Jonathan Pink — Entertainment, Internet and New Media Partner at Lewis Brisbois, LLP

Is copyright infringement “theft”? What’s your gut response?

Surprisingly, the current top dog at the Motion Picture Association of America has come out against describing infringement as “theft.”

Umm, let me get this straight, taking something owned by someone else without their permission is not theft? So you walk into Target with your eye on a top-of-the-line camcorder, slip that puppy into your backpack, then walk out without paying for it, we call that what? I’m willing to bet that even the MPAA’s Christopher Dodd would call that theft.

So what’s different in the copyright context? I ask because Mr. Dodd is not a lone wolf in making this claim.

The U.S. Supreme Court ruled in 1985 that infringement does not “easily” equate with theft. See Dowling v. United States (1985), 473 U.S. 207, 217–218).

This is also the position taken by a noted IP scholar, David Llewelyn (a professor at King’s College London and Head of Intellectual Property at White & Case in its London office), who stated at the IP Law Asia Summit that infringing another’s intellectual property should not be referred to as theft because infringement does not physically deprive the “author” of his/her physical work.

Now, most people would agree that copyright infringement is unlawful. (I’m not talking about instances of fair use, implied or express license, public domain, or protection under the DMCA, etc.). But at the same time, many folks have taken issue with calling infringement “theft” or even “piracy,” believing that it’s important to be precise in our language.

I find referring to copyright infringement as “theft” to be pretty precise. And I think the distinction about no physical possession of the work misses the point.

To parse this, let’s start with a standard definition for “theft.”

According to thefreedictionary.com, theft (n.) means “1. The act or an instance of stealing; larceny.” To steal (v.tr.), according to the same website, means “1. To take (the property of another) without right or permission.” Property (n.) means “1. a. Something owned; a possession.” Intellectual property (n.), just to close the loop, is defined as “an intangible asset, such as a copyright or patent.”

So, applying these definitions: a copyright is a form of intellectual property; property is something owned; taking the property of another with permission is called stealing; and “stealing,” by definition, is theft.

Under a standard dictionary usage of the words at issue, copyright infringement equates to theft irrespective of whether the infringer obtained physical possession of the underlying work.

And this makes sense. Even if the infringer never obtains physical possession of any “tangible works of authorship” as defined by the Copyright Act (see 17 U.S.C. §§ 101, 102)), the infringer still obtains “possession” of those intangible rights granted to the work’s author under Section 106.

These include the valuable right to reproduce, distribute copies, and publicly perform the work, among others. And these are not ephemeral rights. They come with them the right to receive something very tangible: money! One of the most important, underlying rights granted to any author is the right to profit from one’s creation. When an infringer misappropriates a work, he/she also steals the royalties the author could have received but for the infringement.

Just to make this perfectly clear: you want a copy of the work, it will cost you. If you take it without paying, that’s a physical deprivation to the author of the right to collect payment. How is this any different than taking the camcorder without paying for it? In both instances, the thief has taken for free, and without permission, something of monetary value that the owner of that item sought to exchange for a price.

The fact that the infringer does not take physical possession of the copyrighted work itself should not matter when defining infringement as “theft.” Indeed, taking physical possession of the work is separately actionable (civilly) under California law as conversion — or criminally as a theft.

A claim for conversion requires that a plaintiff establish: (1) the plaintiffs ownership or right to possession of certain property; (2) the defendant’s conversion of the property by a wrongful act or disposition of property rights; and (3) damages. Oakdale Village Group v. Fong, 43 Cal.App.4th 539, 543-44, 50 Cal.Rptr.2d 810 (1996).

And interestingly, a claim for conversion is generally distinct enough from a claim for copyright infringement that it is immune from preemption under Section 303 of the Copyright Act. The reason it is immune is because it is a different type of theft — one that involves tangible property, not an intangible such as the right to exploit the work itself.

Also of note, the immunity from preemption for conversion disappears where the plaintiff seeks damages for reproduction of the property — not return of tangible property itself. See Firoozye v. Earthlink Network, 153 F.Supp.2d 1115, 1130 (N.D.Cal.2001). In those instances, conversion and infringement merge (the rights address in the conversion claim are deemed the same as those protected by the Copyright Act), and thus the conversion claim would be preempted. Id.; see also Marketing Information Masters, Inc. v. Board of Trustees of the California State University System, 552 F. Supp. 2d 1088 (S.D. Cal. 2008).

So there’s no reason to preclude use of the word “theft” vis-à-vis infringement absent a physical taking, especially given we already have a civil term for that sort of conduct: conversion; and that sort of physical theft can exist side-by-side with the more ephemeral theft called infringement.

Finally, the Copyright Act itself lends some support to the position that infringement amounts to a “theft,” although it does so somewhat obliquely: All of us learn from an early age that stealing can land you in the pokey. Law enforcement is very concerned with the prevention of theft and punishing thieves. Agreed? So I find it interesting that the Copyright Act likewise has a criminal infringement component.

17 U.S.C. Section 506 states, in relevant part, that “Any person who willfully infringes a copyright shall be punished [criminally] as provided under section 2319 of title 18, if the infringement was committed — (A) for purposes of commercial advantage or private financial gain; (B) by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000; or (C) by the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution.”

While I understand that infringement does not typically amount to “theft” in the sense that the copyright owner is deprived of his/her physical work, physical deprivation is not required to meet the dictionary definition of “theft.” The fact that the copyright owner is deprived of his/her ability to receive compensation for the work, deprived of his/her right to control the distribution of the work, deprived of his/her ability to control the republishing and public performance of the work are all instances in which there has been a “stealing” of property rights. I see nothing wrong will calling that what it is: a theft.

Is “theft” the best word to convey what occurs through the act of infringement? It isn’t bad, and I’ve yet to hear better.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP, resident in Los Angeles and Orange County. Mr. Pink heads the firm’s Internet and New Media Team, and can be reached at jonathan.pink@bryancave.com.

Another “fair use” case hits airwaves.

In this case, the District Court judge in New York ruled that Bloomberg LP was not liable for copyright infringement when distributing a recording (and transcript) of a conference call between The Swatch Group Management Services Ltd. and industry financial analysts. The Court ruled on Bloomberg’s motion for summary judgment that the publication was “fair use,” thus dismissing the watch company’s single claim for infringement.

“Having considered the statutory fair use factors and weighed them together in light of the purposes of copyright, I conclude that copyright law’s goals are better served by allowing defendant’s use of plaintiff’s work than preventing it and I hold that defendant’s use qualifies as fair use,” the court stated in its opinion and order.

According to the complaint, Bloomberg “surreptitiously” joined the Swatch conference call with analysts, illegally recorded the call, then sold the recording and transcript online. While this sounds a little dodgy (doesn’t NY have a rule about surreptitious recordings? California requires that all parties to the recording consent), the Court focused on the interplay between fair use and the First Amendment. That is, fair use supposed to strike balance between one’s right to control the work create and the public’s need for access. 17 U.S.C. Section 107; Red Lion Broad. v. FCC, 395 U.S. 367, 390 (1969) (recognizing “the right of the public to receive suitable access to social, political, esthetic, moral, and other ideas”); see also Stewart v. Abend, 495 U.S. 207, 228 (1990).

Here, the court said that the First Amendment’s “robust quality” would be compromised unless news-gathering organizations could continue their long tradition of publishing “information obtained clandestinely and in breach of conditions of confidentiality.” That’s just not what I would expect a federal judge to say. It seems like a bit of legal-shoe-horning to me. Still, I agree that the fair use doctrine needs some flexibility if it is to fulfill purpose as a First Amendment safeguard. Eldred v. Ashcroft, 537 U.S. 186, 219 (2003).

Interesting shout out to the First Amendment/fair use interplay, but doesn’t this beg the question of whether secretly recorded conversations are even entitled to copyright protection? The law is generally unclear as to when, if ever, a conversation may be protected by copyright. See Jackson v. MPI Home Video, 694 F. Supp. 483, 490 (N.D. Ill. 1988) (Jesse Jackson’s speech at the 1988 Democratic Party Convention found to be protectable as, unlike a conversation, it was composed prior to delivery); Estate of Hemingway v. Random House, Inc., 23 N.Y. 2d 341, 244 N.E. 2d 250 (1969) (presumption that conversations are not copyrightable subject matter); Falwell v. Penthouse International, Ltd., 521 F. Supp. 1204, 1207-08 (W.D. Va 1981) (not every utterance one makes “is a valuable property right”).

Jonathan Pink is a intellectual property and business attorney at Bryan Cave, LLP. He practices in Los Angeles and Orange County, California and can be reached at jonathan.pink@bryancave.com.

A big ruling for copyright fair use. This one, in an academic setting, springs from events that took place at Georgia State University (GSU).

In a move not uncommon at universities, GSU permitted students to share digital copies of academic texts the school “housed” in its electronic library system.

Based on this, several publishers, including heavy hitters Cambridge University Press and Oxford University Press Inc. sued the school for copyright infringement. The suit alleged that the school and it’s top brass (or top mortar boards as the case may be) had a policy of “digitally distributing course reading materials” in violation of the Copyright Act.

The complaint asserted that “Georgia State provides its students (and until recently, the general public) the ability to view, download, and print without authorization a number and range of copyrighted works that vastly exceeds the amount and type of copying that might credibly be justified as fair use.”

As a reminder, 17 U.S.C. § 107 provides that the “fair use” of a copyrighted work “is not an infringement of copyright,” but making the determination as to whether “fair use” applies is a case-by-case analysis.

Generally speaking, in determining whether the fair use defense applies, courts consider “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107.

The complaint against GSU alleged hundreds of instances of infringement. By the time of trial that was whittled down to 74.

(How does this happen? What happened to the remainder of the claims? How do hundreds of claims simply disappear? Uhh, duty to investigate prior to pleading? The Rule 11 certification represents that counsel has done a prefiling examination of the facts that is reasonable under the circumstances. Zaldivar v. City of Los Angeles, 780 F.2d 823, 831 (9th Cir. 1986). “Reasonable inquiry” requires attorneys to seek credible information rather than proceed on mere suspicions. California Architectural Building Products, Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1472 (9th Cir. 1987). The test is “whether a reasonable inquiry would have revealed there was no basis in law or fact for the asserted claim.” (internal quotes omitted). Ali v. Mid-Atlantic Settlement Services, Inc., 233 F.R.D. 32, 39 (D. D.C. 2006).)

In any event, U.S. District Judge Orinda D. Evans ruled that 69 of the 74 remaining claims of infringement were protected by the fair use doctrine, a decision that may signal an isoquantic shift in the treatment of claims founded on digital sharing.

In a nutshell, Judge Evans said that GSU’s sharing qualified for protection under the fair use doctrine’s limited allowance of protected works for academic purposes. He ruled that, as to the those works, GSU had made just a small percentage of them available online and had done so without any intention of financial profit. Further, the court found that, by adopting an electronic sharing policy in 2009, GSU “tried to comply with the Copyright Act” and conceded that “The truth is that fair use principles are notoriously difficult to apply.”

As to the remaining five claims of infringement, the court held that GSU was not entitled to the fair use defense given that it had provided free electronic access to chapters of textbooks for which the publishers had actually established a licensing program to sell access them on a chapter-by-chapter basis. In other words, the school took a substantial amount of the work (the entire chapter of the chapter that was offered for sale), and that taking substantially effected the potential market for or value of the copyrighted work. See 17 U.S.C. § 107.

So what gets me is why GSU didn’t argue that it was immune from a claim for copyright infringement. The United States District Court for the Southern District of California ruled in February 2008 that the Copyright Remedy Clarification Act (“CRCA”) “is not a valid exercise of Congress’s power under Section 5 of the Fourteenth Amendment”, thereby holding that a State, employee of a State (acting within his or her official capacity) or instrumentality of a State cannot be held liable for copyright infringement. See Marketing Information Masters, Inc. v. The Board of Trustees of the California State University System, et. al. 552 F. Supp. 2d 1088 (S.D. Cal. 2008).

Congress passed the CRCA, which expressly provided that “[a]ny State, instrumentality of a state… or employee of a State or instrumentality of a State… shall not be immune, under the Eleventh Amendment” to a suit for copyright infringement. 17 U.S.C. Section 511(a). However, the court in Marketing Information Masters held that the CRCA “was not passed pursuant to a valid exercise of [Congress's] Fourteenth Amendment enforcement powers,” and that “the CRCA does not constitute a valid abrogation of state sovereign immunity.”

In reaching this ruling, the Court noted that the “Eleventh Amendment provides a state immunity from suit unless the state consents to be sued or Congress validly overrides the state’s immunity.” (Citing Green v. Mansour, 474 U.S. 64, 68 (1985)).

To determine if Congress validly overrode a state’s immunity, the Court said that it “looks to two factors: (1) whether Congress expressed a clear intent to override the state’s immunity and (2) whether Congress acted pursuant to a congressional grant of authority.” (Citing Seminole Tribe of Florida v. Florida, 517 U.S. 44, 55 (1996)).

Moreover, to determine whether an act constitutes a valid exercise of Congress’s power under Section 5 of the Fourteenth Amendment, the Court said that it must find that Congress identified “‘conduct transgressing the Fourteenth Amendment’s substantive provision, and… tailor[ed] its legislative scheme to remedying or preventing such conduct.’” (Citing City of Boerne v. Flores, 521 U.S. 507 (1997), and quoting Florida Prepaid v. College Savings Bank, 527 U.S. 627 (1999)).

While neither the Supreme Court, nor the Ninth Circuit has addressed the issue of whether the CRCA is a valid abrogation of state sovereign immunity, the Supreme Court struck down as unconstitutional two similar “remedy clarification” acts involving intellectual property rights. See Seminole Tribe, supra (invalidating the Patent and Plant Remedy Clarification Act) and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Fund, 527 U.S. 666 (1999) (invalidating the Trademark Clarification Act).

The bottom line is that, just as the Marketing Court held that the CRCA did not survive constitutional scrutiny under the enforcement clause of the Fourteenth Amendment, so too might the court in Cambridge University Press et al. v. Mark P. Becker et al. (case number 1:08-cv-01425) have reached this decision had the defendants asked the U.S. District Court for the Northern District of Georgia to similarly find that a state university is entitled to immunity in copyright infringement claims brought against a State or State-actor when the latter is acting in his or her official capacity.

Jonathan Pink heads the Internet and New Media Team at Bryan Cave, LLP. His practice focuses on intellectual property litigation including copyright, trademark and right of publicity issues. He is resident in Los Angeles and Irvine and can be reached at jonathan.pink@bryancave.com

The first shot is a direct hit. And possibly to the heart.

Victor Willis, one of the original Village People, prevailed this week in copyright case brought under Section 203 of the Copyright Act. (Scorpio Music SA et al. v. Willis, case number 3:11-cv-01557.)

That’s the section that – where certain stringent conditions are met – the grantor of a copyright may reclaim ownership of it “at any time during a period of five years beginning at the end of thirty-five years from the date of execution of the grant; or, if the grant covers the right of publication of the work, the period begins at the end of thirty-five years from the date of publication of the work under the grant or at the end of forty years from the date of execution of the grant, whichever term ends earlier.” 17 U.S.C. Section 203(a)(3).

Distilled to its essence, Section 203 allows “authors” (and in this case a musician) – after jumping through rigorous hoops that are easy to miss – to regain control over their work beginning in 2013 (as measured by 35 years from the date this section of the 1976 Copyright Act went into effect).

While this case was brought against a couple of music publishers, this is precisely the result that many record labels have feared: that a musician could recover the copyright interest in his / her / their hit songs. In this instance, that means the Willis’ rights to “YMCA,” “In the Navy” and 31 other songs by the Village People go back to him. Yikes. Not because of what this means to the labels, but what it means to me! Now these songs will be in my head all day! Ugggg. I blame U.S. District Judge Barry T. Moskowitz for this. Like Glenn Close in the famous bathtub scene – these bloody songs just won’t die!

And of course, an appeal is certain. So don’t pop the champagne just yet, Mr. Willis.

For its part, the opposing parties argued that because Willis was only one of the authors on the works could not regain his copyright interest without the involvement of his former band mates. Judge Moskowitz disagreed (“. . .in the Navy!”). He said Section 203 was drafted with the intent of letting each author regain control of his/her share of the rights (“. . . down at the Y-M-C-A”), and that in this instance, Willis had granted his copyright interest separately from the other band members, thus allowing him to “unilaterally terminate his grants” even if they haven’t.

This fight is a long way from over. Both with respect to Willis and, more importantly, the bigger fight between the labels and artists seeking to push the “35 year rule” that is due to arrive any minute now. Labels have pretty well indicated that they will take the position that the works were “works for hire” under Section 201(b) of the Act. Uhhh . . . (“. . .in the Navy!”). Really? You know, Prometheus would have had it easier if the gods had told him to push that boulder down hill. . . . At the YMCA..

This was the publisher’s initial response too, but it dropped it when Willis produced evidence that the songs had not been registered as such back in days of disco.

So, as we wait for the next (white) shoe to drop, we’ll just have to rip off our shirts, put on a leather vest, some chains and sing . . . In the Navy!!

Jonathan Pink is an intellectual property attorney in Los Angeles and Orange County California. He can be reached at jonathan.pink@bryancave.com.

Here’s an interesting situation: song writer creates song based on a musical transcription of pi, and is then sued by another musician who had previously done the same thing.

As you will recall, pi begins with 3.14159, but then goes on forever (interestingly, with no discernable pattern).

As this story goes, one artist, Michael Blake, released his song through a YouTube video in 2011, only to be met later that same day by the claim from another artist, jazz musician Lars Erickson, that Blake’s work infringed Erickson’s own pi symphony.

Copyright infringement, over pi? Really?

Folks, just to clear up any confusion, pi is not copyrightable. To begin with, it is not itself original to either Blake or Erickson, and thus fails the initial test of copyrightability. See 17 U.S.C. Section 102 (“Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression.”); Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 345 (1991) (“Original, as the term is use din copyright, means only that the work was independently created by the author as opposed to copied from other works, and that it possesses at least some minimal degree of creativity.”) It is a concept that mathematicians such as Archimedes, Leonhard Euler, Carl Friedrich Gauss, Isaac Newton, Ramanujan, and John von Neumann have been grappling with for thousands of years.

Further, it is simply a fact, commonly defined as the ratio of a circle’s circumference C to its diameter d. And copyright protection extends only to an author’s expression of facts, not to the facts themselves. Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556 (1985) (“No author may copyright . . . the facts he narrates.”). From a policy standpoint, scientific facts has long been viewed as building blocks that are available to subsequent creators/authors/scientists. Simply put, no one owns pi.

But what about the music that is derived from a transcription of pi? Certainly that is fixed in a tangible medium, but does it possess at least some minimal degree of creativity? Without more, probably not.

In this case, while Erickson obtained a registration in his work, that registration could only cover the protectable elements of that work, not material that inherently nonprotectable, such as pi. See Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904, 913 (9th Cir. 2010) (“At the initial ‘extrinsic’ stage, we examine the similarities between the copyrighted and challenged works and then determine whether the similar elements are protectable or unprotectable.”). This step must be performed because “a finding of substantial similarity between two works can’t be based on similarities in unprotectable elements.” Id. at 917; Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 209 (9th Cir. 1988) (clear error when district court determined substantial similarity existed based on unprotected elements).

It has often been said that music typically contains a “large array of elements, some combination of which is protectable by copyright.” Swirsky v. Carey, 376 F.3d 841, 849 (9th Cir. 2004). Therefore, when analyzing the similarity of musical compositions, the court must consider a variety of compositional elements including melody, harmony, rhythm, timbre, structure, instrumentation, meter, tempo, and lyrics. Id. However, any finding of infringement may not be based on constituent elements/material that unoriginal, and thus do not merit protection. See, Shaw v. Lindheim, 919 F.2d 1353, 1363 (1990) (rejecting plaintiff’s “26 strikingly similar events” purportedly shared by his and the challenged work in part because defendants rejoined with a “list of similarities between ‘The Wizard of Oz’ and ‘Star Wars’ that [was] virtually as compelling as [plaintiff’s].”).

This is apparently the result reached by the court in this case. While Erickson and Blake both assigned musical notes to correspond with the 3.14, etc. digits of pi, the court found that the works differed sufficiently in tempo, musical phrasing, and harmonies. As to the fact that both works were founded on pi, the court ruled that similarity was not protectable, and thus that the plaintiff failed to demonstrate a substantial similarity of protectable expression between the works.

This case should serve as a reminder that not every similarity between two works constitutes an actionable claim for infringement, or justifies the cost of litigation.

Jonathan Pink is an intellectual property attorney specializing in copyright and trademark issues. He is resident in the Los Angeles and Orange County, and heads the Internet and New Media team at Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com.

I’ve got a new hero.

He’s this guy in Vermont named Bo Muller-Moore.

Apparently he’s a folk artist, and is known for the tee shirts he makes that proclaim “Eat More Kale.” In fact, according to what I’ve read, he’s known as the “Eat More Kale” guy. But really, how much kale can you eat?

Well, Mr. Muller-Moore (aka Mr. EMK) received a letter from the fast food chain, Chick-Fil-A. Now while it’s always nice to receive mail (unless it’s from the IRS), the chain was not offering him any special discounts. Instead, they were threatening to sue him for infringing their registered trademark, “Eat Mor Chikin’.”

Quick trademark primer: The hallmark to any trademark infringement claim is a likelihood of consumer confusion. Specifically, a likelihood of confusion exists when consumers are likely to assume that a product or service is associated with a source other than its actual source because of similarities between the marks or the parties’ marketing techniques. See Metro Publishing Ltd. v. San Jose Mercury News, 987 F.2d 637, 639 (9th Cir. 1993). In fact, all trademark cases, including parodies, are subject to the likelihood of confusion test. See Dr. Seuss Enter. L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997) (affirming preliminary injunction prohibiting publication and distribution of Dr. Juice’s The Cat Not In The Hat, an account of the O.J. Simpson murder trial composed in the styling of Dr. Seuss’ Cat In The Hat); but see Mattel, Inc. v. MCA Records Inc., 296 F.3d 894 (9th Cir. 2002).

In Mattel, a case in which the toy company sued the record company based on its release of a single entitled “Barbie Girl,” the Ninth Circuit held that there was no trademark infringement because the song was artistically relevant not explicitly misleading as to its source. (You’ll remember the lyrics: “I’m a Barbie girl, in a Barbie world, Life in plastic, it’s fantastic/ You can brush my hair, undress me everywhere . . .”) 296 F.3d at 902. The Ninth Circuit reaffirmed that line of reasoning in another dispute involving the Barbie trademark, Mattel Inc. v. Walking Mountain Prod., 353 F.3d 792 (9th Cir. 2003), holding that plaintiff’s photographs entitled “Food Chain Barbie” and depicting Barbie in various absurd positions did not infringe on the Barbie trademark because the title was artistically relevant and not explicitly misleading.

Which brings us back to Bo and his shirts. Now a show of hands, please, who believes that these tee-shirts reading “Eat More Kale” are likely to cause consumer confusion with respect to a fast food chair who’s logo is “Eat Mor Chikin’”?

I suppose, in fairness, I should mention the Sleekcraft factors, as these might influence your vote. In AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), the Ninth Circuit set forth the following eight-factor, fact-based test that is now used by most courts to evaluate a likelihood of confusion: (1) the strength of the plaintiff’s mark, (2) the similarity of the marks, (3) the proximity or relatedness of the goods or services, (4) the intent of the defendant in selecting the mark, (5) evidence of actual confusion, (6) the marketing channels used, (7) the likelihood of expansion of product lines, and (8) the degree of care consumers are likely to exercise. Id. at , 348-49.

Ok, now anyone want to change their vote?

It is often said that the sixth factor of the Sleekcraft test, the examination of marketing channels used, which is particularly significant. So here we have national chicken chain (which apparently does not have many outlets in Vermont) and freelance artist located exclusively in Vermont. Hmmm. Well I, for one, am not confused. But maybe that’s just me.

In fact, even if he intended to reference the Chick-folks, I think there’s a good argument that his shirts are artistically relevant and not explicitly misleading. And even if the Chick-chain is entitled to protection in “Eat Mor Chikin’,” just how far does and should this mark really go? How about just “Eat More”? What if I’m obese and believe everyone else should be too, so I start making shirts that say “Eat More.” Does this infringe? Or maybe I’m worried about people who don’t eat enough, so I make a shirt that just says “Eat,” would this infringe? How about a shirt that says “Chicken” and nothing else? What about another frequently consumed animal, e.g. “Fish”? I’m just not sure how far they think this mark extends.

Speaking of overreaching, I need to stretch. Ah, that feels better.

Anyway, so why is Bo my hero? No, it’s not because I love kale (although it is healthy, and I do enjoy it from time to time, and yes I probably should eat more). And no, it’s not because I want to see people needle the big guy. It’s because he’s come up with a very creative solution. Brilliant, in fact.

Rather than shut down and turn over his website as the chicken people want, Bo is making a documentary about his fight, and he is raising the funds to make the film on Kickstarter. Now that is great! Of course, as he acknowledges on his blog, he may not win, but then again, he may (see show of hands, above). And if nothing else, he may end up with a very interesting film. And I’m all in favor of that.

So here’s to you, Bo. You’ve got a fan in me.

Jonathan Pink is an intellectual property attorney in Los Angeles and Orange County. He chairs the Internet and New Media team at Bryan Cave, LLP and can be reached at jonathan.pink@bryancave.com.

It seems enough people pinned about Pinterest’s copyright problem that Pinterest decided to changes its Terms of Service and, more importantly, ditch it anti-self-promotion policy.

Pinterest is a UGC site that allows members to “pin” images they’ve found online and share those images with other Pinterest users (including visitors to the site; you don’t have to be a member to see what is posted there). While that may seem a terrific business plan on its face, taking images without permission will likely violate the copyright interest in that image, potentially subjecting Pinterest’s user to a claim of infringement.

Given the site’s inherent copyright problem, a user could effectively avoid violating U.S. copyright laws only by: (1) creating the posted image themselves; (2) obtaining permission to republish from the copyright owner; (3) taking an image in the public domain; or (4) sufficiently transforming the image so that a fair use defense might apply.

Each of these has (or had) its own problem. Let’s start with the last and work our way up.

Not much has been made of the possibility that a fair use defense could apply to Pinterest users’ pinning of copyrighted images. It bears some discussion.

The Copyright Act is not currently equipped to address the complexity of new media. It is supposed to strike a balance between the artist’s right to control her/his work and the public’s need for access to creative works, a balance that is typically expressed as the “fair use” doctrine. See 17 U.S.C. Section 107; Red Lion Broad. V. FCC, 395 U.S. 367, 390 (1969) (recognizing “the right of the public to receive suitable access to social, political, esthetic, moral, and other ideas”); see also Stewart v. Abend, 495 U.S. 207, 228 (1990).

A strong argument can be made that posting of images on Pinterest, especially where accompanied by commentary and insight, constitutes the type of social, political, esthetic exchange of ideas that the fair use doctrine is designed to encourage. Even if this argument requires a bit of legal-shoe-horning, I think it is fair to say that it is this type of flexibility that doctrine must be capable of if it is to fulfill its purpose as a First Amendment safeguard. See Eldred v. Ashcroft, 537 U.S. 186, 219 (2003). There is no doubt that commentary, criticism and parody are not the only types of expression that provide social benefit and deliver new meaning to a work. See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007). If so, and if the fair use doctrine is to remains flexible enough to co-exist with contemporary technology, then the use of images in social media should slip comfortably into the fair use “shoe.”

Of course, fair use is a defense. This means that it only applies if and when a suit has been filed. If the goal is to avoid triggering an claim for copyright infringement, then a possible defense may not provide the comfort most social media users are looking for.

That brings us to taking an image in that is in the public domain. This is an easy way to avoid triggering an infringement claim because there work is free for the taking. The only problem is that determining whether an image is in the public domain takes some sleuthing. Generally speaking, images created prior to 1923 are safe. Republish one of those and no one can cry foul. Also safe are images published without a copyright notice between 1923 and 1977. How do you know if they were published without a copyright notice? Not so easy: you have to search the archives to figure this out. Also safe, albeit equally difficult to determine, are those published from 1978 to March 1989 without a notice, and without a subsequent registration. So, while these images may all be “safe” from an infringement perspective, determining whether an image was published with or without an image may be difficult, and those created before 1923 may be too old to interest many social media posters.

So, you’re looking for an easier, fool-proof solution? Ok, one effective solution is to obtain permission to republish from the copyright owner of the desired image. First you have to determine the identity of the owner, then you have to contact that person, and finally you have to obtain their consent. Hey, I said “easier,” not simple. This is because even if you manage to find the copyright owner, she/he may be unwilling to allow you to use their work. This is especially so with a site like Pinterest which states in its terms of use that pinning any image carries with it an implied license permitting any other pinner to repin. Thus, a copyright owner who gives permission to you is, in effect, giving permission to every Pinterest member in the universe to republish as well. Some artists may balk at such broad of a license even if – at first blush — they were inclined to permit republication by you.

Finally, there is the simple and elegant solution of creating the material that one pins. Setting aside your inability to take a decent picture, Pinterest’s had a prior policy that seemed to discourage creating images that promoted one’s own work. Under the admonition “Avoid Self Promotion,” Pin Etiquette had been that “If there is a photo or project you’re proud of, pin away! However, try not to use Pinterest purely as a tool for self-promotion.” I’m frankly not sure why Pinterest had this policy. I suppose the idea was to legitimately share what interests you, rather than to line your own pockets with your own praise for your own work. So Martha Stewart couldn’t have a board for the myriad of stuff she’s trying to sell. But why not? It seems every third pin board contains an image linking to Martha Stewart, so isn’t that the same as her pinning the images herself?

In any event, Pinterest’s newly revised Pin Etiquette does not include this dictate. Instead, it includes the benign “Pinterest is an expression of who you are. We think being authentic to who you are is more important than getting lots of followers. Being authentic will make Pinterest a better place long-term.” Ok. Whatever that means.

I suppose what this means is that they’ve opened to door (a little wider) to members creating and posting their own material. Will this eliminate the copyright problem inherent in the Pinterest business model? No. The risk that UGC will infringe someone else’s copyright is still very high. In fact, I doubt Pinterest would continue to exist without it. But this is a good move in the right direction. In fact, it’s evolutionary: a development that even might insure Pinterest remains viable long enough to turn a profit.

Feel free to pin – or stick pins in – anything I’ve said.

Jonathan Pink is an intellectual property attorney located in Los Angeles and Orange County. He leads the Internet and New Media Team at Bryan Cave, LLP, and can be reached at jonthan.pink@bryancave.com.

Every so often, someone reads my blog. Here’s a response I received from one of the counsel in the Bon Jovi case that I reported on about a month ago. (The email is reprinted in its entirety, with permission from the author.)

Mr. Pink – I tried to post a comment on your fine blog, but apparently went over the word limit, so rather than cut it down, I’m only e-mailing it to you, at least for now.

(Attempted) post is below.

Warm regards,

Chris

…

Mr. Pink:

I represent Mr. Steele in the cases discussed in this post. Snarky comments aside (in reality, Mr. Bongiovi has a long and well-documented history of “steal[ing]” other people’s songs), you have your facts – and the law of the case – flat wrong.

I know it’s a lot to ask to read the file, briefs, or anything other than the First Circuit’s three or four sentence-long “judgments” prior to posting, but your failure to do so here renders your analysis meaningless (other than your self-explanatory quotes from non-First Circuit decisions).

First, as to proving defendant copied the work, defendants in the district court actually admitted access to Steele’s work no later than October 2004, over four years prior to Steele filing suit.

Second, the district court – in a break from First Circuit precedent and practice – issued an order, at defendants’ urging, prohibiting any discovery as to probative similarity, i.e., “actual copying.” The district court instead limited the scope of discovery – and the dispositive issue at summary judgment – to expert analysis of “substantial similarity.” An aside: Mr. Steele faced Skadden pro se during the entirety of the initial district court proceedings.

Nonetheless, Mr. Steele alleged and argued direct copying in the form of digital reproduction in the district court. As several of the defendants know from their own infringement prosecutions, where digital reproduction – for example, downloading a song from a file-sharing site like Napster – can be proven, it is the beginning and end of the infringement analysis.

Mr. Steele argued that defendants duplicated his song and used it as a temp track in their video editing suites, specifically those of TBS Studios and/or MLB Advanced Media, L.P. (which happens to own and run Bon Jovi’s website, among many other non-baseball digital properties). Defendants – in three and a half years of litigation – have never denied using Mr. Steele’s song as a temp track, likely because the evidence of temp-tracking here is impossible to refute (read Mr. Steele’s complaint and/or briefs on appeal for the evidence on this).

Funny thing: MLB Advanced Media, L.P. – the target defendant, being the claimed copyright owner to the infringing work – was properly served but willfully defaulted in Steele’s first (pro se) case. Another funny thing: An unserved entity, Major League Baseball Properties, Inc., voluntarily appeared, claiming – falsely (this is undisputed) – to be MLB Advanced Media, L.P. Unsurprisingly, the pro se Steele didn’t catch this. Nor did he catch that defendants filed a false version of the infringing work in the district court, from which MLB Advanced Media, L.P.’s copyright notice had been deleted (also undisputed).

But I digress. It is, however, worth noting that these cases long ago stopped being about infringement – again, never denied or disputed – and instead have revealed Skadden’s multi-year, multi-jurisdiction, and jaw-droppingly brazen fraud on the court.

Back to infringement. The district court’s strange order precluding discovery – and adjudication – of access and copying put Mr. Steele in the difficult situation of trying to prove defendants’ digital duplication of his song for use as an audiovisual temp track by showing that defendants’ audiovisual work was substantially similar to Mr. Steele’s song. As you may know, there are no published decisions on temp-tracking, though it is universally acknowledged – where the temp track is used without the owner’s permission – to constitute infringement.

So, while your citations and quotations are no doubt accurate, you leave out that the district court failed to follow those decisions (or, more accurately, similar decisions in the First Circuit). Skadden successfully pushed for this truncated analysis knowing that discovery of digital files from defendants’ video editing suites would quickly confirm infringing duplication. On the other hand, Steele would face an uphill battle in showing substantial similarity between his song and defendants’ audiovisual.

The district court’s decision leaves no doubt that Skadden succeeded: the district court’s attempted song-audiovisual substantial similarity analysis is confusing and, where it addresses synchronization rights, not only legally incorrect, but nonsensical. The much simpler route would have been to follow the well-established two-step analysis of probative similarity followed by substantial similarity. Here – as in illegal downloading cases – the first step would likely have been dispositive of actual copying (duplication) and, therefore, of infringement. Such “direct evidence” of copying is, I submit, no longer “rare,” as described by numerous decisions, including in the First Circuit, at least in cases of digital infringement.

Temp-tracking is a secretive process because it often involves infringement. Accordingly, evidence of probative similarity (direct evidence of copying) in such cases would not only provide conclusive evidence of infringement, but possibly the only evidence. Mr. Steele was instead forced to prove digital duplication through the unnecessarily circuitous route of expert testimony as to substantial similarity between his song and defendants’ audiovisual.

The First Circuit’s “own independent review” finding that no reasonable juror could find probative similarity was, therefore, necessarily limited, if not impossible because such evidence was specifically forbidden from the district court proceedings. Nonetheless, the record was replete with evidence of substantial similarity – despite the district court’s limited discovery order – including, among other things, that both works were identical in length (to the tenth-second); that 96% of defendants’ audiovisual’s frame “cuts” were beat- or tempo- matched to Mr. Steele’s song (irrefutable – and, in any event, undisputed – evidence of temp-tracking); and that over a dozen affiants had sworn to the works’ similarities and/or being confused upon viewing the audiovisual for the first time, believing it to be a derivative of Steele’s song.

There is much more to this story, if you care to take the time to read the papers. If you do, I think you would agree that “knowledgeable counsel” would have, as I have, continued to “press on.”

You suspect correctly: It is not over yet.

Christopher A.D. Hunt

The Hunt Law Firm LLC

10 Heron Lane

Hopedale, MA 01747

(508) 966-7300

cadhunt@earthlink.net

Sort of surprised at all the (P)interest in Pinterest, or at least in the copyright issues surrounding it.

I was interviewed by the Wall Street Journal about the use of non-user generated content posted as UGC on the site. That is, taking someone else’s images and pinning them to the Pinterest user’s on pinboard.

The first thing I told the Journal is that there’s a decent fair use argument here. There are many uses beyond straight commentary that deliver new meaning while still providing important social benefits (comparable to commentary or criticism) that the fair use doctrine aims to protect. The fair use doctrine has to remain flexible enough to recognize the complications of contemporary technology if it’s to remain a true First Amendment safeguard. Maybe this requires amending the Copyright Act. Uh, certainly, this involves amending the Copyright Act.

Of course technology evolves so quickly that striving to have the Act keep up with it is a little like using a bicycle to chase a speeding Viper. I don’t care how good a cyclist you are, you’ll never catch up. (In homage to Roger Corman: Eat My Dust.)

The Wall Street Journal reporter took all that down, then called back and said: Just give me the dos and don’ts. Here’s a link to the article: http://blogs.wsj.com/law/2012/03/13/dont-get-stuck-by-pinterest-lawyers-warn/?mod=WSJBlog.

Those comments, by-the-by, led to a radio interview on the same topic on the Victoria Taft Show. A link to that is right here: http://stationcaster.com/player_skinned.php?s=99&c=849&f=444791 .

Between those two pieces, I’ve said everything I have to about this issue. A far more interesting issue (or two), was noted by the esteemed scholar, Eric Goldman (who everyone should read if they don’t already).

Eric opined in a Facebook discussion yesterday that the two really interesting points about Pinterest are: “(1) it’s a site that surely would never grow to maturity in a SOPA world as opposed to a DMCA 512(c) world because the copyright concerns would have taken it out without any 512(c)(3) takedown notices being filed, and (2) it came out of nowhere to become a major threat to Facebook, reminding us that the next wave of innovation is nowhere on our radar screen today, and locking in the existing competitive environment would be a huge mistake.”

Now that’s thinking! Those are by far the most interesting points I’ve heard about Pinterest. So pin that.

Jonathan Pink is an intellectual property attorney resident in the Los Angeles and Orange County offices of Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com.

You’ve got to admire Louis Vuitton. They aggressively pursue alleged infringers of their trademarks.

There’s the recent case of Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011) in which the Ninth Circuit held that a web-hosting company was liable for contributory copyright and trademark infringement when it failed to take steps to stop alleged infringement committed by Chinese websites which had used its servers.

There was Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, in which the House of Louis sued a company that sold a parody pet product called Chewy Vuitton: a chew toy that resembled a Louis Vuitton handbag. (The Fourth Circuit ruled that the toy, which included a number of dissimilarities to the real bag, was a parody and thus did not infringe Louis Vuitton’s trademark.)

And the suit against Warner Brothers for its use of a counterfeit LV bag in “The Hangover Part II” (Zach Galifianakis warns his cohort not to sit on his Louis Vuitton bag, “Careful, that is a Louis Vuitton.”)

Now, LV has set its sights on the University of Pennsylvania Law School.

Penn Law included a version of the LV logo/design on a student flyer advertising a conference on intellectual property infringement in the fashion industry.

Specifically, the flyer showed those flowery, circley and diamondy shaped images that LV is known for. The flyer intermixed those images with some stylized ones to make a point about the discussion. They included circle-cs (for copyright) and TMs (for trademark). Get it?

Louis Vuitton’s director of civil enforcement for North America did, and he didn’t like it. He wrote to the law school’s dean, saying Louis Vuitton had “created the Toile Monogram pattern” (that’s what those clover and star things are called) “in the 1890’s to protect the Louis Vuitton brand from unlawful imitators.”

He was “dismayed” that the school’s Intellectual Property Group had “misappropriated and modified the LV Trademarks and Toile Monogram as the background for its invitation to [its] . . . Annual Symposium on ‘IP Issues in Fashion Law’”, calling such conduct “egregious” and predicting that it would dilute the LV Trademarks and could lead others to think that that it’s ok.

The coffee machine must work overtime at Louis Vuitton. They may want to consider laying off the caffeine.

The letter from LV’s counsel goes on to chastise the law school like a parent ripping into a kid for running across the street without looking first: “I would have thought the Penn Intellectual Property Group, and its faculty advisors, would understand the basics of intellectual property law and know better than to infringe and dilute the famous trademarks of fashion brands, including the LV Trademarks, for a symposium on fashion law.”

In my house we would have taken away the school’s treats for the day. I’m wondering if LV considered rejected this as being too harsh.

Perhaps I’m naively optimistic, but I just don’t think most people are going to confuse the law school’s use of the LV marks with LV’s participation in, sponsorship or support of the school’s program. After all, all the participants were listed on the flyer, and LV wasn’t one of them.

The University of Pennsylvania’s associate general counsel wrote back to LV. In his letter, he noted that the Lanham Act “expressly protects a noncommercial use of a mark and a parody from any claim for dilution” and that, in order to infringe LV’s marks, the school would have had to have used the marks in interstate commerce in a manner likely to cause confusion between “Louis Vuitton’s luxury apparel goods and [the student group's] educational conference among the relevant audience.”

He says he’s not going to tell the Intellectual Property Group to discontinue its use of the image, and invites LV’s counsel to attend the symposium.

Nice.

I suppose LV’s counsel has reason to be concerned about fair use. It’s a good defense in some instances, such as when a mark is used in a descriptive sense. See e.g. Radio Channel Networks, Inc. v. Broadcast. Com, Inc. 1999 WL 124455 (S.D.N.Y. 1999), aff’d w/out opinion, 201 F.3d 432 (2d Cir. 1999) (use of term “radio channel” to label one of several website groupings of streaming programming held to be descriptive); see also Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (defendant’s use of the plaintiff’s mark to describe the plaintiff’s product is acceptable); Playboy Ent., Inc. v. Welles, 279 F. 3d 796 (9th Cir. 2002) (use of plaintiff’s mark to identify defendant was not infringing).

Still, that doesn’t really fit this fact pattern.

Rather, this is closer to incidental use which is so de minimis that no infringement can be found, or better yet, how about the First Amendment? A trademark may develop into a cultural icon that becomes a referent for purposes of social commentary. See e.g. Mattel, Inc. v. MCA Records, Inc., 202 WL 1628504 at *2 (9th Cir. 2002) (“Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with such expressive value, the trademark becomes a word in our language and assumes a role outside the bounds of trademark law.”)

This is similar to the parody defense that school’s counsel mentioned. See Anheuser-Busch, Inc. v. Balducci Publications, 28 F. 3d 769, 773 (8th Cir. 1994) (use of a trademark to comment on or criticize the trademark, its owner, or the products and services marketed with the trademark may constitute a defense to an action for trademark infringement).

But the one I like best of all, is that there simply is no likelihood of confusion by the likely viewers (law students, IP lawyers, etc.) as to the source, sponsorship or affiliation with respect to the plaintiff’s mark and the defendant’s goods or services. See 15 U.S.C. Section 1114; Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 205 (2d cir. 1979) (“The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.”).

Is the use of those marks on a law school flyer for a Symposium on “IP Issues in Fashion Law” really going to dilute the LV trademarks?

To quote from that great bar scene in Star Wars, Episode IV (after Ponda Baba gives Luke a rough shove and starts yelling at him in an alien language Luke doesn’t understand):

Dr. Evazan (grabbing Luke) I don’t like you either. You just watch yourself. We’re wanted men. I have the death sentence on twelve systems.
Luke: I’ll be careful.
Dr. Evazan: You’ll be dead!
Obi-Wan: (intervening) This little one’s not worth the effort. Come, let me get you something.
(Dr. Evazan shoves Luke across the room and pulls out a blaster, at which point Obi-Wan ignites his light saber and severs Ponda Baba’s arm.)

This little one’s not worth the effort. LV should show up for the symposium and speak its mind. Beyond that, and knocking off the coffee, they should think twice before making an issue out of something like this . . . before they lose an arm and have no place to hang their bag.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He is resident in the firm’s Los Angeles and Orange County (Irvine) offices. He can be reached at jonathan.pink@bryancave.com or 949-223-7173.