Tag Archives: Fair Use

Google Books settlement takes it on the Chin

Originally posted 2011-03-22 18:22:23. Republished by Blog Post Promoter

I raised questions about the Google Books settlement ages ago.

Now some of them have been answered, and Judge Denny Chin’s answer is “no”:

While the digitization of books and the creation of a universal digital library would benefit many, the [Amended Settlement Agreement] would simply go too far.  It would permit this class action – –  which was brought against defendant Google Inc. (“Google”) to challenge its scanning of books and display of  “snippets” for on-line searching – –   to implement a forward-looking business arrangement that would grant Google significant rights to exploit entire books, without permission of the copyright owners.  Indeed, the ASA would give Google a significant advantage over competitors,rewarding it for engaging in wholesale copying of copyrighted works without permission, while releasing claims well beyondthose presented in the case. . . .

Read More…

Trademarks — and Copyrights — in the Public Interest?

Originally posted 2005-09-26 18:31:09. Republished by Blog Post Promoter

South Brooklyn section of MTA Subway MapWired News reports:

Transit officials in New York and San Francisco have launched a copyright crackdown on a website offering free downloadable subway maps designed to be viewed on the iPod. . . .

More than 9,000 people downloaded the map, which was viewable on either an iPod or an iPod nano, before Bright received a Sept. 14 letter from Lester Freundlich, a senior associate counsel at New York’s Metropolitan Transit Authority, saying that Bright had infringed the MTA’s copyright and that he needed a license to post the map and to authorize others to download it.

Not very freundlich of Lester, was it?

“I removed it promptly,” said Bright, a design director at Nerve.com. “I’m very aware that they are copyright violations, but I’m not trying to make money or do anything malicious. I’m not in this to piss people off.”

Last week Bright received a similar cease-and-desist letter from officials with Bay Area Rapid Transit, or BART, demanding that Bright remove a map of the San Francisco rail system.

I blogged about this topic in general — the assertion of intellectual property rights in arguably public goods such as train-line symbols — in June. My conclusion then:

It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

In other words, if you get a C&D letter from the MTA, give me call, won’t you?

The issue here is not quite the same. It is narrower, and deals only with the copyright in the maps. But in a broader sense, it is the same: Should these public authorities, ostensibly in the business of helping people get around, be more interested in rent seeking than in … helping people get around?

I don’t think so.

UPDATE: Excellent legal analysis, as usual, by Patry.

BUT WAIT, THERE’S MORE:  How did the MTA’s ad department let this past the boys in legal?!

Never trust a hippie?

Woodstock_posterFor years I’ve been kvetching here about the phenomenon of municipal overreach on intellectual property claims, whether it’s catchphrases with no particular geographic association; transit line symbols that do convey meaning but when licensed don’t convey meaningful claims of endorsement or affiliation; skyline features that belong to no one; or municipal seals that the Lanham Act simply says ain’t trademarks.

So when I saw this headline — “Can a town’s name be a trademark?” — I got ready to roll up my sleeves again.  But… no.  This is even more interesting:

Town Board members do not expect to use not-for-profit radio station WIOF as background filler between public access television programs until a trademark dispute is settled that has commercial station WDST claiming foul over use of the town’s name.

Supervisor Jeremy Wilber during a telephone interview Wednesday said the use of “Woodstock 104” by WIOF is being protested by WDST as an infringement on the “Radio Woodstock” and “Woodstock Radio” identifiers. . . .

WDST General Manager Richard Fusco on Friday said station officials have no objections to use of WIOF for the public access channel but believe use of “Woodstock 104” will confuse listeners.

“We’re are not looking in any way, shape or form not have her do it or in any way interfere with what (WIOF Chief Executive Officer Randi Steele) is doing, or in any way want to squelch her project,” he said. “We just saying do whatever you want to do, just don’t infringe on our trademark.”

Radio Woodstock®

Radio Woodstock®

Information provided by WDST shows the station trademarked [sic] the phrases “Radio Woodstock” in 1994 and “Woodstock Radio” in 2002.

Fusco said station officials are hopeful that a court case can be avoided and said there are many options for WIOF to identify itself with Woodstock without use of the town’s name in a tag line or slogan.

“She is perfectly able to say ‘this is hippie radio’ or ‘tie dyed radio’ or what ever name she wants to call it ‘from Woodstock, New York,’” he said. “The geographic location is what she is legally able to use. But associating it as the name of the entity…is an infringement on the trademark.”

Steele contends WDST management is being predatory in efforts to have the phrase discontinued.

“When we submitted the paperwork to the state that was in order to call our radio division ‘Woodstock 104,’” she said.

“You cannot trademark the name of the town,” Steele said. “That’s restraint of trade.”

What we have here is a veritable trademark law festival!  Unlike the Woodstock one, however, this is neither Aquarian, three days long (enough of that!), nor muddy.  But for sure, it’s at least as much fun, and no penicillin will be required afterwards.

Read More…

Best of 2009: The DMCA and the search engine

DMCA 1998Posted on August 6, 2009.

Traverse Legal:

Mary Roach has a great post at CircleID on an area that we have talked about extensively, namely, copyright takedowns under the Digital Millennium Copyright Act.  Mary’s post covers the more specific strategy of sending takedown notices to search engine providers, such as Google, Yahoo, and MSN, to effectively reduce access to stolen creative materials.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

That’s worth checking out.  How does it work?  As Mary writes,

[R]ather than identifying the infringing copyrighted material itself, rights owners must instead identify the search result or directory page which links to a webpage containing the infringing material. For example, this would require providing the keyword or keyword phrase used in a search or directory query, plus the URL(s) which point to the infringing websites in the DMCA complaint.

You can just imagine the bells going off in my head when I read that formulation.

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Best of 2006: Who owns the copyright in scans of public domain works?

Originally posted 2006-05-07 11:39:56. Republished by Blog Post Promoter

First posted on May 7, 2006.

I love Plan59.com. If you’re my age or a little older, almost any click on this smartly designed and comprehensive website can recreate a certain feeling that comes with recalling a much more secure, confident and simple America — kind of like the grown up version of Dick and Jane.

Rockwell copy copy copy

Great metaphor. Probably not great fair use.

I would use the graphics from Plan59.com every day if I could, but I don’t have their permission. On the other hand… whose graphics are they, really? They put it this way:

PLEASE NOTE: The images on this site are embedded with an invisible digital watermark and IPTC metadata. Are you free to scan and market images out of that nifty 1936 Hupmobile brochure you got at the flea market? Yes, if it was published without a copyright, or if the copyright has expired. Is it okay to use the images we’ve made from the same catalog? Ahem, cough. We own the scans we’ve made—they represent a considerable investment in equipment, source materials and labor over the past five years. Every jpeg and gif on this site is copyrighted and marked as belonging to us. Please, no borrowing without getting permission.

10 Years of Bloggy Ok-Ness

10 Years of Bloggy Ok-Ness

Hmm. What they’re saying is that the Hupmobile image is in the public domain, but that they have made a new, derivative work from it by virtue of their “considerable investment in equipment, source materials and labor.” Well, that sounds fair. If they thought they couldn’t protect their work, they probably wouldn’t have gone through the trouble. But does it comport with copyright law?

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War Is Peace; Freedom is Slavery; Ignorance is Strength

Originally posted 2007-03-28 19:08:24. Republished by Blog Post Promoter

And free speech is a form of negotiable intellectual property, right?

Maybe I can give up the blog. There is no percentage in clever commentary when the claimants provide the self-parody.  Credit to Instapundit.

SCOTUS: Likelihood of Confusion Bows to Fair Use

Originally posted 2005-01-03 20:35:00. Republished by Blog Post Promoter

(HEADLINE UPDATED) Tilt of the chapeau to law student Joe Gratz’s blog for reporting this decision from the U.S. Supreme Court that came down a month ago today. Here’s Joe’s summary and an excerpt from KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.:

The Supreme Court held, unsurprisingly and unanimously, that the affirmative defense of trademark fair use does not place a burden on the defendant to prove that his use was not only descriptive, but also unlikely to cause consumer confusion.

Now I’m not sure I agree with Joe’s comment on his blog that Justice Souter said it all so well; I prefer this pithier summary from the official syllabus: “Nor would it make sense to provide an affirmative defense of no confusion plus good faith, when merely rebutting the plaintiff’s case on confusion would entitle the defendant to judgment, good faith or not.”

By the way, want to guess which Circuit Court the Supreme overturned?

Major League Baseball steals from customers

Originally posted 2007-11-07 22:14:24. Republished by Blog Post Promoter

“If You Purchased MLB Game Downloads Before 2006, Your Discs/Files Are Now Useless; MLB Has Stolen Your $$$ And Claims “No Refunds”

Compelling blog post title, no?

So typical of the bloated steroid brains running that business. Yes, guys, you’ll always be able to do just whatever you want to fans, because your product is in unceasingly great demand. Just ask the record companies.

Billed hat tip to TechMeme.

Online use of trademarks and copyrights by “unauthorized distributors”

Originally posted 2007-10-06 20:57:56. Republished by Blog Post Promoter

LIKELIHOOD OF CONFUSION does not generally comment about active cases in which we are directly involved. But a very important and detailed (61 pages!) summary judgment decision came down in the U.S. District Court for the Eastern District of New York last week, in the case of S & L Vitamins, Inc. v. Australian Gold, Inc., 2:05-cv-1217 in which I represent the plaintiff. And while we will not comment on the decision, for obvious reasons, any reader of this blog involved in trademarks and the Internet will want to read it. So here it is. Credit to David Nieporent, co-author on the plaintiff’s brief!

UPDATE: Cogent commentary from Eric Goldman and Matthew Sag; now comes Rebecca Tushnet.

U.S. District of Arizona: “No automatic injunction upon a finding of copyright infringement”

Originally posted 2008-09-05 17:38:37. Republished by Blog Post Promoter

Not that the plaintiffs in the Designer Skin case didn’t get an injunction:  They did (here it is); a narrow one utilizing proposed language by defendants explicitly permitting S&L to use its own photographs of Designer Skin merchandise on its website (see the prior post).  But the Court ruled that they were not entitled to it merely by virtue of proving copyright infringement.  Here’s an excerpt from the opinion, discussing the point:

The parties dispute the law governing the issuance of a permanent injunction in a copyright-infringement case. Relying on MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 520 (9th Cir. 1993), Designer Skin argues that “a permanent injunction [should] be granted in a copyright infringement case when liability has been established and there is a threat of continuing violations.”  Conversely, S & L Vitamins argues that the MAI rule has been overruled by the recent Supreme Court opinion in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), and that the traditional four-factor test reaffirmed by eBay applies.

MAI’s general rule may accurately describe the result of applying the four-factor test to a copyright-infringement case in which liability has been established and there is a threat of continuing violations. Nevertheless, as Judge Wilson persuasively demonstrated in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1209-10 (C.D. Cal. 2007), this general rule, as a rule, is clearly inconsistent with the Supreme Court’s decision in eBay. Thus, for the reasons given by Judge White in Grokster, Designer Skin’s reliance on this pre-eBay rule is unavailing, and the Court will apply the traditional four-factor test. . . .

This is an important holding, making the District of Arizona among the handful of earliest courts to apply the rule of eBay to copyright infringement.  After the jump, you can see how the court did apply it to one particular factor of interest, the need for a plaintiff seeking an injunction to prove irreparable harm.  The court agreed with S&L that past infringement does not lead to a presumption of future infringement. Unfortunately, to our client’s (nominal) detriment, and despite our argument that, seeing as how Designer Skin enunciated no coherent description of harm it suffered by the infringement — and that, in fact, it probably benefited from it — an injunction should not issue, the court found that there was irreparable harm, for reasons best expressed in its own words. Read More…

Fat lady sings: Findings of Facts and Conclusions of Law in Designer Skin v S & L Vitamins

Originally posted 2008-09-05 17:01:27. Republished by Blog Post Promoter

The District of Arizona ruled today in a case we defended through trial and have reported on here extensively.  The decision is here; the minute entry on the electronic docket reads as follows:

FINDINGS OF FACT AND CONCLUSIONS OF LAW – that S & L Vitamins has infringed Designer Skin’s copyrights in the electronic renderings of the 42 products styled [by various brand names] and that Designer Skin is entitled to a permanent injunction enjoining S & L Vitamins from any such future infringement of these copyrights;

FURTHER ORDERED that S & L Vitamins has not infringed Designer Skin’s copyrights in the electronic renderings of the 12 products styled [by various brand names];

FURTHER ORDERED that each party shall bear its own costs in this matter.

Signed by Judge James A Teilborg

No attorneys’ fees for either side.  The injunction reads as follows (per the minute entry); prefatory language is omitted and emphasis is added:

FINAL JUDGMENT AND PERMANENT INJUNCTION in favor of Designer Skin, LLC against S&L Vitamins, Inc. . . . S & L Vitamins . . . are hereby immediately and permanently ENJOINED from publicly displaying, using, copying, or otherwise infringing Designer Skin’s copyrights in these electronic renderings for any purpose whatsoever. Nothing herein, however, shall be construed to enjoin S & L Vitamins from taking, using, or displaying original photographs of the physical Products themselves in connection with S & L Vitamins’ sale of the Products on the internet.

Signed by Judge James A Teilborg

Interested persons may wish to ponder how, and to what extent, the Court addressed the issues framed by the counsel for the respective parties, including identification of what indeed are “Designer Skin’s copyrights in [its] electronic renderings,” by considering the proposed findings and facts and conclusions of law submitted by the plaintiffs, and by the defendants, respectively.

For practitioners interested in the law of injunctions, the most interesting part of the decision concerns the court’s application of the rule in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) that there is no automatic entitlement to an injunction upon a finding of infringement to a copyright infringement case.  We have made a separate post addressing that part of the decision.

S&L’s website is here, by the way.  Buy Designer Skin lotion from S&L!  It’s the way both sides pay their lawyers!

Unilateral copyright law

Originally posted 2006-10-23 23:37:37. Republished by Blog Post Promoter

Eugene Volokh joins the pileon regarding a website that claims to exempt its contents from the liberating effects of the fair use doctrine.  The North Country Gazette, a publication whose editorial fare contains a remarkably high percentage of Terry Schiavo-oriented stories, takes the position that due to this fiat, we cannot excerpt the likes of:

An intoxicated Granville man has been charged with felony criminal mischief for throwing a portable urinal against the wall in a treatment room at the Glens Falls Hospital, destroying sterile equipment.

No, that doesn’t sound right.

But couldn’t the website, if they’d phrased it differently — as a contractual agreement, i.e., a condition precedent to use of the website — theoretically make such a stipulation stick?  Maybe, possibly.  But this heavy-handed approach seems assured to do only one thing:  Generate links to the website.  Which it has.