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Face Book of Sex — Yes, That’s Really What it Was Called

A friend of mine recently told me, “If you’re going to practice intellectual property, sooner or later you’re going come across something that touches on the porn industry.”

Which brings me to a case settled this week between Facebook and the “Face Book of Sex” (Facebook Inc. v. Various Inc., case number 4:11-cv-01805, N.D. CA).

Facebook’s trademark claim seems to have been pretty straightforward: that the defendant infringed the social media giant’s trademarks by running the adult-themed FaceBookOfSex.com, asserting that FaceBookOfSex.com mimicked the social network’s site with such features as “like” (albeit, in a slightly different context).

As many of you know, the Lanham Act imposes liability upon any person or entity who uses a mark in interstate commerce in connection with the sale or advertising of goods or services that is likely to cause confusion or mislead consumers as to source or origin of the goods or services. See 15 U.S.C. § 1114(1)(a). Likelihood of confusion is typically measured by a series of criteria originally set forth in AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

While Facebook’s claims were somewhat obvious, impressively and unexpectedly, “Face Book of Sex” brought its own counterclaim to cancel Facebook’s marks, arguing that “face book” is a term that has been used for years by schools and organizations, ant Facebook should not be allowed to monopolize it.

That’s the argument people made with respect to “Windows,” way back when, and “Apple,” too.

Not necessarily a winning argument, but you have to appreciate the in-your-face chutzpah!

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

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Bon Victoire for Bon Jovi

Just back from the Grammys. 

The televised portion of the show is fine, but the real spirit of the place is found in the Grammy Week lead-up events, and the pre-telecast portion of the awards.  That’s where the music industry really comes together to honor its own in an intimate and heartfelt ceremony.

Two fashion notes: guys, lose the bow ties on the tuxes, and everyone: “black tie” does connote some degree of formal attire (and that does not include simply recycling what you wore to your wedding or what you wore to your sister’s wedding). 

Ok, enough of that, but in honor of that: a music law case to report on:

Last week, the First Circuit affirmed the dismissal of three lawsuit that had been brought against Bon Jovi based on the allegation that Bon Jovi’s song, “I Love This Town,” infringed “Man, I Really Love This Team” by little known artist, Samuel Bartley Steele.  (Steele v. Ricigliano et al., case number 11-1675; Steele et al. v. Bongiovi et al., case number 11-1674; Steele et al. v. Vector Management et al., case number 10-2173; and Steele et al. v. Turner Broadcasting System Inc. et al., case number 09-2571, in the U.S. Court of Appeals for the First Circuit.)

What?!  An unknown artist suing a big-named artist for infringement?!  Shocking!  A little known artist claiming that the big-guys listened to and stole the little’s guy song? 

Look, I’ve got a message for the little guy: the big guy (generally) hit it big because he (or she) has a lot of talent.  Hard to believe, but true.  Talent is what brought them to such heights.  Talent as in they don’t need to steal from you because they’re pretty damn good at writing their own stuff. Got that? 

Ok, enough of that too. 

Back to Steele and Bon Jovi.  Turns out Bon Jovi’s song was regularly played at baseball games, which may be why Steele thought it was stolen (remember, his work is entitled “Man, I Really Love This Team,”  which could refer to baseball).   Unfortunately for Steele, however, copyright law does not protect facts, ideas, or themes.  It only protects the way these things are expressed.

In other words, to prove direct infringement, a plaintiff must first prove that the defendant copied the protected work.  Kelly v. Arriba Soft Corp., 336 F.3d 811, 817 (9th Cir. 2003) (“the plaintiff must show ownership of the copyright and copying by the defendant.”); see also LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150, 1156 (9th Cir. 1996) (“A plaintiff must meet two requirements to establish a prima facie case of copyright infringement: (1) ownership of the allegedly infringed material and (2) violation by the alleged infringer of at least one of the exclusive rights granted to copyright holders.”).

Such copying may be proven by either direct evidence, which is rare, or by indirect evidence that shows (1) the defendant had access to plaintiff’s work, and (2) the defendant’s work has probative similarity. See, e.g., Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823, 832 (10th Cir. 1993); Computer Assoc. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 701 (2d Cir. 1992) (requiring “substantial similarity”). “The word ‘copying’ is shorthand for the infringing of any of the copyright owner’s exclusive rights, described” in 17 U.S.C. § 106. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085, n.3 (9th Cir. 1989).

The degree of similarity needed to infer that copying has occurred will vary from case to case, but a plaintiff must show evidence sufficient that a reasonable fact finder, considering both access and similarity of the works, could find that the second work was copied from the first. See Gates Rubber v. Bando, 9 F.3d at 833 n.9.  The plaintiff must also show that the copying was a result of a volitional act. See Religious Tech. Ctr v. Netcom On-Line Commc’n Servs., Inc., 907 F. Supp. 1361, 1369-70 (N.D. Cal. 1995).

The plaintiff also must show that those elements of a work that have been copied are protected expression and of such importance to the copied work that the appropriation of these protected elements is actionable. See id. at 832; Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1341 (5th Cir. 1994). The materiality component is important because not all copying constitutes copyright infringement. See Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (“The mere fact that a work is copyrighted does not mean that every element of the work may be protected.”). Thus, unprotectable elements of a work cannot serve as basis for liability for copyright infringement; liability will only attach where protected elements of a copyrighted work are copied. Gates Rubber v. Bando, 9 F.3d at 833.

In this case, the district court – and later the Court of Appeal on its own independent review — concluded that no reasonable juror could find a substantial similarity of expression between Bon Jovi’s work and Steele’s work sufficient to support an infringement claim.  The court also said that that no reasonable juror could find any “probative similarity of expression sufficient to support an inference of actual copying.” 

In other words, Steele had failed to establish a degree of similarity between the works to lead any reasonable jury to infer that copying has occurred.  In fact, the First Circuit went on to say that the differences between the works are “fundamental and extensive,” and the similarities that do exist stem from the works’ common subject matter. 

That’s judicial equivalent of a body slam.  Once a court has told you “no substantial similarity,” it’s time to go home and figure out why you took the case in the first place.  Personally, I would hope that legitimate plaintiffs represented by knowledgeable copyright counsel would call it quits at that point. 

Of course, even if most legitimate plaintiffs and knowledgeable counsel would do that, that still leaves many, many people who will press on.  And in this case? 

I suspect its not over yet.

Jonathan Pink is an intellectual property attorney specializing in copyright and trademark matters.  Resident in the Los Angeles and Orange County offices of Bryan Cave, LLP, he represents clients in film, television, music, design and the visual arts.  He can be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

More About Prince v. Cariou

Quick follow-up on a case I wrote about last week: Prince et al. v. Cariou, case number 11-1197.

That’s the case involving appropriation artist Richard Prince whose work involves creating collages and paintings using other people’s photographs.

Now two photography industry trade groups (the American Society of Media Photographers Inc. and The Picture Archive Council of America Inc.) have filed amicus briefs arguing that the ruling against Mr. Prince should stand. Not surprising as the trade groups represent photographers and image-licensors.

In a nutshell, the groups argue that an overturning of the lower court’s ruling (finding copyright infringement on the basis that the fair-use doctrine not apply to Prince’s use of photographer Patrick Cariou’s images in his work) would harm photographers and those who lawfully license out their images, thus posing a threat to their members’ livelihood.

They also put forth the old saw: our members will stop creating new works. I never buy this argument, and neither will any of you if you are creators yourself. The fact is that artists make art because we are compelled to do so, not because we are paid for it. It comes from the inside out.

Might a reversal by the Second Circuit ruin the photags’ livelihood? I doubt it, but I do agree that they could lose some money.

In an event, and just to even the playing field, a number of notable museums and the Andy Warhol Foundation have filed an amicus briefs on behalf of Prince. The museums argue that a reversal could deter museums from acquiring and displaying important works. Maybe. Or increase their insurance premiums.

The Andy Warhol Foundation also argued that the lower court’s application of the fair-use doctrine could have a chilling effect the creation of new artworks. Really? See my comment above. Forget the “Art World,” it seems everyone here has entered “Hyperbole World.”

In any event, that’s the news for now. Now back to work!

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

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Art as Sport . . . or Sport as Art

If I were to say “college football,” chances are your thoughts would not go to studio art. Likewise — and I’m just guessing here — if I were to say “oil painting,” chances are your thoughts would not go immediately to professional golfing.

After you’ve stopped comparing me to the Amazing Kreskin, I’ll continue. Ready?

Well you may not immediately connect sports with art, but some people do. In a couple of fairly recent instances, you’d refer to these people as “the plaintiffs.” Unless, of course, you were an artist, in which case the “plaintiffs” might refer to you as the “defendant.”

What the heck am I talking about? A couple of cases – one of which has recently reemerged into the public eye — in which artists depicted sporting scenes, and those doing the sporting weren’t very happy about it.

First, in a case dating back to 2005, the University of Alabama sued Birmingham-based artist Daniel Moore based on his depiction of the school’s football team mid-game. Some of his works depict purportedly classic moments in the school’s athletic history, such as “The Goal Line Stand” from the 1979 Sugar Bowl against Penn State.

The University of Alabama brought a claim for trademark infringement, claiming that Moore’s work infringed the school’s marks by depicting its logo and insignia on the player’s uniforms. It claimed that if Moore wanted to depict these marks, he was obligated to obtain and pay for a trademark licensing fee.

Moore maintained he had the same right to depict these images as would a photographer from Sports Illustrated. He asserted that the images he painted were nothing more than anyone in attendance at the game would have witnessed, and claimed that his artistic depiction players in uniform was protected by the First Amendment.

The case went to trial before U.S. District Court Judge Robert Propst in 2009. The ruling was mostly in Moore’s favor. The Court found that Moore’s paintings did not violate the school’s trademark law, but that his sale of those paintings on mugs, T-shirts and other items did infringe.

Moore was apparently pleased with this result. The University of Alabama, however, wanted more. It appealed, and the 11th Circuit Court of Appeals in Atlanta held a hearing on that appeal just last week.

No ruling yet. (Hey, it took three years for a hearing, give these people some time.)

Still, the issue is an interesting one. Is an artist required to secure a licensing agreement before engaging in painting images of athletes on the job?

I’m not even sure how the school felt that this would have infringed their mark. Infringement requires that the infringer use the mark in commerce in connection with his/her goods or services. 15 U.S.C. sections 1112(1), 1125(a)(1). Doesn’t seem it. See WHS Entertainment Ventures v. United Paperworkers Int’l Union, 997 F. Supp. 946 (M.D. Tenn 1998) (use of plaintiff’s protected logo on leaflets distributed by union organizers on and near plaintiff’s restaurant premises was not sufficient to meet statutory requirement).

In addition, there must be a likelihood of consumer confusion, meaning that an appreciable number of ordinarily prudent purchasers are likely to be confused as to the source, sponsorship or affiliation of defendant’s goods or services. Western Pub. Co. v. Rose Art Indus. Inc., 910 F.2d 57, 59 (2d Cir 1990); see also AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 351 (9th Cir. 1979) (setting forth likelihood of confusion factors).

Even if the school could get beyond that, why wouldn’t the use of the team logos in the painting merely fall under the rubric or nominative use? A defendant is permitted to use the plaintiff’s mark to describe the plaintiff’s product. See Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002).

Artist Rick Rush fought a similar trademark infringement claim in 1998. That one was based on Rush’s painting “The Masters of Augusta.” The painting showed Tiger Woods’ (based on his win from the prior year), and a collage of images that included portraits of Ben Hogan, Bobby Jones, Jack Nicklaus, Arnold Palmer and Sam Snead.

Woods was having none of it. His company, ETW Corporation, sued the publisher of Rush’s painting, alleging (among other things) trademark infringement as ETC owned a trademark in Woods’ name (and had rights in his image).

The lower court and the Court of Appeals ruled in favor of Rush, holding that the painting contained expressive content, and that a person’s likeness could not function as a trademark.

What’s the takeaway from all of this? One point may be that greater license will be given the artist where the case turns, at least in part, on the journalistic nature of the works. So portray the team at play, not an individual member.

Of course, that doesn’t entirely explain the result of the Woods case, although I suppose even that had a news-reporting aspect to it: past and present victors? Sometimes even I don’t have the answers. Now if only we could consult the Amazing Kreskin!

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Copyright Protection in Yoga Exercises? Not Likely

I remember when I first heard of Bikram Yoga, the rigidly prescribed sequence of twenty-six postures set to a balmy 105 degrees and 40% humidity:

It was New Year’s day some years ago and we were walking with friends — and kids in strollers — around Balboa Island in Newport Beach. A woman in our group was a recent convert to Bikram Yoga. Most of us (except for my very well read wife) had never heard of it.

After an explanation of this form of hot yoga, a young physician in the group opined that it sounded dangerous.

Conflict came early to Bikram Yoga.

Bikram Yoga is said to be the most popular – certainly the most well known — form of hot yoga. Derived from traditional hatha yoga, it was developed and popularized by Bikram Choudury.

By all accounts he has made a mint off of it. According to Wikipedia, Mr. Chodury’s owns more than 40 Rolls Royces, including cars owned by the Queen Mother and the Beatles (although probably not at the same time). Wikipedia quotes him saying “I’m making – I don’t know – millions of dollars a day, $10 million a month – who knows how much?”

Who knew a yoga franchise could be so profitable? Given that it is, it’s easy to understand why Choudury would want to protect his golden goose by zealously guarding the right to teach the 26 postures in a sauna-like setting.

After first learning of Bikram Yoga, it occasionally reemerged in my periphery. At some point, a year or two later, I received a call from the owner of a yoga studio who described a brewing dispute with Bikram. He (or his lawyers) didn’t want her to offer Bikram-style yoga absent Bikram-authorized training and a Bikram-license.

Hey, this may be meditative, but it’s also business. Someone’s got to pay for Chodury’s watch collection that Wikipedia says is valued at more than $1 million.

When I received the call, I thought you probably can’t use his name (nomitive use likely would not work as a defense), but how can he protect the sequence? Does it constitute choreography, maybe?

I never answered the question. The caller decided she didn’t have the funds or the fortitude for a yoga fight.

Apparently other Bikram disciples were more inclined to go to the yoga-mat on this.

Greg Gumucio is the founder of Yoga to the People, a New York based franchise which offers “Traditional Hot Yoga.” He’s a former student of Chodury. Now he’s the defendant in a copyright infringement lawsuit brought by Chodury based on Gumucio having allegedly taught Bikram’s sequence of twenty-six postures set to 105 degrees (or there about).

Wow, talk about “Time for you to go, Grasshopper.” “Time for me to squish you like a bug, Grasshopper!”

It seems Bikram used the argument that the sequence of 26 was tantamount to choreography, and thus entitled to protection under the Copyright Act.

Section 102(a)(4) of the Copyright Act includes choreographic works as subject matter in which copyright protection subsists. Of course, the Copyright Act only affords protection to a work that is “fixed”, that is, written or recorded on some physical medium. Thus, courts have found protection in a choreographed work where, e.g. the movements were digitized in a video game (Ahn v. Midway Manufacturing, Co., 965 F. Supp. 1134, 1138 (N.D. Ill. 1997); Martha Gram School and Dance Foundation, Inc. v. Martha Gram Center of Contemporary Dance, Inc., 380 F.3d 624, 632 and n. 13 (2d Cir. 2004) (choreographic work may be fixed by being filmed, videotaped or through use of a written system of notation); Horgan v. Macmillan, Inc., 789 F.2d 158, 160, n. 3 (2d Cir. 1986) (same).

Accordingly, Bikram’s argument was that the movements required for the yoga at issue were comparable to a choreographic work thus were protectable under 17 U.S.C. Section 102(a)(4).

Well, the Copyright Office has weighed in on this, and the answer is . . . No.

After conducting a legislative review of the Copyright Act, the Copyright Office determined that exercises, including yoga exercises, are not protected as choreography.

Breath . . . Deeply.

Because the Copyright Office has extensive experience reviewing copyright claims and the authority to interpret the Copyright Act, courts tend to give deference to its decisions. See Batjac Productions Inc. v. GoodTimes Home Video Corp., 160 F.3d 1223, 1230 (9th Cir. 1998) (deferring to Copyright Office’s refusal of registration, stating “the Register has the authority to interpret the copyright laws and [ ] its interpretations are entitled to judicial deference if reasonable”) (citation omitted); Southco, Inc. v. Kanebridge Corp., 390 F.3d 276, 287 (3d Cir. 2004) (“the Copyright Office’s longstanding practice of denying registration to short phrases merits deference”).

I’m not sure what this means to the creators of Jazzercise, Tae Bo or other exercise routines, but this case does seem to add some clarification to the issue of choreography.

By the way, Gumucio is now suing for a recovery of his fees. So exhale . . . at least for now.

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

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Copyright Infringement on the Campaign Trail

It’s not just the “very poor” who are ticked off at Mitt Romney these days. NBC has got a beef with him as well.

Mitt’s got a TV ad out in which he uses a clip from NBC’s Nightly News, circa 1997. The clip shows Tom Brokaw reporting that Newt Gingrich was found guilty of various ethics violations.

The ad carries the banner “Paid for by Romney for President, Inc. Approved by Mitt Romney.”

But it doesn’t say licensed by Mitt Romney or used with permission by Mitt Romney. And it doesn’t say “approved by NBC.”

NBC, it seems, is not pleased about this. It has insisted that Romney remove NBC’s copyrighted material from the ad, or face a claim for copyright infringement.

And that’s not all. NBC is also threatening a claim for false endorsement, false designation of origin under the Lanham Act, and (on behalf of Mr. Brokaw) a claim for misappropriation of name and likeness.

I like NBC. If I had a TV, I’d definitely watch their station. My hat’s off to their legal team.

Mr. Romney might have said “I’m not concerned about the Copyright Act.” Or “I’m not concerned about the very [NBC].” His campaign apparently intends to continue running the ad. They’ve taken the position that their use of the news clip falls within the “fair use” doctrine.

Really?

Let’s review: 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.

Those factors don’t necessarily bode in favor of the Romney campaign. But then again, maybe what it means by “fair use” is that the Gingrich campaign also engaged in copyright infringement!

You see, Gingrich was sued this week by a former member of the band Survivor for his use of the song “Eye of the Tiger” at campaign events.

Opps. Can’t do that? Public performance? Who knew?

So maybe that’s Romney’s “fair use” defense. Of course, that’s really less of “fair use” and more of a “well he did it!”

But if Romney takes that approach, he might also want to pick a couple more wives. 

In any event, it helps to know that the leading contenders for the Republican presidential nomination are well versed in copyright laws.

Hint to Romney and Gingrich: it helps to hire a lawyer before using other people’s work. That is, unless the copyright owners are very poor, in which case, we know what Mitt has to say about that.

Jonathan Pink is a copyright and trademark lawyer in the Los Angeles and Orange County offices of Bryan Cave, LLP. His practice focuses on intellectual property and commercial litigation, including arts and entertainment, technology and Internet-related matters. He cam be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

When is a Book Not a Book?

Interesting new dispute brewing . . . and this on the heels of the CCIA report (see post of 1/30/2012) no less.

The CCIA report talks about the general health of the global entertainment industry. In a nutshell, it says that revenue generated from, and the production of, movies, books and music is far greater than prior – mostly entertainment-industry – reports. Put another way, the CCIA report suggests that the entertainment industry is sort of a hypochondriac, and its moans and groans really do not portend its imminent death.

Or so the report says. I’m a litigator, so naturally a skeptic. Of course, as many of you know, my background is on the creative side, so I’m also a big proponent of making something out of nothing – film, music, art . . . self-serving report.

In any event, let’s go with it now, because I only mention it to talk about ebooks.

Just a little background: ebook technology and the devices themselves have been around since at least the 1990s. It’s just that almost no one had them. They were like the man-purse: just didn’t catch on.

Of course now, they’re ubiquitous. The Nook, the Kindle; I suspect the iPad will serve in this same function by the time I’m finished writing this post.

I read the New York Times (and the LA Times) on my iPhone so it’s not much different.

 Note: we also get the paper edition of the NY Times. It’s just that I’m not supposed to touch it until Andrea’s through with it. So reading it on line allows me to read it when I like, even if she hasn’t finished with it.

Also, reading it on line allows me the opportunity to say something in response when Andrea reads me something aloud from the paper, such as:

Her: (Reading) It’s estimated that the Facebook IPO is valuing the company at $75 billion to $100 . . .

Me: (Nearly quoting from the same article, but tossing it off as if it were my own analysis) Really? Sounds like they’re cashing in on the fuel that powers the engine of Internet commerce: personal data. Why, the company has been busily collecting that data for seven years, compiling the information that its more than 800 million users freely share about themselves and their desires. Facebook’s value will be determined by whether it can leverage this commodity to attract advertisers.

Sometimes it works.

Anyway, back to our story. The CCIA report suggests that while the overall book industry has been relatively stable over many years, the digital books market has been experiencing explosive growth. Some publishers think ebooks will completely replace printed books. Certainly, according to the report, sales revenues for ebooks have now surpassed the $1 billion mark, and that’s expected to triple in coming years.

Now, if you’re a traditional publisher, and you have the right to publish a title in print or in the form of an ebook, perhaps this is all good news. After all, the cost of producing and selling an ebook is considerably less than that of a printed book.

If that’s all there were to this, we could all go on with things more important than reading this blog. But . . . what if the traditional publisher who released the book and built an audience doesn’t have the rights to also publish the work as an ebook

How could this be, you ask? Well, let’s say the work was published forty years ago, and neither the publisher nor the writer ever envisioned such things as an ebook, and thus did not include such technology in their publishing agreement. (Hey, if I were to have told you in 1971 that in 2012 you’d be using your camera as a telephone, and a radio and a compass and a map and . . . well, you get the idea. Who’d of thunk it?)

That’s the situation that gives rise to our lasted tale of woe and litigation.

Direct your attention to: HarperCollins Publishers LLC v. Open Road Integrated Media LLP, (case number 1:11-cv-09499) (SDNY).

HarperCollins is suing to stop Open Road from selling an e-book version of “Julie of the Wolves,” the classic 1972 children’s novel.

HarperCollins alleges that Open Media’s publishing of the ebook version of the book infringes HarperCollins’ copyright because it had a preexisting contract with the works author, Jean Craighead George, granting HarperCollins exclusive rights to publish the book “in book form” (at least in the U.S. and Canada).

So, is an ebook a book? HaperCollins thinks so.

What is a book, anyway? A quick Google defines book (at least the noun form of the word) as “A written or printed work consisting of pages glued or sewn together along one side and bound in covers.” Well that wouldn’t include something on the Kindle, but is that definition too narrow?

That’s what the parties will argue over.

HarperCollins claims that its agreement with the author gives it the right to exploit the work “through computer, computer-stored, mechanical or other electronic means now known or hereafter invented.” Under contract law, that would give them a good argument that the agreement was broad enough to include the technology we currently refer to as an ebook.

However, the case is being litigated in New York, and the Second Circuit has taken a fairly narrow view of similarly expansive language in other literary agreements where ebooks were at issue. But maybe the current, more widespread distribution of ebooks will lead to a different result in this case? It would seem that, as the technology works its way into our lives, the views of the jurists may change. We’ll see.

Certainly, if I were a publisher, I’d want to own the ebook rights to everything I had published in hard copy. Conversely, if I were the author of a successful work, I’d welcome the opportunity to renegotiate the ebook-rights. The issue should be of great importance to both camps (including the estates of the authors who entered into these types of agreements in the past), and a favorable ruling for HarperCollins is certain to trigger additional lawsuits, so stay tuned.

One final question: Who is going to retain electronic publishing rights in the future?

That’s easy: all literary agreements written on a go-forward basis are certain to close this loop hole. Publishers will want to make very clear that “new uses” of old works includes absolutely everything, and that the term “in book form” means something much more expansive than “written or printed work consisting of pages glued or sewn together along one side and bound in covers.”

After all, who knows what things will look like in 40 years? Maybe by then we’ll have telephone shoes.

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

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

The Sky . . . Isn’t Falling?

Well this is interesting, even if some may not want to hear it.

The Computer & Communications Industry Association released a study today entitled “The Sky is Rising,” in which it states that, economically speaking, the entertainment industry grew by 50 percent over the past decade and that consumer spending on entertainment also increased.

I for one am going to more movies again, but I merely attributed this to the fact that my kids are now old enough to watch themselves while Andrea and I catch a flick. In any event, as to doing my part in connection with the economic up tick in the industry, you’re welcome.

A link to the actual report is here: http://www.ccianet.org/CCIA/files/ccLibraryFiles/Filename/000000000586/TheSkyIsRising7-130.pdf .

A brief summary of some of the report’s findings are here:

• Consumer spending on entertainment as a percentage of household income rose 15% between the years of 2000 and 2008;

• Employment in the entertainment industry grew 20% during other last decade, which apparently includes a large group of individuals – nearly half of the total increase — who identify themselves as “independent artists”;

• Box office revenue jumped 25% from 2006 to 2010 (talking round numbers, that’s up $6 billion — from $25.5 billion to $31.8 billion);

• The number movies produced is increasing at a terrific rate: leaping from 5,635 in 2005 to 7,193 in 2009

• The value of the entertainment industry worldwide grew nearly $300 billion between 1998 and 2010, from $449 billion to $745 billion (so nearly $25 B per year); and

• Concert sales in the U.S. went from $1.5 billion to $4.6 billion over the decade from 1999 to 2009. Now that reason to party likes it’s 1999.

As to movies produced, and box office bang, one can only assume that indy films deserve a good deal of credit for this. After all, with the increasing ease with which these films can be made, financed and distributed, many traditional barriers, long faced by film-makers, no longer exist. It’s easier than ever to create a film on a shoestring and actually get it into theaters, or directly into the homes of audience members. This is good news! It means that we’re guaranteed a treasure trove of cinematic gems that never would have seen a screening room 2 decades ago. I can’t see this as anything other than a big win for us all.

But what about the oft-heard dire statements about the death of the entertainment industry at the hands of the Internet? That’s part of what was driving SOPA. Does this mean that Sillywood will not kill Hollywood? Does it mean that Sillywood and Hollywood are on the verge of a new Golden Age, and will wander off, hand-in-hand into the sunset?

Who knows. I for one am encouraged by these figures, but stay tuned. . . .

And in the meantime, stop reading this post and go make a movie, write a film or record a song.

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.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

The Artist Known as Prince . . . Richard Prince

Richard Prince is an artist. At least according to some people. Others have less flattering terms for what he does.

Prince is principally a painter and a photographer. He may be best known for his technique of “appropriating” photographs which he then “rephotographs” to create his works.

One example of this is his work involving photographs from Marlboro cigarette ads of the Marlboro Man. Prince rephotographed these ads (thus incorporating the works of other photographers) to create his pieces, one of which sold at Christie’s in New York for more than $1 million in 2005.

His works have been collected by major institutions, including the Guggenheim.

Shockingly, this practice of “rephotographing” did not sit well with some of photographers whose work appeared in Prince’s pieces. Photographer Patric Cariou is one such photographer.

In December 2008, Cariou filed suit against Prince, the Gagosian Gallery, Lawrence Gagosian and Rizzoli International Publications, asserting copyright infringement in some of the works Prince was showing (and selling) Gagosian’s shop.

Specifically, Cariou alleged that Prince had appropriated 35 of Cariou’s photographs some of which he claimed had barely been changed by Prince. In addition, Cariou alleged that Prince also made more than two dozen paintings that included Cariou’s images.

This is a problem?

Prince argued that his use of the photographs amounted to “fair use.”

As you know, the “fair use” defense is decided on a case-by-case basis. As the Supreme Court noted in its recent ruling in Golan v. Holder (Jan 2012):

[T]he fair use defense, is codified at 17 U. S. C. §107: “[T]he fair use of a copyrighted work, including such use by reproduction in copies . . . , for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” This limitation on exclusivity “allows the public to use not only facts and ideas contained in a copyrighted work, but also [the author’s] expression itself in certain circumstances.” Eldred, 537 U. S., at 219; see id., at 220 (“fair use defense affords considerable latitude for scholarship and comment, . . . even for parody” (internal quotation marks omitted)).

Well, try as he might to sell the “fair use” defense, the District Court didn’t buy it. In March 2011, US District Judge Deborah A. Batts ruled against Prince, Gagosian Gallery, Inc., and Lawrence Gagosian, finding that Prince’s use of Cariou’s photos was not fair use.

Citing to the case of another pop artist, the court pointed to the 1992 Rogers v. Koons case in which infringement was found (and fair use rejected) in another instance of artistic “appropriation.”

So, what’s an artist to do? Why appeal of course!

This is precisely what Prince did, and now, ladies and gentlemen, the briefs are in and we wait for a ruling from the Second Circuit. (Prince et al. v. Cariou, case number 11-1197.)

Cariou is arguing that fair use does not apply because Prince failed to use his photographs in any transformative way. Prince argues that the pieces were sufficiently transformative because they created something new with a different purpose from the original.

Now interestingly, Prince did not simply rephotograph Cariou’s photos. Prince’s work included collaged, enlarged, cropped, tinted or over-painted images which, he did not deny, had been taken from Cariou’s book of photographs “Yes, Rasta.”

However, on the flip side, Prince testified that he “doesn’t really have a message” to communicate when he makes art, and that he not transformed Cariou’s images in any way so as to effectively make a comment about them.

I find this a little surprising. I mean, agree with the defense or not, like the work or not, that seems to be precisely what the artist known as Prince is doing. If the artist himself is not make a statement or a comment or an observation, then why does the work itself have any value? It is like Roy Lichtenstein’s famous “comic book” images: if all he’s doing is copying at random images that are not intended to convey something to the viewer, why bother? Why is it art? Certainly, why pay $1M or more for it?

I would expect that turns out to be a tactical error, both in terms of the litigation and in terms of the value of the work.

I’m not taking sides in this one. Having been raised in and around the visual arts, I’m pretty accepting of a wide spectrum of creativity (even when I think it is ridiculously facile, like the works of Damian Hurst), because I’m in favor of encouraging rather than squelching art, artists, creativity, creative effort, etc. It’s all art to me, it just might be shitty art.

This seems to be the view taken by wider artistic community as well. Various museums and others filed amicus briefs arguing that the district court’s ruling imperils appropriation art generally. Again, appropriation is nothing new. Look at the works of Warhol, Lichtenstein and Jasper Johns as three well respected examples of this. Are we really going to say artists can’t engage in such activity?

I hope not.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. His is resident in the firm’s Los Angeles and Irvine offices. He represents a wide range of artists (including visual artists, performing artists and musical artists), art galleries and collectors.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Batmobile Lawsuit Hits Car Marker – Kapow!

Haven’t written in a while despite some really important rulings on, e.g. finding of personal jurisdiction based on social network activity, but the following has something that even those weighty and intellectually stimulating topics don’t have: Batman.

Cue Batman music. Ok, it was annoying enough then, kill the music (insert sound of needle scraping LP here).

Batman?

Yes, and more particularly, the Batmobile. Quite possibly the coolest car ever invented. Even you Ferrari drivers know it.
Back to our story.

The case is DC Comics v. Mark Towle et al (2:11-cv-03934), before Judge Ronald Lew in the Central District of California.

It seems that a custom carmaker who goes by the name of “Gotham Garage” decided to build replica Batmobiles. Hey, who could blame him? I want one! I like this guy already! Porsche? Who needs a Porsche? I want a Batmobile, too!

(Just a note: Gotham Garage also apparently builds other custom roadsters to look like iconic vehicles from popular TV shows and movies. Thus, if you wanted your ride to be – the beat up old horse drawn wagon from Bonanza, for example – this might be the shop to turn to.)

But alas, not everyone thought his business plan was such a great idea. Enter DC Comics (a hero in their own right, come on, we have to admit it). DC, ahem, owns the copyright to Batman and all his accoutrements. While DC may love the Batmobile as much as the rest of us, they weren’t too hip on Mr. Towle making replicas and selling them to discerning buyers, comme moi.

So they (or was it our Caped Crusaders?) sued. Copyright infringement. And trademark. And trademark counterfeiting. And unfair competition under the Lanham Act, and common law unfair competition. Hey, these guys are not messing around.

The defendant attempted to have the case dismissed on a 12(b)(6) motion (failure to state a claim). A creative argument, he said that useful articles like automobiles are not copyrightable. Judge Lew said no. He sided with the plaintiff which argued that “While automobiles (in their entirety) may be considered useful articles not protected by copyright, defendant’s motion utterly ignores the issue of separability of nonfunctional, artistic elements of plaintiff’s Batmobiles from the underlying vehicle”.

So, point for the Dynamic Duo. The court found the complaint plead sufficient facts, thus allowing it to move forward.

Next Bat-step? Towles will have to answer DC’s allegations that Towles’ full-size, drivable Batmobile replicas — which include both the version from the 60’s TV show (which is the one I want) and the version from the films infringe DC’s rights as the comic book publisher.

I think the time has come for a quote from Rodney King, with a minor addition of my own: “Can’t we all just get along?” And can’t I have one of the Batmobiles after DC takes possession of them? Hey, I was named a Southern California Super Lawyer, but I don’t even have a cape! At the very least, I should get a car!
Stay tuned. Same Bat Channel . . . ok, I’ll spare you that part.

Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He is resident in the Los Angeles and Orange County offices and can be reached at jonathan.pink@bryancave.com. In addition to litigating copyright and trademark issues, he really wants a Batmobile.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.