Tag Archives: Guest Posts

Zediva: The world’s longest extension cord

Originally posted 2012-04-09 16:28:21. Republished by Blog Post Promoter

mdbheadshotfinalThe AP reports that a small California (of course) company thinks it has a brilliant idea, a way to out-Netflix Netflix: Zediva Inc. is going to make available for viewing on subscribers’ Internet devices new movies as soon as they are available on DVD. This is a big deal, because Netflix, for instance, does not do this. Netflix will begin sending physical DVDs of a new movie as soon as the movie comes out on DVD… but the instant viewing option comes later, largely because movie studios want it that way, believing that the ability of consumers to view films instantly at home cuts into DVD sales.

Zediva’s doing something right. But is it wrong?

So just how will Zediva be able to transmit, say, “Yogi Bear” on its March 22, 2012, DVD release date?  Here’s how: Zediva will buy a copy of Yogi Bear on DVD, then play it on a DVD player at its Silicon Valley (of course) headquarters, and send the feed to your home. It’s the equivalent of running a very long cable from Zediva’s DVD player to your television set. Right? Movie studios and lawyers who care about these things say no, it is not. While Zediva asserts that what it is doing (or planning to do imminently) is the equivalent of what Netflix does when it mails out DVDs to subscribers (a scheme permitted by the so-called “first-sale doctrine,” which has allowed libraries to lend books to patrons for hundreds of years), several commentators have already countered that it is more akin to Netflix’s other service, that of streaming.  And a streaming arrangement requires licensing, because streaming isn’t lending a physical copy.  (Some commentators are arguing that streaming somehow inherently infringes on a copyright holder’s exclusive public performance right; I don’t agree.)

I’m going to take a potentially unpopular position here (even though I am by no means required to): I think Zediva’s idea is legal, if not particularly smart. The potential for a system that might well be legitimate to devolve into something entirely outside the law, however, is just too great.  That is, for Zediva to do what it says it will, it must own a separate physical copy of a DVD of a given movie for each subscriber who wants to watch it (at the same time). That means if 100 different subscribers want to watch “Yogi Bear” at the same time, in different locations, then Zediva needs to put 100 different DVDs into 100 different DVD players.  Zediva simply may not cut corners and, for instance, rip the content of a DVD and then send a subscriber or two or a hundred the digital information… just until it can run out and pick up some extra copies of Yogi Bear.  And, of course, Zediva may not rip the content of one DVD and then burn the content onto another hundred DVDs to be in compliance with its own (arguably legal) model. Is Zediva smarter than the average start-up? Maybe. If Zediva keeps its nose clean, it just might have something here. Eh, Boo Boo?

UPDATE:  Zediva:  The lawsuit.

UPDATE II:  Zediva loses; is lost.  But you know this ain’t over!

Tyson tattoo trouble

mdbheadshotfinalThat was close! The release of The Hangover Part II was in danger of being enjoined by a federal judge… but, for better or worse, the Honorable Catherine D. Perry of the U.S. District Court for the Eastern District of Missouri on Tuesday denied the request for a preliminary injunction made by the tattoo artist who in 2003 gave Mike Tyson his… let’s say impressive facial ink.

The tattoo artist, S. Victor Whitmill, has sued Warner Brothers Entertainment, the studio responsible (if that’s the word we want) for The Hangover Part II (and the original The Hangover) for copyright infringement. Specifically, Mr. Whitmill claims that reproduction of the tattoo (that he gave Mike Tyson) on the face of the character in the new movie played by Ed Helms (and also use of Helms’s likeness, with tattoo, on promotional merchandise) infringes upon his, Mr. Whitmill’s, exclusive rights in the work (the tattoo). Mr. Whitmill moved the court to enjoin the release of the movie, scheduled to open nationwide on May 26, the biggest movie-opening weekend of the year.

Nota bene: Unfortunately, while the short form order denying Mr. Whitmill’s motion is available through PACER, the transcript of the bench order is not (as of this writing)… so I’m gleaning some things from the New York Times article that appeared yesterday.

These are the facts one needs to know to understand what’s going on here:

  1. “Iron” Mike Tyson was a boxer, and an especially successful one. In 2003, he got a really cool, really big tattoo on his face. It looks like this.
  2. The Hangover is a movie about three men who have a really, really weird night, followed by a really, really weird day.
  3. One of the characters in The Hangover is a milquetoast dentist. His name is Stu, and he is played by Ed Helms.
  4. Mike Tyson appears in The Hangover, playing himself.
  5. In The Hangover Part II, from what one can see in the trailers and other publicity material, Stu gets a tattoo exactly like the one that Mike Tyson has. Check it out.

The immediately interesting thing about the denial of the motion is that, at least according to the Times summary, Judge Perry—despite finding that Whitmill was likely to succeed in his claim on the merits, because there really can be no question that (a) Whitmill owns the copyright in the tattoo, and (b) Warner Bros. copied it without his permission or the benefit of an exception to Whitmill’s exclusive rights—found that the public interest (one of the factors to be considered on a motion for preliminary injunction) in letting the movie be released outweighed the harm to Mr. Whitmill that might result from denying him the injunction.

As reported by the Times:

“The public interest does favor protecting the thousands of other business people in the country as well as Warner Brothers, and not causing those nonparties to lose money, and I think it would be significant, and I think it would be disruptive,” Judge Perry said from the bench, rather than issuing a written ruling.

“I think that tilts the public interest in favor of Warner Brothers on this because all over the country people would be losing money if I were to enjoin this movie.”

If this writer may offer an opinion: What? Really? Can the release of a movie ever be in the public interest? It’s a movie. I love movies, but… it’s a movie!

Now, Judge Perry does seem to have told everyone involved that, at the end of the day, Whitmill is going to recover from Warner Bros. “Although the intangibles he’s losing can’t be completely known or quantified, there is some amount of money that will come close,” she said.

By the way :  Previous posts about IP rights in tattoos here include one about NBA star Rasheed Wallace’s tat; another post was somewhat further afield but implicated the tattoo version of the Prince symbol-thing.

A note about those intangibles, since Judge Perry mentioned them: Whitmill is claiming not just copyright infringement, but also libel (although that might not be what he means, exactly), because the person from whom the character Stu gets his Tyson tattoo in Part II is a shady character, and Whitmill argues that he might be harmed in his reputation if moviegoers assume that the tattoo artist in the movie shares a personality with the real tattoo artist. This is not a compelling argument, probably… but it is something that might have persuaded Judge Perry to enjoin the film if she had been on the fence. Garden-variety copyright infringement, so to speak, can often be compensated for with just money… whereas harm to one’s reputation often can not be.

But back to the tattoo. Read More…

Where you stand depends on where you sit

I’ve never had a guest post in response to a LIKELIHOOD OF CONFUSION® item before, but that’s only because no one with the stature to respond to something I’ve written here based on personal knowledge of the facts has ever had the nerve to ask for one — not until I entered the rock and roll world of the fascinating Ritchie Fliegler, that is.  Ritchie’s a marketing guy, not a lawyer, so, naturally, he’s not afraid to speak truth to, uh, whatever it is this thing we have here is.Here’s what I would love to be able to say is the first of many replies to a LOC blog post from someone with a different point of view, and in a position to know. — RDC


“Where you stand depends on where you sit” – Nelson Mandela

This is one of my favorite quotes.  Not only does it ring true on so many levels, it’s also easier to understand than Einstein’s theory of relativity, which says basically the same thing —“Two events, simultaneous for some observer, may not be simultaneous for another observer if the observers are in relative motion.”

What does this have to do with trademark law? Not much actually, but it has a lot to do with a spirited and interesting conversation I had recently, with Ron.

Like many of you, my Google alerts are set to tick off on a number of subjects near and dear to me, classic cars, family members, former employers and the like. A few days ago the Google light went off alerting me to a blog post about a former employer, Fender Musical Instruments Corporation (FMIC) and their failed attempt to register trademarks for their famous guitar-body shapes – Strat, Tele and P-Bass. The article was well written, and thoughtful, however, in a vortex of relativity that would do ol’ Albert proud, my blood started to boil at what I perceived as purposeful errors and omissions by an uninformed outsider.

Now, I have been away from FMIC for well over two years, but I still have many dear friends at the place as well as a lingering vested interest… so I sprung in to action and sent a message with a requisite level of rancor. Read More…

Taking the catcher out of the rye

On July first of last year, the Honorable Deborah A. Batts, United States District Judge for the Southern District of New York (hotbed of intellectual property law jurisprudence), granted a preliminary injunction to author J.D. Salinger (and his literary trust) precluding another writer (and his putative publishers and distributors) from publishing and distributing a book that purported to be a sequel-of-sorts to Salinger’s classic The Catcher in the Rye.

[UPDATE:  The Second Circuit bounces Judge Batts. Find the opinion here.  But do read on–and see Matthew’s comment, and others, below for more updates …  And see here for my take on these issues and this case.  – RDC]

To grant Salinger’s motion, Judge Batts had to find: first, that both The Catcher in the Rye, the story, and Holden Caulfield, the story’s fictional protagonist/narrator (or, as I like to say, “protagonarrator,” or “narratagonist”), were protected by copyright law; and, second, that the newcomer’s work was not a parody of these two such that the “fair use” doctrine would permit publication of the new work notwithstanding the exclusive rights given to Salinger by copyright law. Judge Batts’s decision runs to 37 pages. Her Honor’s finding that Holden Caulfield the character is protected by copyright law, separately from The Catcher in the Rye, is stated at the top of page 2, in the introduction to the decision: “[T]he character of Holden Caulfield is sufficiently delineated so that a claim for infringement will lie.” Judge Batts did not need to wrestle long, or at all, with that question.

On January 27 of this year, Jerome David Salinger passed away at age 91. He will not see the outcome of the appeal of Judge Batts’s decision noticed on July 2, 2009.

In 1997, I published (in a journal that soon went defunct) an article exploring the motivations for treating fictional characters (apart from the works in which they appear) as “works” themselves entitled to protection under copyright law and arguing that if we are “extending” copyright protections to characters (which are plainly not typical “works” as contemplated by the law) because readers feel some emotional attachment to characters and want to be assured that the characters we get are the characters we have come to expect—and thus are protecting “consumers” (readers) primarily and producers (authors) only secondarily—then we are using copyright law improperly, making it more like trademark law (which is intended to protect consumers in the first place).

Lawyer and writer–or is it writer and lawyer?–Matthew David Brozik is the co-author of The Government Manual for New Superheroes, The Government Manual for New Wizards, and The Government Manual for New Pirates. Some of Matthew’s short fiction has appeared, appears now, or will appear in/at McSweeney’s Internet Tendency… Popcorn Fiction … the Sycamore Review … Zahir … RE:AL… Awkward … the American Drivel Review… the Armchair Aesthete … Spout Magazine … Sidewalks … the Palo Alto Review…Barbaric Yawp … Cosmopsis Quarterly… The Binnacle … The Stray Branch … and Illya’s Honey, which nominated “Clues” for a Pushcart Prize. He is a formidable author of legal chin strokers as well.  Your regular blogger discussed this topic, in far less depth, here.

That said, being honest with myself, I cannot object to protecting fictional characters that are sufficiently delineated, even if such protection is apparently not contemplated by the black letters of the law. The same goal stated in the Constitution—“To promote the Progress of Science and useful Arts”—is furthered by protecting fictional characters that, notwithstanding not being typical works themselves, otherwise meet the criteria of works. Why shouldn’t Holden Caulfield be protected just as is The Catcher in the Rye?

Read More…