Common Law Copyright Makes it On Broadway

The online New York Law Journal (registration with a credit card for at least a free trial required) reports as follows:

ALBANY — In an unprecedented expansion of common law copyright protections, the Court of Appeals [New York's highest state court] yesterday said recording artists are shielded in perpetuity under New York standards even when their foreign copyrights have long since expired. Attorneys predicted the 7-0 ruling in Capitol Records v. Naxos of America, [Inc.], would have a significant impact on the recording industry.

This almost sounds like an April Fool's joke, it appears (at first blush) so far-reaching. They link to the opinion here. Also interestingly, the decision was in response to three questions certified by the Second Circuit, to wit:

Southern District Judge Robert W. Sweet found that Capitol has no common law copyright protection in New York, leading to an appeal to the U.S. Court of Appeals for the Second Circuit and three questions certified to the New York court. The questions were:

• Does the expiration of copyrights in the United Kingdom extinguish any New York common law copyright? Answer: No.

• Does a successful claim under New York copyright common law require evidence of unfair competition? Answer: No.

• Is an infringement claim in New York defeated through evidence that the alleged infringer produced a "new" product as opposed to a facsimile of the plaintiff's existing product? Answer: No.

Does this change everything? No. It appears to have little application beyond odd cases such as this one, where the copyright in the performance recordings -- here, 1930's recordings of cellist Pablo Casals, pianist Edwin Fischer and violinist Yehudi Menuhin -- have expired. There is no federal copyright protection for pre-1972 recordings, and the UK's 50-year copyright had expired, so Capital proceeded on a common law theory.) Besides, as the article says, "Practically speaking, though, federal law will preempt New York common law on Feb. 15, 2067." That's a relief!

The Ninth Circuit Comes Through

It rejects the stupid , and unconstitutional, argument that "commercial use" under the Lanham Act's dilution provisions can be found where there is simply "diversion."

A Theory of Trademarks in the Blog Era

(Edited to reflect the march of time.) On April 5th, as you were previously warned, I presented in New York City as part of a seminar on Advanced Trademark Issues for the IP Practitioner at the Association of the Bar of the City of New York (the "City Bar"). My written materials distributed to participants, including those who subscribed to a Westlaw webcast of the panel. Here is the essence of my thesis, without the links and exhibits used in the course materials:

The IP implications of blogs beyond trademarks, especially regarding copyright but even recently involving the publication of trade secrets, are also wide-ranging. The line must be drawn somewhere, however, so here we will limit our brief survey to the tangent where trademarks touch blogging and blogs, the first “paradigm shift” with respect to the Internet in our century.

What trademark issues are implicated by blogs?

Unlike virtually no other mass publication of trademarks that is likely to interest mark owners, the Internet raises few barriers to entry. Blogging presents even fewer – virtually none. Trademark enforcement practitioners who are used to the frustration of chasing after ethereal Internet-based trademark infringers are understandably aghast over the incredible ease, and functional anonymity, with which bloggers can instantaneously upload text, graphics and files, including HTML links. Blogger software platforms, including substantial hosting resources, are available for free from services such as Blogger and many others.

There is virtually no editorial, legal or other oversight over what content is to be found on blogs, as is the case on most privately-hosted websites, but while most recreational blogs are graphic nightmares, even the simplest blogs present a structure that features easy interactivity, a choice of practical and attractive graphic designs, and numerous add-on features that enable even lightly experienced amateurs – for no or very little cost – to easily monitor the volume, origin and trends of reader traffic, feature cooperative or trade advertising (and for higher-traffic blogs, even paid advertising), and take advantage of the burgeoning phenomenon of online blog networking.

The power of this last can hardly be overstated, because the Internet is ultimately about connection and networking, and HTML links form an electronic daisy chain of countless dimensions that spans the world along topical, interpersonal, professional and technological axes. The extraordinary simplicity and accessibility of blogging software on one end, and blog distribution on the other end (i.e., via any Internet connection utilizing a standard browser), makes blogs the self-publication phenomenon of our time.

One reason blogs succeed is because they wrap words in graphic appeal. Combined with the dynamic nature of the Internet, blogs deliver bite-sized portions of text which, at best, are so easy to publish and digest that some fear blogs threaten professional journals as well as the established news media, known in the “Blogosphere” as the “Mainstream Media” or “MSM.” Unlike journals and traditional media, there is little editorial oversight, an obvious negative as well as a positive – rather than institutional endorsement or pre-publication peer review, published materials fight immediately in the free market of ideas subject to the ability of the blogger to network well enough to get the attention of the desired “eyeballs.” These features are enhanced by the dynamism of hypertext linking, which replaces footnotes, bibliography and, in some cases, even exposition by allowing readers to “surf” directly and immediately to the actual cited sources. By this method, content on the Internet and in blogs in particular is particularly “rich” in a semantic sense.

Herein lies the opening to the trademark issue. In a media-soaked era, and after generations of advertising, marketing and brand management, both the visual vocabulary and lexicon of Internet users is also “rich” – in brand names, commercial icons, logos and favorite characters, products and mottos. Communication on the Internet, typified by blogs, is highly symbolic, and trademarks, if they are any good at all, pack a powerful semiotic punch.This attraction is intensified by the countercultural, or at least individualistic, tone affected – and frequently realized – widely throughout the blog subculture. There are various reasons this might be the case, including the vestigial “nerd” or “techie” culture of the Internet; the option (frequently chosen) of anonymity, either actual or practical; the generally subversive dynamic that arises from competition with the “MSM”; and the highly politicized atmosphere of the “Blogosphere,” in which the vast majority of bloggerss, regardless of nominal topic, are fairly well identifiable as either “conservative,” “liberal” or, far out of proportion to the voting population, “small-L libertarian.” This environment, coupled with the still novel capacity for perfect replication or alteration of trademarks and icons made possible by digital technology, makes “unauthorized” use of these politically and culturally loaded semantic designators on blogs and other Internet websites irresistable.

Blogs have a number of other interesting qualities that get the attention of in-house trademark counsel. Blogs have an almost magical charm when it comes to search engines – one of the most interesting areas of trademark litigation in the last year. See, e.g., Government Employees Ins. Co. v Google, Inc., 330 F.Supp.2d 700, 704-705 (E.D. Va. 2004). There are several reasons for this, including the prevalence of topical keywords and phrases in blog text, the usually straight-to-the-point nature of blog posting, each post's page structure, the coding utilized by blog softare, the concentrated “target” structure resulting from the fact that a good blog addresses only one subject per post, the blog site's information structure, and the linking phenomenon. See, Fredrik Wacka, “Why Blogs Rank High In Search Engines,” Web Pro News, found at http://www.webpronews.com/insiderreports/searchinsider/wpn-49-20050104WhyBlogsRankHighInSearchEngines.html.

Blogs also have a tendency, because of the reasons discussed above, to develop or cater to “cult”-type groupings. Sometimes these blog (or website) “cults” are themselves dedicated, in the nicest possible way, to beloved brands, trademarks or other intellectual property assets.Others merely utilize them easily broadcast a state of mind or associate the blogger or the blog with a certain well-known sensibility. And sometimes blogs, like other websites, just plain “abuse” valuable trademarks in constitutionally protected, but – for trademark counsel – nightmarish ways.Blogs are democratic, self-obsessed, essentially unaccountable, cheap, technologically powerful, judgment proof, ungoverned, interconnected, and very, very public – meaning that intellectual property lawyers, or those who play them on television, should proceed with care.

Death of an Icon

A story from the L.A. Times / Washington Post syndicate, evidently sent to press before the Pope's death, told of the increase in sales of John Paul II-related merchandise. This includes perfectly reasonable and understandable things such as the Pope's own book, Rise, Let Us Be On Our Way (forgive me, but it reminds me of a different book by a very different man) and rather silly things like the pineapple in red lemongrass soup the Pope had sampled in a San Francisco restaurant.

It will be interesting to see how this unsurprising phenomenon plays out in terms of the late Pope's status, according to this article from two years ago, as "the world's most desirable product endorser." The piece, from the Christian Sojourner magazine, notes the following:

Given the stature and aura that still surround the church and papacy for many people, it remains jarring to see examples like these:

• To finance the pope's 1998 visit to Mexico City, the Archdiocese of Mexico City received corporate sponsorship from more than two dozen firms. The single largest sponsor was the Pepsi-owned Sabritas chip company, which paid $1.8 million for the right to use the pope's image in its packaging. The Spanish-language play on words-"Las Papas del Papa" (-The Potatoes of the Pope") was lost on absolutely no one. Equally obvious was the seemingly inescapable TV and billboard ads connecting the pope's picture with Bimbo bread, a local cement company, and other joint promotions between the church and its corporate benefactors....
  
• In 1999, the Vatican approved a licensing deal with Miami-based Siesta Telecom to issue a Pope John Paul II pre-paid phone card. The card comes with a signed certificate and the pope's likeness on the card; the company already sells phone cards with the Virgin Mary's picture on them.

There may be issues of taste, I suppose, but in fact, non-profit organizations, including religious ones (and relatively wealthy ones), will raise funds almost any legal way they can. Think Bingo. Ideally money raised by a church in a poor country such as Mexico will be put to good use, so utilizing his ability to raise funds merely by being photographed may well have struck the Pope as a perfectly good way to leverage his own dignity for a better end.

How will that value be affected by the Pope's demise? In the short run, at least it will probably increase -- holding equal the question of the effect of his death on the nature of his legal right of publicity. It is not such an easy matter to assume that, however. It's one thing to fight over those rights in the case of an entertainer who leaves heirs. Even considering that the estate of a deceased famous person has, in many jurisdictions, certain exclusive rights to the exploitation of his personality (and other intellectual property), what is the earthly "estate" of a lifelong celibate and who are his legal heirs?

When Karol Joseph Wojtyla became Pope 26 years ago, such a question would have seen as crass. It still is crass, except of course in a scholarly and sensitive treatment such as this one, but in a brand- and merchandizing-crazed world, it won't be too crass for someone, somewhere, to litigate in the coming years.

UPDATE: The Pope's last will and testament.

More Legal Tsuris for Google

It's not even funny any more. If it ever was.

I'm just saying.

Here's the latest on the Google v. American Blinds case:

The suit claims Google's practice of selling text ads related to keyword search terms infringes on American Blind's trademarks, because competitors' ads can appear on results pages delivered to users searching for the company. American Blind asked that Google be permanently barred from selling keywords.

In fact, the suit claims, Google makes it worse with its AdWords Keyword suggestions feature, which "actively and deliberately encourages American Blind's competitors to purchase... virtually every conceivable, though indistinguishable, iteration of those marks."

They make that sound like a bad thing. The good news for Google is that the judge granted Google's motion to dismiss the (usually bogus) tortious interference with economic advantage counterclaim by American Blinds. The bad news is that the rest of the counterclaims are staying in the case, at least for now. Not what you're looking for when you bring a declaratory judgment action.

Here's the full text of the decision. By the way, in the classically California way, this is an "unpublished opinion" that everyone's reading now. It says right on top, NOT FOR CITATION. Is there any hope for the common law?

Update: More from Kevin Heller, as usual.

Indirect Liability and Grokster

This post on the Marginal Revolution blog (where this blog advertises) links to (or tries to link to) an amicus brief filed by... a bunch of guys -- namely Kenneth J. Arrow, Ian Ayres, Gary Becker, William M. Landes, Steven Levitt, Douglas Lichtman, Kevin Murphy, Randal Picker, Andrew Rosenfield, and Steven Shavell. Their self-described interest as amici?

Amici are professors and scholars who teach and write on economic issues and, in particular, on the economics of innovation, the economics of intellectual property, and the economics of both deterrence and enforcement. . . . Amici file solely as individuals and not on behalf of the institutions with which they are affiliated. Amici represent neither party in this action, and write solely to offer an economic perspective on the important social issues at stake in this dispute.

Nice work if you can get it. All but two of them are University of Chicago (i.e., "law and economics") professors; the other two are Ian Ayres of Yale (formerly a Northwestern prof, which is why his name jumped out at me) and the other is from Stanford Law.

So what do they say? Their focus in the brief is on the usefulness of the doctrine of indirect or secondary liability in intellectual property. That's a topic of great interest to us around here, but we have always focused on trademark, where the issues can be quite different. But regarding copyright, here is the conception of the problem by these learned men (yes, all men), per their own brief:

In this dispute, the Court is being asked to clarify the conditions under which those conventional remedies should be supplemented by an additional cause of action: liability that would hold responsible a firm whose product or service facilitates copyright infringement. The argument in favor of this sort of “indirect” liability is that in certain circumstances it will be the only practical way to maintain the efficacy of copyright markets. That is, direct liability is so costly in certain situations that, without indirect liability, authors would in those settings no longer have a meaningful right to prevent unauthorized use of their work. The argument against indirect liability is that, because the products and services at issue here have both legal and illegal uses, any legal intervention must be cautious or else risk inadvertently
interfering unreasonably with legitimate activity.

And here is their conclusion, based (Cliff's Notes-like) on their legal argument headings and the summary at the end of the argument section:

Indirect liability is routinely imposed in instances, like the one at issue here, where direct deterrence is unlikely to be effective because of the high costs associated with identifying and pursuing individual violators. Indirect liability should not be excused simply because a product is potentially capable of non-infringing use. The rule adopted by the courts below gives manufacturers no incentive to deter infringement even when deterrence could be accomplished at low cost and without any significant interference with non-infringing uses. This rule mistakenly considers non-infringing uses in isolation, rather than evaluating them in light of substitute mechanisms already available to accomplish the same ends.

Economic analysis of this dispute reinforces what common sense also suggests: the case was resolved prematurely, before key questions were asked and key facts considered. Can copyright rights be sufficiently enforced through direct liability such that indirect liability is unnecessary online? Did the accused firms in good faith consider improving their technologies in ways that would reduce infringement but not significantly interfere with non-infringing use? Are there non-infringing uses of this technology that still appear substantial even when this technology is compared to currently available substitute mechanisms? These are central questions from an economic perspective. The courts below failed to ask any of them.

No, I didn't read all the briefs. But I doubt that one would do a better job of matching my own predilections on this topic than this one.

Translate This

Just had a bizarre experience while doing routine tracking of where readers of the blog come from. The most recent referrer was from an automated Google translation page -- translating the first screen of Likelihood of Confusion into Gallic.

I knew Google would get me back, sooner or later. And me, a shareholder!

It is a weird experience seeing Probabilité de confusion par Ron Coleman looking as if I actually wrote it in Frankish. Of course, I have no idea whether it's even remotely good French ("J'ai une poignée comme un plombier et j'avais l'habitude de faire l'écriture de miroir pour impressionner des dates").

Surprisingly there was no little moustache nor a beret on my picture, but natch that will be achieved in the next release.

Trademark Law: The Dismal Science

The Tata Group put out this press release about a trademark decision that some people seem to think is funny. It is evidently connected with this WIPO decision.

Likelihood of Confusion doesn't get it. No one said trademarks were supposed be fun, much less funny. Much less bodacious.

Hat tip to John Berryhill via the INTA List. Apparently he gets it.

Just Say No

Got a call from CBS News a few minutes ago. "You're a constitutional lawyer, right?"

"Yes," I replied. "It is constitutional for me to practice law."

Laughter. "We're looking for someone to comment on this latest appeal in the Schiavo case. Have you been following that case?"

"Oh, no, I'm sorry. Not professionally in the slightest."

I'm not sure it's even a constitiutional question they have, but I guess that tells you how little I know about the procedural aspects of the Schiavo case.

I really am a "constitutional lawyer" because I spend a lot of time on issues relating to the First Amendment, as witness this blog. But on the sad world of Terry Schiavo, I have no expertise to offer.

"If I'm a new inventor, I'm going to get sued right away."

Surprisingly, it was Antonin the Great who said that, according to an AP Report on today's Grokster action. And in this regard he and I are in disagreement. I think it's an argument reductio ad absurdum.
On the other side: Justice Kennedy quoted as saying that using profits from trafficking in stolen property to help finance a young technology business "seems wrong to me."
Round up on the Induce Act Blog.

Open Source -- Yes, There's Room to Debate

If you're lucky enough to be anywhere near Palo Alto on Thursday, you might want to check out this Open Source Debate being sponsored by the Federalist Society:

Join professors Lawrence Lessig and F. Scott Kieff as they debate the merits of open source, shared source, and traditional IP rights. Under what circumstances should open source be mandated, or at least encouraged? What are the legal and policy implications of open source -- does it foster or inhibit future advances in technology? What are the international implications of open source -- does one country or region with open source requirements operate at acompetitive advantage or disadvantage? These and other issues will be debated by two experts in the field.

Liberté, égalité, censure... and the First Amendment?

Last week Reuters "news" service reported about the pending request by Yahoo! for a what appears to be a declaratory judgment (I have not seen the papers) barring domestic (U.S.) enforcement of a French court's order forbidding the sale of Nazi paraphernalia. Enforcement would entail not only a big constitutional problem in the U.S. but massive potential damages.

After the original French decision came down, I told an interviewer in November, 2001, ""It's not surprising, because you have here a classic conflict between national legal principles. In the U.S. system, the First Amendment is guarded jealously by the vast majority of American judges. There is virtually no way an American judge could enforce a French ruling [banning Nazi paraphernalia] ... just as a French judge would not extradite a suspect to the U.S. who faced the death penalty because it is fundamental to French concepts of justice in 2001 that the death penalty is immoral."

I still think this is true, though it's not 2001 any more, and a number of things that no one ever dreamed would happen in the law, have happened. One of them is that the U.S. Supreme Court upheld the patently unconstitutional McCain-Feingold law. Secondly, the Supreme Court -- theme for the week, I know -- has more than once endorsed the controversial principle that the decisions of foreign courts may be considered in ruling on cases previoiusly thought to be subject only to the U.S. precedent, statutes and the U.S. Constitution. That Justice O'Connor would introduce a formula such as, "'The impressions we create in this world are important" as a factor entitled to any weight whatsoever in constitutional jurisprudence is particularly distressing. Not only is "impressions" in the "world" not a constitutional principle, nor a democratic one, but the statement itself is not even necessarily true as an empirical matter.

So I still like my 2001 prediction, but unlike when I made it, right now it would be a breath of welcome fresh air. And it's not because I like Nazis.

Q the Lawyers

A report in the online Financial Express says that Nissan is suing Audi over "Q." To wit: “We are seeking to bar Audi from using any names that could infringe on Nissan’s right over the letter ‘Q’,” she added.

Quazy. It's been ten years since the Supreme Court said that if you establish secondary meaning, you can have trademark rights in a certain color. But I guess when you can't win back your own name in trademark litigation, you may as well try for an entire letter of the alphabet.

According to Marty Schwimmer, cited in this article, Nissan could win if it convinces the court of its right to a "family" of trademarks. This "family" of trademarks concept is another judge-created doctrine that, in my humble mind, is a troubling per se species of trademark dilution that is allowed in through the infringement door and therefore avoids the more stringent test (e.g., fame, commercial use) required in order to prove (federal) dilution -- tests which are about themselves about to become even weaker if Congress again asks only "how high?" to trademark owners in this "branders take all" environment.

Not to worry, though. If Nissan wins, there will still be 25 letters left for everyone else.

Grapes of Rath

The Patently Obvious Blog reports that the Federal Circuit, still clinging to antique notions of national sovereignty, quaintly rules that although the U.S. is indeed a signatory to the Paris Convention (of course! Paris!), "the Paris Convention is not ‘self executing’ and thus has no direct effect on U.S. law." In other words, Congress has to amend the Lanham Act to amend the Lanham Act. Evidently this "sovereignty" fetish applies to important matters like trademarks, not the death penalty and stuff.

Incidentally, the ruling means that a certain Dr. Rath (sounds like a James Bond nemesis, or maybe a very bad advice columnist, doesn't it?) (and it doesn't help that in German you pronounce it like "rot") cannot obtain a trademark registration for his last name in the U.S. despite his holding a foreign registration.

One more reason why they laugh at us in Europe, I guess...

Fair Googling a la Mode

Via the In the Agora blog, an update, with useful links, on the suit against Google by Agence France-Presse. Best link is to this article by the ubiquitous Professor Eric Goldman. (Note to self and 100 closest friends: Must read Goldman's blog more often.) Most interesting, Europhobic (that's me) angle: France itself is cooking up a project to rival Google's announced plan to "scan millions of books and periodicals into its popular search engine over the next few years."

Well, nothing like one of those Eurostate-financed boondoggles to suck the wind out of what's left of that economic juggernaut. If I weren't buying Google for the incredible up-side, maybe I'd buy it to beggar France!

Does Your Conscience Bother You?, Tell Me True.

Back to our regularly scheduled overreaching. The rent grab continues apace. According to this article, "The University of Alabama has filed a federal trademark infringement lawsuit against noted painter Daniel Moore, claiming that his football paintings of the last 26 years were not licensed to show 'Bama uniforms."

This may be the stupidest one of the year so far. Hello, Fair Use? Can I introduce you to Messrs. Waiver and Acquiescence? Please, take a seat next to Miss Estoppel and her friends Mrs. Laches and Mr. Sol Limitations...

Strike "'Bama" off the "public Ivies" wannabe list.

Tech Law Advisor Bellies Up to the Bar

Kevin "Tech Law Advisor" Heller showcases the best and the beautiful posts from the blawgosphere once again (and maybe the last time for a while?). Two links from Likelihood of Confusion and he says I'm his "boy."

No, it's okay. It's a Jersey thing.

Blog Juice?

Joy McCann, blogging on Dean's World, comments on a Slate article suggesting that bloggers are the Euro-American version of rappers.

In your bottle-full-o-bub' dreams, Joy!

Underneath Their Robes

Stumbled onto the fascinating and well-written Underneath Their Robes blog this morning, before the phones start ringing and those detestable faxes start slithering in. If you're in federal court as often as we are you will want to bookmark this one.

Defamation and Bloggers, Once and For All

Question I seem to get every week: What's with blogs and defamation? Coleman, are you pro? Con? Here's what appears to be a very well done article, originally published in the New Communications Blogzine, that is far more information than I'm going to give anyone for free.