Appropriation of famous logo is trademark infringement? You be the judge.

Banksy on branding. The elusive street artist is seemingly frustrated with his own commercial success. To him great street artists need to remain criminal to keep their art pure. Most appropriation art could violate commercial law but is not criminal, unless it involves a violation of Copyright law’s DMCA. The image above is not a copyright infringement, but is potentially trademark infringement and dilution of Coca Cola’s famous trademarks in the shape of the bottle and the coca-cola script.

If Banksy’s use of Coca Cola’s trademarks are a fair use there would not be an infringment. The test for trademark fair use is different from copyright fair use. In fact there are a few trademark fair use tests. Read More »

No “Happy Birthday” for Trolls? Filmmaker seeks public domain judgement on song’s copyright

“Happy Birthday to You” is protected by copyright? The song is based on the tune from “Good Morning to All,” written in the late 1800′s. Over the years families adapted the tune for singing birthday greetings. Vexed with paying synch fees for use of the song in a film, producer Jennifer Nelson of Good Morning Productions asked a court to determine that “Happy Birthday to You” is in the public domain. Read her story at the NY Times. The case is great news! The “Happy Birthday to You” copyright claim begs several important public domain questions. Read More »

Cariou v. Prince: A victory for appropriation art

The United States Court of Appeals for the Second Circuit reversed a lower court opinion today in the case of Cariou v. Prince and handed another victory to the perhaps surprisingly robust world of contemporary collage artistry and appropriation art generally. 

Left: Patrick Cariou, Photo from Yes Rasta, p. 118; Right: Richard Prince, Graduation

Left: Patrick Cariou, Photo from Yes Rasta, p. 118; Right: Richard Prince, Graduation

The story of the case is relatively straight forward.  In 2000, Patrick Cariou published a book titled Yes Rasta of classical portraits and landscape photographs of Rastafarians that he took over the course of six years while living in Jamaica.  Despite its limited print run, well-known appropriation artist Richard Prince happened across a copy in a bookstore on St. Barth’s in 2005 Read More »

Will Prior Art Block My Patent Application? Prior Art 101 for §§102 and 103

If you read IP blogs with any regularity you no doubt know that patent reform has come courtesy of the America Invents Act (“AIA”), although the “old” patent law hasn’t really left us and won’t for quite some time.  The most blogged about change brought on by the AIA has undoubtedly been the change from the previous “first-to-invent” system to the current “first inventor to file” system. The AIA accomplished this switch by revising the language of 35 USC §§102 and 103 to redefine what constitutes prior art that can serve as a basis on which to reject an application to patent an invention. Section 102 does the heavy lifting in this regard and the changes to its language are significant. Exactly how significant though is difficult to say in some regards because new statutes come with something of a clean slate in as much as there is no judicial history of interpretation to serve as a lens through which to interpret the language. The “old” §102 has a long history of interpretation by the courts and BPAI and just how clean the slate is on which it was written is itself not clear since there is much similarity between the current and former language. But similarity in form or structure does not necessarily require the same outcome and we lawyers, being what we are, will certainly argue for interpretations beneficial to our clients in the absence of binding precedent from the bench. This post, or more likely a series of posts, will compare the definitions of prior art under the AIA and under the older, first-to-invent regime. Read More »

You Bought It, Now Dispose Of It How You Please

The Supreme Court recently ruled in the case of Kirtsaeng v. John Wiley & Sons, Inc. (Docket No. 11-697) that the copyright “first-sale” doctrine trumps a copyright holder’s right to control distribution of products embodying copyright protected material. The decision has received a fair amount of attention in the legal sphere but less so in the broader media, which is unfortunate considering how much copyright law impacts the every day lives of everyday people.  The impact of copyright law on our content driven, 24/7 media culture is fairly obvious in many ways, but most people don’t realize that copyright law can be and is used to control the flow of physical goods that don’t fit the traditional copyright paradigm. Recall that the Kirtsaeng decision resolves a question the Supreme Court first considered (but did not definitively decide) in the case Omega S.A. v. Costco Wholesale Corp. in which Omega sought to exclude wristwatches lawfully purchased in Europe from resale in the U.S. by asserting a copyright claim in a design on the back of each watch. Copyright protection is available for (among other things) literary, pictorial and graphical works such as the instruction and training manuals and packaging materials that accompany physical goods. Excluding the copyrighted packaging  has the effect of excluding the packaged product as well.

So how does the Kirtsaeng decision change this? Some background first: Wiley, is of course a publisher of global reach and a more than 200 year history which includes the works of Baltimore favorite Edgar Allan Poe but which more recently focuses on academic, technical and professional publishing including many textbooks.  Wiley publishes considerably less expensive but very similar editions of its textbooks in overseas markets. Read More »

Maryland General Assembly approves $25M in film production tax credits.

Did you hear the roar? Opening Day is not until Friday in Baltimore, but Maryland’s film and television crew base  and hundreds of small businesses are cheering the General Assembly for extending the film production the tax credit, and approving an additional $17.5 million in tax credits for eligible televison and film projects in 2014. The story was different in 2009 when the then-existing film incentive program had all but lost its funding. Maryland’s storied crew base scattered to jobs on productions in Louisiana, Michigan, Ohio and other states with active incentive programs because no film or television projects came to Maryland.  The Maryland Film Production Employment Act of 2011 converted Maryland’s incentive program from a grant program to a better-funded tax credit program, with special incentives to attract television series. The new program was immediately successful,  bringing Maryland’s film and television crew members home to work on great projects like HBO’s VEEP and Netflix’s House of Cards. Senate Bill 183,  sponsored by Senator Ed Kasemeyer and passed today in Maryland’s General Assembly, maintains the current program of up to $7.5 million annually in film tax credits through 2016 and increases the ceiling to $25 million for 2014. OberIPwatch contributor and Maryland Film Industry Coalition chair, E. Scott Johnson, quoted in yesterday’s Business Monthly, said that the increase is

“really a testament” to how successful the previous bill, the Maryland Film Production Employment Act of 2011, has been.” How successful is that? “It’s worked so well that it tapped out,” said Johnson, “and we had to borrow some funding from future years to keep ‘VEEP’ and ‘House of Cards’ shooting here this year.”

Not everyone is a fan. The Sun reports that some legislators like Baltimore County Del. Kathy Szeliga felt Read More »

Supreme Court: “first sale doctrine” permits sales of used foreign books in US without infringing US copyright owners’ rights

Under the doctrine of “first sale,” owners of objects are permitted to resell them without violating the exclusive right of distribution accorded copyright owners under US copyright law. Last week, the US Supreme Court, the court in Kirtsaeng v. John Wiley found that the doctrine of first sale was not limited to US copyrighted works but serves as a defense from infringement for any previously sold materials, domestic or imported.

In Kirtsaeng, a student realized that he could purchase his US textbooks in foreign countries for less money. So he bought and sold imported but authentic textbooks. The publisher John Wiley & Sons sued the student book seller, who defended by claiming sales were permitted by the doctrine of “first sale.”  The 2nd Circuit Court of Appeals ruled in 2011 against the student book seller, holding that the first sale doctrine applied only to materials produced in the US. The student book seller appealed this decision in the US Supreme Court.

An earlier Supreme Court case Quality King v.  L’anza Research, sought to end the line of protectionist “gray market cases“  that protected US copyright owners from competition from cheaper but authentic (non-counterfeit) goods imported from foreign markets. A decision in the 9th Circuit, Costco v. Omega (affrmed by SCOTUS), found that the doctrine of first sale is unavailable as a defense to infringement claims on unauthorized sales of authenticate imported watches bearing a copyrighted design in the US unless the copyright owner previously sold or authorized sales of gray market watches in the US.

 

Buying a Tweet ad? Avoid FTC scrutiny by following these 3 weird little #Ad rules

You may have heard this before, social media is not exempt from the ad rules regarding testimonials and endorsements. The FTC announced (again) that marketers placing short form ads in social media must comply with three basic truth-in-advertising principles:

  • Endorsements must be truthful and not misleading;
  • If the advertiser doesn’t have proof that the endorser’s experience represents what consumers will achieve by using the product, the ad must clearly and conspicuously disclose the generally expected results in the depicted circumstances; and
  • If there’s a connection between the endorser and the marketer of the product that would affect how people evaluate the endorsement, it should be disclosed.

The FTC has a helpful guide with tips on how to comply, including using “#Ad or #Sponsored in a tweet or post to avoid consumer confusion.

 

Distasteful criminal case sheds light on liability for violent user generated content

A New York court convicted the “Cannibal Cop” trial in for conspiracy to kidnap, murder and eat women for pleasure based on postings made by the defendant on darkfetish.net. The defendant intends to appeal. The question on appeal boils down to whether the defendant’s online fantasy role play provided the mens rea (criminal intent) to conspire to commit murder. The line of judicial opinions concerning liability for deaths or injuries allegedly caused by violent media stretches back to 1950′s era censorship laws finding such laws are unconstitutional as they place a prior restraint on speech. In today’s user generated content and gamification of nearly everything, when doe role-playing cross the line to real-life crime? Read More »

Can “the” competitor’s shout-out to your brand constitute trademark infringement?

A trademark owner must protect its brand by stopping confusingly similar uses of its trademark whenever possible.  Nike and Under Armour are direct competitors so confusion among sportswear buyers confronted with a knock-off brand is likely. Or, maybe the consumers enjoy the grudge match and aren’t confused. But ignore the threat at your peril. E.Scott Johnson was quoted in the Maryalnd Daily Record: “It’s sort of a clever usage, a derivation, but nevertheless it’s a usage…and if you ignore it when it’s in your face like this, it’s almost like acceptance. It’s kind of a waiver of your trademark rights.” The results of the consumer survey could be intersting. Read more here.