Thursday, February 5, 2015

Left Shark Isn't As Scary As the Lawyers Protecting It

It's been reported that over a hundred million people watched Katy Perry's Super Bowl halftime show. If you're one of those people, then you likely saw the dancing sharks that accompanied her on stage.  I've heard lots of opinions about those sharks ("They were ridiculous", "They were funny", "They made sense because it was a 'beach' theme", etc.)  But one opinion I just read left me speechless.  

The opinion was that of an attorney who, in the context of a "cease and desist" letter, claimed that Katy Perry owned the image of the dancing sharks and, specifically, the left dancing shark.  Yes, folks, the diabolical Left Shark is purportedly owned by Katy Perry. [Insert evil laugh here].  The letter further stated that an artist who created and sold a 3-D image of Left Shark violated Ms. Perry's intellectual property rights.  Naturally, the artist was threatened with all kinds of sundry penalties.

Seriously, this really happened.

It's unclear whether the artist, Fernando Sosa, will be intimidated into ceasing his sales of his Left Shark sculptures--but I hope he's not.  I hope that artists and artisans band together, support Mr. Sosa, and take this matter to court--because he would win.  Here's why:

First, in order to enforce a copyright in court, you need to be the owner of a registered copyright in the work being infringed. Until the Copyright Office issues you a little "gold star" stating that you own the work being infringed, you can't commence copyright litigation.  It's unclear whether Ms. Perry fulfilled this initial filing requirement--the Copyright Office's online database doesn't readily demonstrate that Left Shark was copyrighted.  (I have to believe that prior to sending a cease and desist letter to a legally "unarmed" artisan, Ms. Perry's attorneys verified the filing and copyright registration of Left Shark.)  

Of course, if Left Shark wasn't registered individually (because, after all, who would have thought to register Left Shark??), then the argument is that the entire show was copyrighted and since Left Shark was a part of that show, Left Shark is protected under the entire show's copyright registration. But if that's the case, then Mr. Sosa has a pretty good "de minimis use" defense ...more on that later.

Assuming Left Shark was registered with the Copyright Office, there's a serious (indeed, legally fatal) problem with Ms. Perry's legal position.  To be protected under the Copyright Act, copyrighted material must be original.  You simply can't take something generic, slap a © symbol on it and then claim it's yours.  It doesn't work that way.

Now, Ms. Perry's attorneys would surely argue that Left Shark is sufficiently original to warrant copyright protection.  And they would be wrong.  If you disagree, take five minutes and search online for "Shark Costume."  Go ahead.  I'll wait.

Left Shark-type costumes are ubiquitous.  Perhaps the eyes vary slightly, or the shape of the fins are slightly different, or the feet may be different (yes--virtually all shark costumes seem to have feet), but the expressive elements are virtually the same.  (Is Left Shark that much different than the infamous shark from the classic SNL skit, "Land Shark"?)  In terms of copyright law, "the same" equals "unprotectable."  Here, Ms. Perry's Left Shark, as well as Mr. Sosa's Left Shark, are highly similar to lots of shark costumes that are readily available to consumers worldwide.  For that reason, copyright law doesn't favor Ms. Perry's position.

Moreover, Mr. Sosa likely may have a strong "fair use" argument as well. ("Fair use" is often misunderstood.  It is a legal doctrine that says that you can use someone else's copyrighted work for certain specific purposes, such as satire, commentary. or criticism.)  Do you think that Mr. Sosa's sculpture is a parody of the peculiar dancing shark that accompanied Ms. Perry on stage?  Of course it's a parody.  That's why Mr. Sosa called his sculpture"Left Shark"--it's a joke about the fact that the guy dressed in the shark costume dancing stage right was, well, a bit awkward.  

In any event, Left Shark was a minor player in a huge halftime show production.  No one could seriously argue that Mr. Sosa diminished the commercial value of the halftime show by paying artistic homage to a guy dancing in a shark costume.  Ms. Perry's performance was not defined by Left Shark.  Mr. Sosa has not attempted to profit from the indisputable good will of the NFL or Ms. Perry herself.  He simply made a humorous 3-D model of a guy in a shark costume and called it "Left Shark."  If he did copy Ms. Perry's intellectual property, then his activity was what lawyers call, "de minimis".  (If you paid a lawyer to define "de minimis", she would say, "It was a tiny, non-defining part of a much larger copyrighted work, so we will forgive any infringement.")

Bottom line: the sculpture is funny.  Yes, I'm sure Ms. Perry's attorneys would say something intellectually poetic like, "Theft of intellectual property is never funny." And, to be fair, stealing other people's stuff isn't funny.  But this wasn't theft--this was a dancing shark.  Let's lighten up, follow the law, and stop scaring artists with baseless accusations of copyright infringement.


Tuesday, February 3, 2015

It's In The Game...But Should EA Pay For It?

Electronic Arts makes some of the most realistic sports video games on the market.  To do this, EA uses the likenesses of real players, and captures each player's unique physical appearance and signature moves.  EA’s games often include former players’ likenesses, transporting gamers back to a time when the “great ones” took the field and gave it their all.  

But can EA include simulations of former players without paying the real players for the use of their likenesses?  The answer, according to the Ninth Circuit Court of Appeals, is no.

Last month, the Circuit Court handed down its decision in Davis v. Electronic Arts (which you can read here).  In that case, the court was asked to balance the right of publicity of former football players against EA’s First Amendment right to use the players' likenesses in EA's Madden NFL series of video games.  

But here's the twist: the case didn't involve EA's use of current players' likenesses.  (EA already had a license to  do that).  Instead, the case involved EA's ability to use the likenesses of former players from so-called "historic teams" without obtaining a license from the former players themselves. 

So you might ask: if EA needs a license to use current players' likenesses, why wouldn't they need a license to use former players' likenesses?  Great question.  It's the same question that certain former players, such as Vince Ferragamo, asked as well.  And considering that the Madden NFL video games use the likenesses of roughly 6,000 other former NFL players, it's a question that needed to be answered by the court.

The former players' argument was fairly straightforward; EA's defense was not.  The players argued that EA violated their rights of publicity by including their likenesses in the Madden NFL video game without their permission.  (It was the old "pay me or don't play me" defense.)

EA argued that its activities were protected under the First Amendment, and that the former players' likenesses were merely "incidental" to EA's main commercial purpose, which was to create a realistic visual simulation of football games involving current and former National Football League teams.  (This is what IP lawyers call the "incidental use" defense.  See, there's a bit of education in every blog article.)  

EA also argued that they didn't merely take the players' likenesses and copy them; instead, EA "transformed" the likenesses into something that went beyond mere imitation.  (This is called the "transformative use" defense.  Clearly there's no need for you to go to law school as long as I'm around.)

The Court rejected EA's position, and held that that EA's replication of the former player's physical characteristics was neither "incidental" nor "transformative."  In its decision, the Court pointed out that "the former players' likenesses have unique value and contribute to the commercial value of Madden NFL.  EA goes to substantial lengths to incorporate accurate likenesses of current and former players, including paying millions of dollars to license the likenesses of current players."


Which brings us back to my original question: "If EA needs a license to use current players' likenesses, why wouldn't they need a license to use former players' likenesses?"  

Now you know the answer.  They do.

Tuesday, January 27, 2015

The Heat Applies Heat to Waze

Drivers love Waze, the Google application that provides real-time traffic conditions to drivers nationwide.  One of Waze's more notorious features is its ability to alert drivers to the location of police speed traps.

But not all people love that feature, and I call those people, cops.

Police in California and Virginia have asked Google to turn off the feature on Waze that notifies drivers when police are nearby.  Might it be that the police don’t want you to learn about their favorite “gotcha” speed trap locations?  No.  Perhaps they think that the application will interfere with their ability to properly enforce traffic laws on the nation’s roadways?  Uh, no, that’s not the reason either.

It turns out that some police agencies have said that Waze could be used as a “police stalker” application, making it easier for would-be cop stalkers to track down and harm police personnel.  Seriously, that’s what they said. 

Before I dismantle the ridiculous position offered by the police, let me give you a short disclaimer: I was a prosecutor in two different states (New York and Florida), and worked with (and trained) state and federal law enforcement for seven years of my legal career.  During that time, I helped develop the Internet and Computer Crime Division for one of the largest state prosecution offices in the United States.  You don’t get much more “pro-police” than that.

That said, any attempt by any police organization to disrupt or dismantle Waze’s features runs contrary to the First Amendment, as well as common sense.  From a constitutional perspective, citizens have the right to announce where a police car is located, or where a police investigation is taking place in public.  I have the right to stand on the corner of a busy thoroughfare with a sign that says, “Slow down---speed trap a quarter mile ahead.”  I can scream it from the top of my lungs; I can email it to my friends.  I can even post it on my website.  It’s not illegal to disseminate information about the location of a police cruiser, whether I do so online or in person.  Waze happens to have the advantage of letting me disseminate my knowledge to lots of people in real time—and that’s not illegal. 

Quick (related) story: When I was a prosecutor, I was assigned to a case in which a cop gave a ticket to a driver who flashed his headlights toward oncoming traffic to warn oncoming cars of an impending speed trap.  The ticket was for “interference with a police investigation.”  (Yes, that happened.)  I dropped the charges against the driver, and told the cop that sitting on the side of a road with a radar gun did not qualify as a “police investigation.” The cop disagreed, but I was the prosecutor, so, you know, that was that.

Common sense also demands that we ignore any request to turn off Waze’s police locator features. Do we really think that would-be police stalkers will download an app on their smart phones (leaving an electronic trail of their activities), and then drive around until Waze identifies a potential target?  In the spectrum of “ways to locate a police officer”, I think that particular option falls slightly below “run around screaming like a lunatic until you capture the attention of a cop.”

Also, let us not forget that “police locator” technology has been around for a long time.   My fellow Escort radar detector owners will back me on this: take a look at the Escort Radar Detector App and tell me how Waze’s features are any different than Escort’s police locator app, which has been around for many years.  I can’t find a single case of a police stalker using an Escort radar detector to track down police cruisers—perhaps all police stalkers are cheap and don’t want to shell out $500 (plus the yearly app subscription fee) to get an Escort radar detector and the app?


The bottom line is this: it would be unconstitutional for any court to require Google to disable Waze’s police locator functionality, and it would defy common sense as well.  Let’s not devote any more intellectual energy to the debate of whether Waze will be used as a weapon—it simply isn’t a realistic possibility.  

Sunday, August 24, 2014

We All Own the Monkey's Selfie.


File:Macaca nigra self-portrait.jpg

A macaque monkey in Indonesia steals a photographer’s camera and then snaps a few selfies.  Really, that happened. (See picture left). 

(Source: Wikimedia Commons)


Sometime later, the photographer recovers his camera, publishes the selfies, and claims copyright ownership in the pictures.   Enter Wikipedia, which copies the pictures and makes them available through its free, worldwide image repository.  The photographer protests, claiming that Wikipedia is infringing his copyright in the pictures.  

So, has Wikipedia infringed the photographer’s copyright in the pictures?  Not at all, says the U.S. Copyright Office.  And I agree.

In a 1200+ page report issued by the Copyright Office this week, the U.S. government  brought the issue into focus (pun intended) by declaring that a work can be protected by copyright only if the work is the “fruits of intellectual labor” that “are founded in the creative powers of the mind.”  Moreover, the “mind” that does the "creating" must be a human mind; animal minds don’t count. To illustrate its position, the Copyright Office specifically cited a “photograph taken by a monkey” as an example of a work that could not be copyrighted.

(You can read the Copyright Office’s position yourself—it’s on page “Chapter 300: 8” of the report.)

So what happens to the pictures snapped by the monkey that were published by the photographer?  Answer: they are in the public domain, and can be distributed, for free, by Wikipedia.  And by you.  And by me.

This raises the question: how could the photographer have protected the pictures taken by the monkey?  

First, let’s separate this case from situations in which nature photographers purposely position cameras in certain outdoor locales.  Here, the camera was stolen by the monkey, and the pictures were the serendipitous result of the monkey’s actions.  The images were not the product of any degree of creative thought by the photographer.  Had the camera been purposely placed in a particular locale, the resulting images would have reflected the foresight and creativity of the photographer.  But that didn’t happen.  Instead, the monkey took control of the situation, and everything that occurred was the direct result of the monkey’s curiosity; the photographer had nothing to do with it.

Next, let’s remember the number one maxim of copyright law, namely, ownership vests in the author of the work.  (If you remember nothing else about Copyright Law, remember that.)  In this situation, who “authored” the work?  Answer: the monkey.  The photographer simply acquired the digital image from the camera.  He “authored” absolutely nothing.  So, under U.S. law, the monkey owns the work because the monkey authored the work.  

Now, you may be thinking, "The picture was taken outside of the U.S.--so that changes things, right?" No, in most cases, it doesn't.  Neither the U.S. nor any other country that is a member of the Berne Convention (which governs international copyright issues among its 167 members) allows animals to own copyrighted works.  So,  in this case, the monkey has no rights, and the selfies are in the public domain.

Back to my original question: what could the photographer have done to protect the pictures?  Well, he could have transformed the pictures into something other than the selfie authored by the monkey.  He could have enhanced the colors in an artistic manner, or applied filters to the picture to make the picture look like something other than the plain ol’ selfie snapped by the monkey.  In short, he could have--and should have--done something original to the photograph, in which case he would have owned the photograph as modified by his own creative efforts. 


Tuesday, June 24, 2014

Why The Washington Redskin's Trademark Was Cancelled: A Primer

Over the past few days I've received many emails and texts asking me whether I thought the USPTO's cancellation of the Washington Redskin's federal trademark was correct.  The answer is an easy, and obvious, yes--and it has nothing to do with the public backlash over the (ridiculous) use of a racial slur in the team's name.  Instead, it has everything to do with basic principles of trademark law.

Let's start by saying this: the name "Redskins" is regarded by Native Americans (and most educated non-Native Americans) as a derogatory term.  When you have a word or phrase that is regarded by most people as a derogatory term, then (surprise!!) it IS a derogatory term.  It's a slur, plain and simple.

"Redskins" is a slur, and it has been a slur for a very long time--including in 1972, the year in which the Washington Redskins were awarded their trademark.  For trademark purposes, the issue begins and ends right there.

Warning: legal lingo aheadFasten your seatbelts.


In the U.S., federal trademark law is covered under a statute called the Lanham Act.  One particular section of the Lanham Act (specifically, 15 U.S.C. § 1052(a)) says that you can't register a word or phrase as a trademark if the word or phrase, at the time of the registration, may disparage persons or "bring them into contempt or disrepute."  Put another way, you can't register a slur since a slur, by definition, disparages a group of people


Now, re-read the third paragraph of this blog entry.


Got it?  It's really a simple analysis.  Now you're as qualified to talk about the USPTO's cancellation of the Washington Redskin's trademark as any lawyer out there...you can even throw around words like "Lanham Act" and impress your friends--that is, if they get impressed by that sort of thing.


And if you're wondering if the Washington Redskins "lost" their trademark, here's another (simple) answer: they didn't


Warning: legal lingo aheadFasten your seatbelts again.


Under the Lanham Act, a trademark receives a particular type of protection (called "common law" protection) once it is used in interstate commerce.  A trademark owner does not need to register her trademark with the USPTO to enforce the trademark in court.  (Registration is highly recommended, but not absolutely necessary).


So, if a trademark can be protected through mere use, then why should someone ever bother to register a trademark with the USPTO?  That's a good question, but one which will have to wait for another time.  For now, dear reader, just understand this: the Washington Redskins can fully enforce their trademark under "common law", and they have lost no rights whatsoever in their name.  (Anyone who tells you something different is likely trying to sell you knock-off Washington Redskin products at cut-rate prices).


Now, go tell your friends that Washington Redskins still have "common law" trademark protection regardless of the fact that the Lanham Act required the USPTO to cancel the team's federal trademark.  If that doesn't impress them, then immediately tell them that you're a Jets fan (as I am).  That will distract them long enough for you to make your getaway....

Monday, June 9, 2014

Glad to Have Had MSPmentor in the House....

Thanks to Dan Kobialka at MSPmentor for the online review....

Check out his article here.

For those of you not in attendance at Automation Nation 2014, here's a little of what you missed (and what Dan saw).  Want to learn more?  Contact me.






Wednesday, March 20, 2013

Published Here Or Abroad? Regardless, It's All Good (Says the Supreme Court).

Today the Supreme Court handed down its decision in the case of Kirtsaeng v. John Wiley & Sons.  The case involves a college student who got sued by a book publisher because the student sold his foreign-made textbooks once he was done using them.  (Yes, you read that correctly. He was sued for selling textbooks that were published abroad, but which he used and sold in the U.S. once he was done with them.  Sound crazy?  Read on...)

Even if you're not into selling textbooks, you should be happy with the decision.  Really happy.  Like, celebratory-type happy.  Why?  Because the Kirtsaeng decision clarifies the fact that you're not breaking the law when you sell or buy certain foreign-made goods on sites such as eBay or Amazon. 

Here's the story:  Kirtsaeng, a citizen of Thailand, came to the U.S. to attend Cornell University (for undergrad), and the University of Southern California (for a Ph.D).  While in the U.S., he asked his friends and family back in Thailand to buy copies of foreign edition English language textbooks at Thai book shops--where they sold for low prices--and mail them to him in the U.S.  Once he was done with the books, Kirtsaeng sold the books, reimbursed his family and friends, and kept whatever profit remained from the sale.

Enter the book publisher, John Wiley & Sons.  Wiley was less than thrilled that Kirtsaeng was selling his foreign-made books, since it prevented Wiley from selling those same books (copies of which Wiley had published in the U.S.) for a higher price.  Wiley claimed that Kirtsaeng's importation of its books, and his subsequent resale of those books, amounted to an infringement of Wiley's exclusive right to distribute its books in the U.S.

Ok, let's pause for a moment to consider the law...and to keep score.

Under the Copyright Act, authors posses the exclusive right to control the distribution of their works.  (Score one for Wiley).  

There is, however, an exception to this exclusive right of distribution, called the "first sale rule."  The first sale rule carves out an exception to all three forms of intellectual property protection, (i.e.,  copyright, trademark and patent).  With regard to copyright law, the rule provides that a person who owns a lawfully made copy of a copyrighted work may “sell or otherwise dispose” of that copy without the authorization of the copyright owner.  (Score one for Kirtsaeng).

But wait, there's an exception to the exception...or is there?  (Stay with me now, because this is the crux of the case.)  

The Copyright Act says that the first sale rule applies only to works "lawfully made under this title."  But what does that mean?  

Wiley argued that the textbooks were made overseas, and were intended to be distributed overseas.  Wiley point was this: the books were not 'lawfully made' under the Copyright Act--they were 'made' under foreign law, so the first sale rule didn't apply, and it didn't protect Kirtsaeng.  (Hmmm.  An interesting point--and one with which many courts across the country agree.)

Kirtsaeng countered that the words "lawfully made" meant "legally made", i.e., the books needed to be authentic and not pirated.  Since the books were authentic and "legally made" (albeit overseas), Kirtsaeng argued that the first sale rule applied to his purchase and subsequent sale of the books, and protected him from claims of copyright infringement by Wiley.  

In a 6-3 decision, the Supreme Court agreed with Kirtsaeng and held that there is no geographic limitation on the first sale rule. Put another way: it doesn't matter if the item was made abroad and was intended to be sold abroad.  In fact, it doesn't matter where the item was made at all.  Under Kirtsaeng, when a purchaser buys an item, the first sale rule permits the purchaser to subsequently sell that item in the U.S. without the author's or manufacturer's permission.


So why should you care?  Well, let's think about that import disc that you want to sell on eBay.  Or that book you bought in Europe that you're selling on Amazon.com.  Or any item that may have originally been made and sold in Asia, but made its way to the U.S.  In the days before the Kirtsaeng decision, it wasn't clear whether you had the right to sell those items without first getting the original author's or manufacturer's approval.  Now, the Supreme Court has made it crystal clear that the first sale rule covers the transaction.

The decision is even more important for technology companies.  As Justice Breyer said, 

Technology companies tell us that automobiles, microwaves, calculators, mobile phones, tablets, and personal computers contain copyrightable software programs or packaging. ... Many of these items are made abroad with the American copyright holder’s permission and then sold and imported (with that permission) to the United States. ... A geographical interpretation would prevent the resale of, say, a car, without the permission of the holder of each copyright on each piece of copyrighted automobile software. Yet there is no reason to believe that foreign auto manufacturers regularly obtain this kind of permission from their software component suppliers... Without that permission a foreign car owner could not sell his or her used car.
Well said Mr. Justice, well said.