Ninja assassins — quietly creep up out of nowhere and download billions of songs on ever-changing platforms. Every time a file-sharing company gets big enough to be noticed and sued by the RIAA, it is replaced by yet another start-up providing exactly the same service at a new location, with better cloaking technology. While the industry can sue LimeWire, Pirate Bay, Napster, and all and sundry for all they’re worth, eventually a compromise is going to have to be made. The “we’ll sue you into the ground” business model is not working, is not good business, and is quite possibly not good law — just yesterday the 16 year old cheerleader who got sued for downloading 37 songs and was ordered to pay $27,750 filed a Petition for Certiorari with the Supreme Court asking the court to overturn the decision against her on the (frankly quite believable) grounds that she didn’t realize that file-sharing was against the law.

Hey, You Trademarked My Marathon!

Robert Scott Lawrence — Mon, 22 Feb 2010 04:22:56 +0000

I just got my annual email tickler from the Bank of America Chicago Marathon™ reminding me that registration is now open and that I only have 4 or perhaps 5 months before the 45,000 spots for runners will be closed. While I appreciate advance notice for a marathon that is not going to be run until October, the whole get-it-while-its-hot attitude toward marathon registration is a bit irksome if you are not one of those people who is inclined to plan their life eight months into the future. I am not one of those people, and my past is littered with the detritus of unfulfilled commitments to marathons. While I harbored good intentions, life waylaid me several times on the cusp of my start time with an assortment of obstacles – root canals, strep throat, injuries, psychic trauma – so now I squelch any inclination I have to fill up my calendar with races and marathons and adventure runs, knowing that I will inevitably miss a number of them despite my best intentions. Instead, I now prefer to commit to one marathon at a time, and decide what I’m going to run next after dragging my aching feet across the finish line in front of me.

The great thing about running marathons these days is that you really don’t need to book them eight months in advance – if you simply do the electronic equivalent of shaking a stick you will be assaulted with a shocking variety of running options. I was pleasantly surprised to discover that there are now so many marathons being run that I have never heard of many of them. While I’d always known about the stalwarts — the Boston Marathon™, The San Francisco Marathon™, the Philadelphia Marathon™ – and could guess the names of others by simply sticking the name of a given city in front of the word “marathon,” the world is now populated with newly created gems such as the Michelob Ultra El Paso Marathon™, the Dicks Sporting Goods Pittsburgh Marathon™, and the Under Armour Baltimore Marathon™.

Brand name corporate sponsorship of marathons comes as no surprise, of course, but I find myself preferring races that have no overt affiliation with corporations. If I’m not getting paid to run the race, why should I want to compete in something that has no rhyme, no whimsy, no sense of humor? If I have to go corporate, then I demand something like the Rock ‘n’ Roll San Diego Marathon™, where I can forget about the pain briefly as a Van Halen cover band pounds out Jump at mile 11 and the Gatorade lady slips me a smile with my 3-oz Dixie cup and a packet of Gu.

What I’m really a fan of, though, are the quirky marathons with even quirkier names — the Twisted Ankle Trail Marathon™, the Wild Wild West Marathon™, the Cincinnati Flying Pig Marathon™, the Lost Dutchman Marathon™, Humpy’s Classic™, and the ever-popular (but not very populated) Extraterrestrial Full Moon Midnight Marathon™. Running is such an individual pursuit, involving the slim and the stout, the adolescent and the senescent, the energetic and the just-plain-pooped, that slapping a humorous name on what is a rather undignified pursuit seems appropriate. While the marathon may have its distant origins in myth and legend, few of the folks hobbling along at mile 13 could tell you that the marathon originated to honor a Greek messenger who perished after running to Athens to bring news of a Greek victory in 490 B.C. And even fewer could tell you that the original marathon distance of 24 miles was lengthened to 26.2 miles at the 1908 London Olympics so that the race would end in front of the royal family’s box. They would instead tell you that they are running to raise money for cancer, or for self-empowerment, or because a friend conned them into it, or to get over the death of a pet, or because they’re trying to lose weight, or because it was on their list of 100 things to do before they died. There are as many reasons to run as the throng of 45,000 that will charge around Lake Shore Drive this October can voice, all individual, all important, all ultimately deserving of a name that dispenses with pretense.

We run to honor Pheidippides, we throw in a few extra miles for the Queen, and sometimes we even go an extra mile by accident — as did those fortunate enough to run the 2005 Lakeshore Marathon™, where race planners accidentally added an extra mile to the course between miles 25.2 and 26.2 (officially making it the longest last mile ever run). Such is the marathon. Arbitrary, strange, devilishly appealing, more related to Monty Python than to Monte Carlo. Such an event is clearly deserving of all the silly names™ a man can devise.

I Can Say Your Name!

Robert Scott Lawrence — Mon, 15 Feb 2010 20:55:29 +0000

If we pause a moment and reflect on the pervasiveness of trademarks and advertising in the world economy, we can begin to understand how – despite the lessons of history — trademark owners occasionally forget that simply trademarking a word or phrase does not remove it from the common lexicon. People can still use the word or phrase to describe the product without having to resort to tongue-twisting descriptive workarounds (e.g., they can say “he was driving a Ford Mustang” instead of “he was driving a car named after a horse manufactured by one of what used to be referred to as the Big 3”). This is as it should be, of course, since it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, reference or any other reason without using the trademark. How would the news – or even ordinary conversation – function if people were threatened by infringement lawsuits every time they referred to a person, company or product by using its trademark? Trademark law is not intended to turn life into a game of Charades.

Despite the fact that no one wants to live in a world where our language is so circumscribed that we are forbidden from actually calling things by their names, trademark owners keep insisting that they get paid every time their mark is used, even in situations where use of the mark is necessary to describe an event or product. Some of you may recall a number of years ago when the Boston Athletic Association (BAA) tried to prevent Channel 5 from broadcasting the Boston Marathon – which is of course run on public roads – on the grounds that speaking the words “Boston Marathon” aloud on national television would imply that the station had been licensed by the BAA to broadcast the marathon, and create confusion in the mind of the public over whether Channel 5 was in some way associated with the race. In summarily throwing out the case, the 1^st Circuit explained the basic tenets of the “fair use” defense – if you are describing something (e.g., a race) you can call it by name even if the name happens to be trademarked.

[T]he record provides us with an excellent reason for thinking that Channel 5′s use of the words “Boston Marathon” would not confuse the typical Channel 5 viewer. That reason consists of the fact that those words do more than call attention to Channel 5′s program; they also describe the event that Channel 5 will broadcast. Common sense suggests (consistent with the record here) that a viewer who sees those words flash upon the screen will believe simply that Channel 5 will show, or is showing, or has shown, the marathon, not that Channel 5 has some special approval from the BAA to do so. In technical trademark jargon, the use of words for descriptive purposes is called a “fair use,” and the law usually permits it even if the words themselves also constitute a trademark. See 15 U.S.C. § 1115 (b)(4) (statutory fair use defense)

Who Is Your Lawyer? » infringement

Copyrighted

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