Intellectual Property Review—Updates and Changes from 2016
Cosponsored by the Intellectual Property Section
Friday, February 17, 2017 9 a.m.–1:30 p.m.
4 General CLE credits INTELLECTUAL PROPERTY REVIEW—UPDATES AND CHANGES FROM 2016
SECTION PLANNERS Anne Koch, Wyse Kadish LLP, Portland Parna Mehrbani, Lane Powell PC, Portland John Rake, Larkins Vacura Kayser LLP, Portland John Russell, Alleman Hall McCoy Russell & Tuttle LLP, Portland Thomas Vesbit, Lorenz & Kopf LLP, Portland
OREGON STATE BAR INTELLECTUAL PROPERTY SECTION EXECUTIVE COMMITTEE John D. Russell, Chair Thomas E. Vesbit, Chair-Elect Anne E. Koch, Past Chair Parna A. Mehrbani, Treasurer Ian D. Gates, Secretary Timothy S. DeJong Scott D. Eads Christopher D. Erickson Kimberly Nicole Fisher Amelia Forsberg Tomas Gomez-Arostegui Andrea Hicks Jasinek Elizabeth Tedesco Milesnick John Cathcart Rake Mark W. Wilson
The materials and forms in this manual are published by the Oregon State Bar exclusively for the use of attorneys. Neither the Oregon State Bar nor the contributors make either express or implied warranties in regard to the use of the materials and/or forms. Each attorney must depend on his or her own knowledge of the law and expertise in the use or modification of these materials.
Copyright © 2017
OREGON STATE BAR 16037 SW Upper Boones Ferry Road P.O. Box 231935 Tigard, OR 97281-1935
Intellectual Property Review—Updates and Changes from 2016 ii TABLE OF CONTENTS
Schedule ...... v
Faculty ...... vii
1. 2016 Patent Law Review—Presentation Slides ...... 1–i — Kevin Ross, Marger Johnson & McCollom PC, Portland, Oregon
2. Trademarks 2–i Michael Heilbronner, IdeaLegal PC, Portland, Oregon — Andrea Jasinek, IdeaLegal PC, Portland, Oregon
3. Copyright Law Review 2017 3–i — Katherine Spelman, Lane Powell PC, Seattle, Washington
4. A Name Worth Fighting For: How Naming a Band Called The Slants Got Me to the Supreme Court 4–i — Simon Tam, The Slants, Portland, Oregon
Intellectual Property Review—Updates and Changes from 2016 iii Intellectual Property Review—Updates and Changes from 2016 iv SCHEDULE
8:00 Registration 9:00 Patent Law Review F 2016 Supreme Court patent decisions F Federal Circuit developments F Post-grant proceedings in the Patent and Trademark Office (PTO) F Patent-related legislation Kevin Ross, Marger Johnson & McCollom PC, Portland 10:00 Trademark Law Review F Federal cases F Trademark Trial and Appeal Board (TTAB) proceedings Michael Heilbronner, IdeaLegal PC, Portland Andrea Jasinek, IdeaLegal PC, Portland 11:00 Break 11:15 Copyright Law Review F 2016 decisions F Copyright Office developments F Pending cases and legislative proposals to watch in 2017 Katherine Spelman, Lane Powell PC, Seattle 12:15 Lunch: “A Name Worth Fighting For: How Naming a Band Called The Slants Got Me to the Supreme Court” Simon Tam, The Slants, Portland 1:30 Adjourn
Intellectual Property Review—Updates and Changes from 2016 v Intellectual Property Review—Updates and Changes from 2016 vi FACULTY
Michael Heilbronner, IdeaLegal PC, Portland. Mr. Heilbronner is president of IdeaLegal, a law firm he founded in 2004 after more than six years as in-house counsel for Adidas. There, he designed and implemented the company’s first comprehensive strategy for protecting its iconic Three-Stripe trademark in North America. Before joining Adidas, he worked as an associate with a prestigious intellectual property group. Mr. Heilbronner also serves as an adjunct professor of law at Lewis and Clark Law School, where he teaches the Advanced Trademark Practice and Strategy course. Andrea Jasinek, IdeaLegal PC, Portland. Ms. Jasinek focuses her practice in the areas of brand protection and enforcement, copyright, e-commerce transactions, and marketing. She began her legal career in the Technology and Intellectual Property group at Stoel Rives LLP, where she worked with clients ranging from Fortune 500 consumer brands to start-up app developers and small wineries. Kevin Ross, Marger Johnson & McCollom PC, Portland. Mr. Ross has experience drafting and prosecuting domestic and international patent applications in reconfigurable computing, digital circuits, video compression, computer memory systems, semiconductor fabrication, gaming systems, accelerometers, medical devices, camera lenses, and Internet business systems, among others. Mr. Ross is a member of the Oregon Patent Law Association and TechAmerica. In addition to his JD, he holds a degree in computer science. He is admitted to practice in Oregon, Washington, and Missouri and before the U.S. Patent and Trademark Office. Katherine Spelman, Lane Powell PC, Seattle. Ms. Spelman focuses her practice on copyright and digital publishing. She advises clients on cutting-edge copyright matters and provides strategic advice, design, and implementation counsel for large, midsized, and startup companies, including those engaging in personal digital devices and wireless technology. Ms. Spelman is a frequent speaker and author on the progress of emerging copyright and digital publishing issues and is a member of the Creative Commons board of directors. Simon Tam, The Slants, Portland. Mr. Tam is an award-winning musician, author, entrepreneur, and social justice activist. He has been a performer, presenter, and keynote at TEDx, SXSW, Comic-Con, the Department of Defense, Stanford University, and over 1,200 other events across North America, Europe, and Asia. He has set a world record by appearing on the TEDx stage 10 times. Mr. Tam is best known as the founder and bassist of The Slants, the world’s first and only all–Asian American dance rock and anti-racism band. He has been fighting a landmark case against the United States Trademark Office, which recently helped expand constitutional rights for marginalized communities. The case is now pending before the Supreme Court.
Intellectual Property Review—Updates and Changes from 2016 vii Intellectual Property Review—Updates and Changes from 2016 viii Chapter 1 2016 Patent Law Review—Presentation Slides
Kevin Ross Marger Johnson & McCollom PC Portland, Oregon Chapter 1—2016 Patent Law Review—Presentation Slides
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Chapter 1—2016 Patent Law Review—Presentation Slides
2016 Patent Law Review
Kevin Ross
Marger Johnson is a …
• Full service Intellectual Property boutique law firm • Patents/Trademarks/Copyrights/Licensing/Enforcement • 9 attorneys, all USPTO registered • Founded in Portland in 1986
• Prior to his current position as a partner at Marger Johnson, Kevin Ross was in-house counsel to a startup, served as a US Patent specialist working in Italy, and began his patent career at a large Seattle boutique IP firm. Before law school Kevin was a computer application programmer.
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Chapter 1—2016 Patent Law Review—Presentation Slides
Plan for the next 55 minutes: Top 10 Issues in Patent Law 2016 • Odds and ends • #10 - Procrastination • #9 - Patent Agent/Client Privilege • Damages • #8 - Design Patent Damages • #7 - Willful Patent Damages (3x) • Bad Supreme Court Patent decision (for background) • Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012) • Alice Corp v. CLS Bank International (2014) • USPTO tries to determine what the Supreme Ct. means • #6 – Constrained by the Courts to follow along • Fed. Cir. tries to determine what the Supreme Ct. means • #5 – Exactly 6 Fed. Circuit cases since the 2014 Alice decision pass difficult test
Plan for the next 55 minutes: Top 10 Issues in Patent Law 2016
• #4 Supreme Court Decisions other than Alice-related • #3 Fed. Cir. decisions other than Alice-related • #2 The Unified Patent plan of Europe • #1 Pending legislation • #0 Post-Grant actions (PGR, IPR, CBM)
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Top issues in Patent law 2016 #10
• Procrastinators – time to celebrate, or time to plan ahead?
• Immersion Corp. v. HTC Corp (Fed. Cir. 2016)
• Does “before” mean “before”?
#10) Immersion Corp v. HTC
35 USC §120 (1952)- Continuation application is valid … “if filed before the patenting or abandonment of or termination of proceedings on the first application”… MPEP §211.01(B) (1961)- … “it is sufficient for the second application to be copending with [the first application] if the second application is filed on the same day or before the patenting of the first application.”
Immersion Corp filed for a line of continuation applications on the same day, then sued HTC on the child patents.
HTC raised an invalidity challenge, as they were not filed “before” the parent applications issued.
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What is the right outcome?
a) The child patents are invalid because they were not filed “before” issuance of the parent.
b) The child patents are valid because of the MPEP guidance.
#9 Patent Agent/Client Privilege
• Is there a privilege in patent litigation related to communications between a patent holder/asserter and the patent agent who helped secure the patents?
• In Re: Queens University at Kingston (Fed. Cir, 2016)
• Writ of Mandamus after a discovery dispute in E.D. Tex.
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Chapter 1—2016 Patent Law Review—Presentation Slides In Re: Queens University at Kingston (Fed. Cir, 2016)
Queens University (CA) generates (US) patents through use of Patent Agent, later sues Samsung.
Samsung requests fact discovery regarding communication between the University and its Patent Agent.
Queens University refuses to produce documents, but produces 3 privilege logs identifying the documents and citing the reason for non-production as “Agent privilege”
What is the right outcome?
a) Patent agent privilege in the context of litigation exists – They don’t need to produce the documents
b) There is no patent agent privilege – Produce the documents
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Chapter 1—2016 Patent Law Review—Presentation Slides Fed Cir. -- Yes, Patent Agent privilege is a thing
Sperry v. Florida (1963) – Patent agents practice law, but the Florida Bar is prohibited from regulating it because it is federally authorized (specifically by Congress).
“Reason and experience compel us to recognize a patent-agent privilege”
Privilege doesn’t necessarily extend to states…
Texas State Court suit over a patent purchase agreement
Patent Agent privilege asserted to 300 emails with patent agent
Ruling – Fed Rules of Evidence allow for making up additional privileges. Texas state rules of evidence do not.
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#8) Damages – Design patents
• Apple v. Samsung mix of utility and design patents, cross suit
• Lots of trials and appeals • Final damages appealed to Supreme Court $399 Million • $399 Million was Samsung’s entire profit in infringing devices
• What’s the proper measurement of damages due to design patent infringement?
Samsung Electronics v. Apple
35 USC §289 - Whoever applies a patented design … to “any article of manufacture” or sells … “any article of manufacture” having the design applied “shall be liable to the owner to the extent of his total profit”…
A jury concluded that Samsung’s total profits of sales of the infringing devices was $399 million
Q: What is an article of manufacture as it relates to a design patent?
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What is the right outcome?
a) An “article of manufacture” is the end-component sold to a consumer for purposes of design patent damages.
b) An “article of manufacture” may be a sub-component of the end-component for purposes of design patent damages.
Status of case
Supreme Court reversed Federal Circuit and remanded to Federal Circuit “for further proceedings consistent with this opinion” – but did not develop a test to determine what is an infringing “article of manufacturer”
Federal Circuit (February 7, 2017) – Remanded to District Court for further proceedings, which may or may not include a new trial for damages.
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#7 Damages – Triple/Treble Damages
• Stryker Corp v. Zimmer, Inc. (2016) • Combined with Halo Electronics Inc. v. Pulse Electronics, Inc. (2016)
• District Court - Jury awarded Stryker $70 Million in lost profits, and found infringement was willful and exceptional, gets treble damages and attorney’s fees • Fed Circuit reverses on exceptional, also removes treble damages based on it’s convoluted “Seagate” test.
• Q: Does Fed Circuit’s “Seagate” test comport with 35 USC § 284?
Stryker Corp v. Zimmer, Inc.
35 USC §284 – If damages are insufficient … “the court may increase the damages up to three times the amount found or assessed.”
Fed. Circuit’s previous “Seagate” test for willfulness: - Objective component: high likelihood that product infringed - Subjective component: patent was known or should have been known
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Stryker Corp v. Zimmer, Inc.
Chief Justice Roberts for a unanimous Court: New Test (Old test is too rigid)
No real test – “In applying this discretion, district courts are ‘to be guided by [the] sound legal principles developed over nearly two centuries of application and interpretation of the Patent Act.’”
Background for Worst Supreme Patent decision ever made
•1st decision sets up the 2nd •1st decision is Mayo v. Prometheus (2012) • At issue is 35 USC § 101, the so-called “Eligible for patenting” statute • Mayo is a diagnostic company affiliated with the Mayo clinic • A drug for autoimmune diseases was discovered, but it was also found that people metabolize the drug at different rates • Mayo secures a patent for a “Goldilocks”claim – if too much metabolite present, reduce the drug dose, if not enough present, increase it.
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Mayo v. Prometheus (2012)
35 USC §101 – “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Notes to 1952 act say “Statutory subject matter should include anything under the sun that is made by man” i.e., an extremely low threshold that excludes only discoveries.
Claim 1: Method of optimizing therapeutic efficiency … comprising: … measuring level of [metabolite] …wherein [metabolite] less than 230 pmol per 8x108 RBC=need to increase … and [metabolite] greater than 400 pmol per 8x108 RBC=need to decrease
Mayo v. Prometheus (2012)
District court - “This claim is just a claim on natural phenomena – the correlation between metabolite levels and efficacy of the treatment. Federal Circuit – “The blood was being “transformed” by the treatment, which is patent eligible (Using an earlier test by the Supreme Court for patent eligibility) US Supreme Court – “Here there is a recitation of a natural law – applying drugs create metabolites, but is there enough of a new APPLICATION of the natural law to make the claim patent eligible? – No.
Problem – Congress said patent eligibility starts with “everything under the sun made by man.” Doesn’t this at least pass that test? 2 other tests to get a patent: 1) Must be first; and 2) Must be different that those that came before
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Chapter 1—2016 Patent Law Review—Presentation Slides Actual Worst Supreme Patent decision ever made
• Alice Corp. vs. CLS Bank International (2014) • Uses same test as Mayo, but applies it to Computer Software • 35 USC § 101 (Eligible for patenting) still main issue • Justices tried to tie Computer Software with same test – “application” • Direct outcome is invalidity of thousands of software patents • All things being equal (but they never are), this will push development of software to Europe and China (IMHO).
Alice v. CLS (2014)
35 USC §101 – “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
Claim 1: Method of exchanging obligations between parties (credit parties and debit parties), … comprising: … creating a shadow credit record and a shadow debt record … get balances for records from institution at start of day … for every transaction involving an exchange, keep debits above the credits … and the supervisory institution working it all out at the end of day
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Alice v. CLS (2014)
Issue – Is “Mitigating settlement risk” (at least this claim) an “abstract idea” Argument for patentability – This claim does not foreclose on the entire idea of mitigating settlement risk, only a very narrow application of it. Argument against patentability – Merely “adding a computer” to a known concept does not make it patent eligible. This was a known concept. Test – 1) Is the claim directed to an abstract idea?; 2) If so, does the claim language add “significantly more” to the idea? Correct Result – “Mitigating settlement risk” (at least this claim) should not be patentable. Wrong reasoning – Court has now included all of the patent tests (a) patent eligible, b) new; and c) non-obvious) into one 101 analysis. This effectively says “non-patentable claims do not contain patentable subject matter”
Alice v. CLS (2014)
Why not use the other statutes as they intended? – Instead of stating “all these elements are already known” the Court applies a very hard to implement test. Language used in the opinion text: – “The function performed by the computer at each step is purely conventional” - “Using a computer to make accounts is a basic function of a computer” - “Each step uses a generic computer to perform generic computer functions” - “That is not enough to transform the abstract idea into a patent-eligible invention.”
“Course/Fine” filter of §101/102/103 trichotomy changes to Course only.
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Fallout
“No US Supreme Court patent case has ever had so large an effect in so short time as Alice v. CLS” USPTO rejections under 35 USC §101 skyrocketed Circuit courts have been very willing to dismiss cases involving computer patents based on patent invalidity (motions on pleadings + summary judgement)
Fallout, cont.
“Supreme Court rulings” … “creat[ed] an unworkable and unpredictable framework for patent matter subject eligibility” Chief Patent Counsel, IBM” “My wish for 2017” is that “the Supreme Court snaps out of it. Their decisions on patent subject matter eligibility are providing little guidance and harming innovation in the United States” Bob Stoll, Former commissioner for patents.
The Alice decision, along with others – “have had a profound adverse effect on the economy by substantially eroding patent rights,” … “harming competition and efficient markets and promoting monopoly power by market incumbents.”
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Chapter 1—2016 Patent Law Review—Presentation Slides #6) USPTO tries to implement Alice decision
• 2014 interim guidance on patent subject matter eligibility • Introduces famous 2-part test (having 3 parts) • 6 Examples • 2015 Update • Same 3/2 part test • Many more examples provided • 2016 Update, part 1 • Memorandum to examiners • More examples • 2016 Update, part 2 • Examples of patentable business methods
#6) USPTO 2-part (3 part) test:
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#6) USPTO 2-part (3 part) test:
#6) USPTO 2-part (3 part) test:
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Chapter 1—2016 Patent Law Review—Presentation Slides #5) Federal Circuit cases since Alice Case Year Abstract idea? (2A) Signific. More? (2B) DDR Holdings v. Hotels.com 2014 No N/A
Enfish LLC v. Microsoft Corp 2016 No N/A
Bascom Global v. AT&T Mobility 2016 Yes Yes
McRO, inc. v. Bandai Namco 2016 No N/A Games Amdocs Limited v. Openet Telecom 2016 N/A Yes
Trading Techologies Intl. v GQG 2017 No Yes – just to be sure
Back to #6) USPTO 2016 update
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Back to #6) USPTO 2016 update
Statistics on Computer Software inventions since Alice
District courts – 217 of 349 patents found invalid – 62.2%
Federal Circuit – 65 of 72 patents found invalid – 90.3%
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Computer Software Patents Summary
Very difficult to get patents to Computer Software
Very difficult to keep patents to Computer Software
Only a few think it will lead to mass economic breakdown.
I believe it will push some development to Europe and far east (who still protect computer software by patent)
IP Owners proposal (2017)
Amend §101:
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#4 Supreme Court decisions other than Alice and Design patent damages
• Cuozzo
• Affirmed USPTO’s actions in Inter Partes Review
#4) Cuozzo Speed Technologies v. Lee
Inter Partes Review - New Post-Grant procedure in the USPTO that allows a party to challenge the validity of an issued patent. The statute says the Board’s decision whether to institute an IPR is final an not appealable.
Q1) Can the reviewing Board review claims not challenged? A1) Yes, even though only claim 17 was challenged, the Board can review claims 10, 14 and 17. Q2) Is the Board using the correct interpretation of Claim language during the proceedings? A2) Yes the USPTO is free to use– “Broadest Reasonable Interpretation”, rather than “ordinary meaning”, which is what a court would default to. It’s a “review” of whether the patent should have been granted, so USPTO can use its own standard.
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Chapter 1—2016 Patent Law Review—Presentation Slides #3) 2016 Federal Circuit decisions-other than Alice a) Ethicon Endo-Surgery Inc. v. Covidien (Fed. Cir. 2016) a) IPR specifics b) In re: TC Heartland (Fed. Cir. 2016) a) Venue c) Merck & Cie v. Watson Laboratories (Fed. Cir. 2016) a) 102 “on sale bar” d) Rosebud LMS v. Adobe systems (Fed Cir. 2016) a) “actual” patent notice for pre-issuance damages e) Lexmark Intl. v. Impression Products Inc (Fed .Cir. 2016, en banc) a) Patent exhaustion
#2) Unified European Patent
• Currently, a patent application can be applied for through individual European countries, or through the European Patent Office (EPO) • When the EPO grants the application, it must be “nationalized” in particular countries. • No single patent currently covers all of Europe
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#2) European Unified Patent
One single patent to cover all of Europe Literally has been on the drawing board for > 30 years Will officially use Google machine translations for patents, except where asserted, in which case manual translations will be performed To go into effect, the agreement for the Unified Patent must be ratified by UK, France, and Germany, and at least 10 other EU countries. France has ratified, plus 11 countries. UK is close to ratification, despite Brexit, and Germany is on target to ratify in Spring, 2017. If it goes into effect, it could be inexpensive to broadly cover Europe by patent. Includes a Unified Patent Court to deal with enforcement.
#1) Pending Legislation
Senate Bill S.2733 – VENUE – “Venue Equity and Non-Uniformity Elimination” Act of 2016
• Senate Bill 1137 – Specificity in patent infringement pleadings
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#1) Senate Bill S.2733 - Venue
Top US Courts for Patent Disputes 2016 1800 1684
1600
1400
1200
1000
800 # of# Cases filed 600 456 400 284 247 217 190 200 151 102 94 10 0 E.D. Tex D. Del C.D. Cal N.D. Ill N.D. Cal D.N.J S.D. Fla S.D.N.Y S.C. Cal E.D. Cal District Court
#1) Senate Bill 1137
Introduces special Pleading Requirements for claims of patent infringement: - ID of each patent - ID of each claim allegedly infringed - For each claim, an ID of each accused ‘process, machine, manufacture, or composition of matter’ alleged to infringe the claim (the accused instrumentality) - For each ‘accused instrumentality’ - Name or model number; and description of the elements alleged to infringe and how they infringe
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#0) IPR – PGR - CBM
IPR – Inter Partes Review
PGR – Post Grant Review
CBM – Covered Business Method
#0) Brief Background
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#0) Statistics on IPR/PGR/CBM 2016
Top Filers of IPRs:
#0) Statistics on IPR/PGR/CBM 2016
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#0) Statistics on IPR/PGR/CBM 2016
Both Apple and Samsung changing tactics:
Follow up questions:
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Intellectual Property Review—Updates and Changes from 2016 1–28 Chapter 2 Trademarks
Michael Heilbronner IdeaLegal PC Portland, Oregon
Andrea Jasinek IdeaLegal PC Portland, Oregon
Contents 1. Extraterritoriality of U.S. Trademark Rights ...... 2–1 2. Consent Agreements 2–2 3. Cannabis ...... 2–3 4. Surnames ...... 2–3 5. Ownership of Marks 2–5 6. Failure to Function as a Trademark ...... 2–6 7. Recovery of Attorney Fees ...... 2–6 8. Use in Commerce ...... 2–7 9. Nominative Fair Use 2–7 10. Disparagement 2–8 Chapter 2—Trademarks
Intellectual Property Review—Updates and Changes from 2016 2–ii
Chapter 2—Trademarks
In 2016, courts and the U.S. Patent and Trademark Office’s Trademark Trial & Appeal Board (the “Board”) tackled several impactful trademark issues, which we have organized into 10 categories.
1. Extraterritoriality of U.S. trademark rights Trader Joe’s Company v. Hallatt, 835 F.3d 960 (9th Cir. 2016) This case answered the question of when it is permissible for a U.S. company to sue a foreign defendant for trademark infringement. Trader Joe’s alleged that Hallatt violated its U.S. trademark rights by purchasing “Trader Joe’s” products in the U.S. and selling them in Vancouver, Canada at a store called “Pirate Joe’s” that mimicked the look and feel of a Trader Joe’s store. Typically, trademark rights are territorial by country and cross-border enforcement is not permitted absent a registration in the country of the alleged infringement (or unregistered, use-based rights for the small minority of common law countries). However, some U.S. courts have applied the federal Lanham Act to allegedly infringing conduct outside the U.S. if: (1) the alleged violations create some effect on American foreign commerce; (2) the effect is sufficiently great to present a cognizable injury to the plaintiffs under the Lanham Act; and (3) the interests of and links to American foreign commerce are sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial authority. Here, the federal district court dismissed Trader Joe’s Lanham Act claims, holding that the court lacked subject matter jurisdiction over Hallatt’s conduct in Canada. The Ninth Circuit reversed, finding that the Lanham Act can reach extraterritorially. The Ninth Circuit found that Trader Joe’s complaint sufficiently alleged that Hallatt’s activities harmed Trader Joe’s reputation in the United States. Likewise, Trader Joe’s sufficiently alleged that this reputational harm combined with Hallatt’s sourcing products in the U.S. affect U.S. commerce and injures Trader Joe’s. Additionally, Trader Joe’s alleged that Hallatt’s conduct is likely to mislead Canadian residents and is intended to “tread[ ] on Trader Joe’s’ goodwill and pirate[ ] Trader Joe’s intellectual property.” (*974) This justified the assertion of U.S. law, and the Ninth Circuit remanded the case to the district court to determine the merits of the case. Belmora v. Bayer, 819 F.3d 697 (4th Cir. 2016) In this case, the Fourth Circuit held that ownership of U.S. trademark rights is not “a condition precedent” to asserting Lanham Act under Sections 43(a) (false association/advertising) and 14 (cancellation of federal registration). Belmora has filed a Petition for a Writ of Certiorari with the Supreme Court, seeking resolution of a split among the circuit courts on this issue. Bayer owns a Mexican trademark registration for the mark FLANAX and has sold ibuprofen in Mexico (not the U.S.) under the mark since the 1970s. In 2004, Belmora began selling FLANAX-branded ibuprofen in the United States. Bayer alleged that Belmora intentionally marketed its product to Mexican-American consumers and suggested falsely that Belmora’s products originated from the Mexican source these U.S. consumers were already familiar with. After years of litigation before the Board and federal district court, Belmora prevailed and the district court dismissed Bayer’s claims on the ground that, absent its own trademark rights in the U.S., Bayer lacked legal standing to challenge Belmora’s domestic use of FLANAX. The Fourth Circuit reversed, finding that the Lanham Act does not require a plaintiff to own a federal registration or use the mark in the U.S. to maintain a false association/advertising claim. The court held
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Chapter 2—Trademarks
that Bayer had to show that Belmora’s acts were (1) within the Lanham Act’s “protected zone of interests;” and (2) likely to damage Bayer economically or reputationally. Bayer allegedthat it lost sales to Mexican consumers near the border, who would instead purchase the products in the U.S. mistakenly thinking they were Bayer’s. 2. Consent agreements In re Bay State Brewing Company, Inc., 117 USPQ2d 1958 (TTAB 2016).
Companies often enter agreements called “consent agreements” in which two companies agree to each other’s use and registration of a mark subject to specified restrictions intended to avoid a likelihood of confusion. Such provisions typically include restrictions on trade channels, appearance of how the marks are displayed, limitations on the scope of goods/services, geographic limitations, and conditions for other circumstances of trademark use. A primary reason for entering into a consent agreement is to overcome an objection to registration by a USPTO Examining Attorney.
A properly drafted consent agreement usually weighs heavily against a finding of a likelihood of confusion. However, in this case, the Board affirmed a Section 2(d) refusal for the mark TIME TRAVELER BLONDE for “beer” (BLONDE disclaimed), based on the registered mark TIME TRAVELER for “beer, ale and lager,” despite a consent agreement delineating the parties’ respective uses of the marks. The Board rejected any per se rule that consent agreements “always tip the balance to finding no likelihood of confusion.”
The consent agreement restricted Bay State’s use of its mark to New England and New York; required each party to use its house mark; required Bay State to display the term BLONDE at least as prominently as the term TIME TRAVELER; and prohibited each company from using confusingly similar labels and packaging.
Because the goods are identical and the marks are nearly identical, the Board found that the requirements of the consent agreement were insufficient to avoid a likelihood of confusion. First, the geographic restriction on Bay State did not have a corresponding provision preventing the other party from selling beer in New England and New York, so the territories would likely overlap. Second, the Board found that “that the addition of house marks to these virtually identical marks used on identical goods does not necessarily mean that purchasers are not likely to be confused.” Third, because the application/registration for each mark was in “standard character” format, the marks as registered would not be limited to a particular design or style and “therefore could be displayed in the same font and size.” Finally, merely requiring the owners to avoid each other’s trade dress was insufficient to avoid confusion because they could each use “minimal trade dress and smaller font displays of the house mark.”
Other factors weighing against the consent agreement being sufficient to avoid a likelihood of confusion included:
• There was no verifiable proof of the parties’ coexistence in the marketplace without confusion.
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• Consumers often ask for beer verbally, “sight unseen, with no opportunity for any actual labelling differences that may be used to assure consumers they have obtained what they asked for in a bar or restaurant.”
3. Cannabis The USPTO rejects registration applications covering goods/services that violate the federal Controlled Substances Act (“CSA”). To avoid an objection, applicants in the cannabis industry often attempt to identify the good/services without reference to cannabis or argue that their goods/services are sold only in states where cannabis is legal. Two precedential Board decisions from 2016 demonstrate the limitations on these arguments.
In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016)
The applicant sought to register HERBAL ACCESS for “retail store services featuring herbs.” Even though the claimed services are lawful on their face, applicant’s specimen of use included images of the green cross that identifies cannabis businesses. Also, the USPTO Examining Attorney gathered evidence from applicant’s website showing that applicant uses the mark with marijuana: Applicant’s website (which was not the specimen of use) includes the statement, “Call or stop by today and find out why people consider our marijuana to be the best of the best!” The Board held that “the identification of services contemplates the services that the Applicant is engaged in, in violation of the CSA, so there is no need to speculate on whether there is unlawful use. The mere fact that lawful use is also contemplated by the identification does not aid Applicant’s cause.” The Board also rejected applicant’s argument that the goods are sold only in states that have legalized marijuana, holding that “the fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.”
In re JJ206, LLC, dba JuJu Joints, 120 USPQ2d 1568 (TTAB 2016)
The Board affirmed the rejection of two intent-to-use applications for POWERED BY JUJU and JUJU JOINTS for “smokeless marijuana or cannabis vaporizer apparatus.” Applicant argued that the goods are sold only in states where marijuana is legal. However, the Board cited Brown and held that “where the identified goods are illegal under the CSA, the applicant cannot use its mark in lawful commerce, and it is a legal impossibility for the applicant to have the requisite bona fide intent to use the mark.” Applicant pointed to the Department of Justice's “Cole Memo,” which sets out government priorities in the federal enforcement of the CSA against marijuana-related conduct, but the Board asserted that the Cole Memo “does not and cannot override the CSA.”
4. Surnames Marks that are “primarily merely a surname” are barred from registration under Section 2(e)(4) of the Lanham Act.
In three precedential 2016 decisions, the Board signaled a shift in its treatment of surnames, focusing on heavily consumer perception rather than mechanically applying the traditional multi-factor test. Since 1995, the Board has considered five factors when determining whether a mark is primarily merely a surname: (1) the degree of a surname’s rareness; (2) whether anyone connected with applicant has that
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surname; (3) whether the term has any recognized meaning other than that of a surname; (4) whether the term has the “structure and pronunciation” of a surname; and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression. These are known as the “Benthin factors” from In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995).
Before the trio of cases discussed below, the Board heavily weighed the rareness of a surname in making its determination, and the mere fact of rareness often was sufficient to overcome the objection.
In re Eximius Coffee, LLC, 120 USPQ 2d 1276 (TTAB 2016)
The Board refused registration of the mark ALDECOA, despite the fact that U.S. Census data showed only 233 people with the surname. Instead, the Board focused on the facts that “ALDECOA identifies individuals who have been continuously involved in the business” and that ALDECOA does not have any other recognized meaning except as a surname.
In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016)
The Board refused registration of BARR GROUP, finding it primarily merely a surname. Applicant's website (submitted as the specimen of use) referred to Michael Barr as co-founder and Chief Technology Officer of BARR GROUP, and it allowed website visitors to sign up for newsletters from Mr. Barr in the field of computer firmware. The Board held that, “Mr. Barr is not a historical figure who founded Applicant in the distant past and of whom the public may not be aware. To the contrary, the record evidence establishes that Mr. Barr is an active participant in Applicant’s activities under its mark, and that consumers are exposed to his name in several locations on Applicant’s website such that consumers are likely to view BARR, as it appears in Applicant’s mark, as a surname.”
In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH, 120 USPQ2d 1717 (TTAB 2016)
The Board refused registration of the mark ADLON, despite evidence indicating that only 75 individuals in the United States have the surname ADLON. The Board rejected a rigid application of the Benthin factors and instead focused on consumer perception of the mark, stating, “there is no requirement that the Examining Attorney demonstrate that the surname is not rare. The issue to be determined under the statute is whether the public would perceive the surname significance as the proposed mark’s primary significance, not whether the surname is rarely encountered.”
The Board found that consumers would perceive ADLON as a surname because one of the people sharing the surname ADLON is actor Pamela Adlon who “achieved a substantial degree of public recognition” for her roles on TV shows. Additionally, the term ADLON has no other meaning than as a surname.
In dissent, Judge Quinn argued that the extreme rareness of a surname should be a threshold factor in determining whether a mark is primarily merely a surname. He opined that “consumers would not think of the extremely rare surname ADLON primarily merely as a surname because they are highly unlikely to have encountered it as such, but rather would regard the term as being a coined term or unknown term with an unknown meaning.”
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5. Ownership of marks Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413 (TTAB 2016)
This is technically an abandonment case in which the Board cancelled a registration for the mark NOBLE HOUSE (for furniture) due to abandonment by the registrant Floorco. As explained below, despite the narrow facts, the case has important implications for identifying the correct owner of a trademark.
A mark is abandoned if a party discontinues use with an intent not to resume use. Here, registrant Floorco admitted that sales of NOBLE HOUSE furniture had ceased due to lack of demand, but it argued that NOBLE HOUSE furniture was still being actively marketed. According the to the Board, “nonuse due to lack of demand may not constitute abandonment if the trademark owner continues its marketing efforts.”
Floorco submitted a variety of evidence demonstrating ongoing marketing of NOBLE HOUSE furniture, that, in a normal abandonment case, might have been sufficient to avoid cancellation by abandonment.
However, the Board did not reach that issue and, instead, found abandonment due to a technical but important ownership problem that involved Floorco’s status as a subsidiary of parent company Furnco. In short, the Board held that registrant Floorco could not rely on the ongoing marketing of NOBLE HOUSE furniture to avoid abandonment because parent Furnco (not subsidiary/registrant Floorco) conducted all of the marketing activities that could have been the basis to overcome the abandonment claim.
Confusion about the legal owner of a mark can arise when a third party uses the mark with permission of the mark owner, and the mark owner does not otherwise use the mark. This arises most often in licensor/licensee, parent/subsidiary, and other relationships where the registrant controls a third party’s use. The USPTO’s regulations refer to these as “related company” situations. A “related company” is “any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.” TMEP § 1201.03.
When use is by a related company, the party that controls the use is the legal owner of the mark. For example, a licensor that properly controls a licensee’s use is the owner of the licensed mark even if the licensor doesn’t itself use the mark. Similarly, “the inherent nature of the parent’s overall control over the affairs of a subsidiary will be sufficient to presume that the parent is adequately exercising control over the nature and quality of goods and services sold by the subsidiary under a mark owned by the parent, without the need for a license or other agreement.” Noble House Home Furnishings, 118 USPQ2d 1413.
As noted, in Noble House, the marketing activities might have been sufficient to avoid the abandonment claim if Floorco (the registrant and subsidiary) was the entity marketing NOBLE HOUSE furniture. Instead, the Board found that its parent entity Furnco controlled the nature and quality of NOBLE HOUSE brand furniture and was therefore deemed the actual owner of the mark under the related company doctrine. For this reason, the mark was abandoned by registrant Floorco.
Importantly, an independent cancellation ground might have applied in this case but for a pleading omission by the Petitioner. A trademark application or resulting registration is void ab initio (from the
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beginning) if it is owned by anyone other than the legal owner of the mark. That may have happened here, but Petitioner did not plead this ground before trial. Rather, in a post-trial motion, Petitioner attempted to add this ground for cancellation, arguing it was tried by consent. The Board disagreed and refused to add the separate ground for cancellation, and, therefore, never ruled on the issue.
6. Failure to function as a trademark D.C. One Wholesaler, Inc. v. Jonathan E. Chien, 120 USPQ2d 1710 (TTAB 2016)
Trademarks identify the source of a product or service. In contrast, terms, phrases, and slogans that are merely informational or ornamental do not function as a trademark, particularly when used by multiple sellers. The critical issue is determining how the designation will be perceived by the relevant public.
In this case, the Board found that the phrase “I ♥ DC” on clothing and other merchandise does not function as a trademark because of its ubiquity as merely “an expression of enthusiasm.” The evidence showed that many sellers used “I ♥ DC” on various products and that consumers purchase such products to express support or affinity for Washington, DC. Consumers do not associate the phrase with a single source of goods. Rather, the evidence suggested that consumers did not care where the products originated and purchased them instead for the “I ♥ DC” message itself.
Interestingly, the situation is drastically different in New York, where the State of New York (via the New York State Department of Economic Development) has for many years claimed that I ♥ NY is a trademark of the State. There is even a website devoted to brand licensing opportunities for I ♥ NY: https://www.iloveny.com/licensee-info/#.WJJrkBkrIuV, and the State of New York aggressively enforces rights in its alleged mark. The Board’s decision in D.C. One Wholesaler has raised questions about the validity of the State of New York’s trademark ownership claim in I ♥ NY.
7. Recovery of attorney fees SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., 839 F.3d 1179 (9th Cir. 2016)
Traditionally, it has been difficult for a prevailing party to recover attorneys’ fees in trademark cases. In this case, the Ninth Circuit apparently eased the prevailing party’s ability to recover fee awards.
Section 35 of the Lanham Act permits the prevailing party to seek an award of its attorneys’ fees in “exceptional cases,” at the discretion of the court. Before SunEarth, the Ninth Circuit applied the “exceptional case” standard narrowly by requiring a prevailing plaintiff to prove the infringement was “malicious, fraudulent, deliberate or willful” for the case to qualify as “exceptional.” The Ninth Circuit’s standard was similarly high for prevailing defendants.
A potential shift in the criteria for an “exceptional case” was triggered by the Supreme Court’s 2014 opinion in a patent case, Octane Fitness, LLC v. ICON Health & Fitness, Inc., which relaxed the “exceptional” standard in the Patent Act’s analogous fee-shifting provision. Under Octane Fitness, “an ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” Octane Fitness, 134 S. Ct. at 1756.
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After Octane Fitness, practitioners and commentators predicted that courts would adopt the relaxed standard for trademark cases. That is what has happened, and in SunEarth, the Ninth Circuit joined other circuits in analyzing trademark fee awards under Octane Fitness. The Ninth Circuit directed district courts analyzing fee requests under the Lanham Act to examine “the totality of the circumstances to determine if the case was exceptional, exercising equitable discretion and using a preponderance of the evidence standard.” Although the Supreme Court cautioned that litigants should not expect awards of attorneys’ fees to become “an ordinary thing,” Octane Fitness, 134 S. Ct. at 1753 n.1, the burden for proof of an “exceptional case” has been lowered.
8. Use in commerce Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016)
In this case, the Federal Circuit reversed the Board’s decision, ruling that the sale of two hats at a Church bookstore to an out-of-state resident was sufficient to satisfy the “in commerce” requirement for trademark registration applications.
Lanham Act Section 1(a) provides for registration of a mark “used in commerce.” According to the Federal Circuit, “the definition of commerce in the Lanham Act means exactly what the statute says, i.e. ‘all commerce which may lawfully be regulated by Congress.’” (citations omitted).
Despite the de minimus nature of a two-hat transaction, the Federal Circuit held that Congress can lawfully regulate the sale of hats to an out-of-state resident, stating that the sale of even a small number of goods to an out-of-state resident “falls comfortably within the bounds” of the Commerce Clause of the U.S. Constitution because “[t]his transaction, taken in the aggregate, would cause a substantial effect on interstate commerce.”
Importantly, the Church did not ship the hats across state lines, which would have clearly been an interstate transaction that met the “in commerce” threshold. Adidas argued that such an interstate transaction was necessary given the small quantity of goods sold. The Federal Circuit disagreed, stating, “Because one need not direct goods across state lines for Congress to regulate the activity under the Commerce Clause, there is likewise no such per se condition for satisfying the Lanham Act’s “use in commerce” requirement.” (citations omitted).
9. Nominative fair use Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC, 823 F.3d 153 (2d Cir. 2016).
The nominative fair use doctrine allows a non-trademark owner to use the trademark owner’s mark for the purpose of referencing the trademark owner. For example, an independent auto repair shop may advertise that it fixes Volkswagens. The Lanham Act lacks a statutory framework for this practice, and the courts have approached the issue with varying multi-factor tests.
The Ninth Circuit created the first nominative fair use test 25 years ago:
First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary
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to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
New Kids on the Block v. News Am. Publ'g Inc., 971 F.2d 302, 308 (9th Cir.1992). The Ninth Circuit also held that the, in nominative fair use cases, the new test should replace the traditional multi-factor likelihood of consumer confusion test.
Some courts followed the Ninth Circuit and adopted the New Kids test, while others modified it. For example, the Third Circuit created a modified set of the likelihood of confusion factors and found nominative fair use to be an affirmative defense. Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211 (3d Cir. 2005). The Fifth Circuit adopted 2 of 3 of the New Kids factors and held that the test was a supplement to (not a replacement of) the traditional likelihood of confusion test. Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 489 (5th Cir. 2008).
In 2016, the Second Circuit took its own approach and widened the circuit split for nominative fair use by adopting its own test that rejects aspects of the New Kids test:
(1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and (3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services.
Int'l Info. Sys. Sec. Certification Consortium, Inc., 823 F.3d at 168. The Second Circuit also held that these three factors are to be considered in addition to the traditional factors for likelihood of confusion, although the Second Circuit held that the factors set forth in New Kids and Century 21 re relevant when evaluating nominative use
The party that lost the Second Circuit case appealed to the U.S. Supreme Court, which denied certiorari on January 9, 2017, so the circuit split on this issue remains.
10. Disparagement In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (argued before the U.S. Supreme Court on January 18, 2017)
Although technically a 2015 decision (issued on December 22, 2015), the Federal Circuit’s en banc decision in In re Tam received significant attention in 2016 from practitioners and scholars, and it was the subject of a bevy of 2016 Supreme Court briefs concerning the constitutional issues.
The Tam case involved the USPTO’s refusal to register the mark THE SLANTS, which was used as the name for an “Asian-American dance-rock band” because the term was disparaging to people of Asian descent in violation of Section 2(a) of the Lanham Act. Section 2(a) bars registrations of a mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or
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falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”
Applying “unconstitutional condition” analysis, the en banc majority disagreed with the original three- judge panel and held that a federal registration is an important benefit that cannot be denied because of the expressive content of the mark. The majority ruled that the “content based regulation” could not be justified on the grounds that trademarks are commercial speech.
In its current posture before the Supreme Court, In re Tam is a First Amendment case, and the impact of the Supreme Court decision could apply more broadly to advertising and other non-trademark forms of speech. The Supreme Court will determine whether the disparagement bar in Section 2(a) is a content or viewpoint based restriction on speech that is subject to strict judicial scrutiny. The Supreme Court will also determine whether the disparagement bar unduly burdens a protected activity (the right to free speech) or merely and constitutionally defines eligibility for an optional federal program without burdening First Amendment rights.
The questions arise because, while federal registrations afford important rights and protections to registrants, they are not required to use, own, and enforce trademark rights. The Federal Circuit found, however, that registration affords important and speech-related benefits, including:
• the “exclusive nationwide use of that mark where there was no prior use by others,”
• presumed validity of the mark,
• potential incontestability of the mark under Section 15 of the Lanham Act.,
• Customs & Border Protection assistance in enforcing marks against counterfeit goods, and
• availability of the Madrid Protocol process for registering marks
The en banc Federal Circuit also raised concerns that marks barred from registration under §2 are also unenforceable and not entitled to common law protection. In re Tam, 808 F.3d at 1344 (stating that “it is unclear whether Mr. Tam could actually enforce any common law rights to a disparaging mark”).
For now, the USPTO continues to apply the Section 2(a) bars to new applications, but the USPTO is suspending applications for marks that the examiner deems to be scandalous, immoral and disparaging pending the Supreme Court decision.
The en banc Federal Circuit found that the Lanham Act’s restrictions that are rooted in preventing deception are permissible because they further the goals of trademark law. Some scholars and commentators are concerned that a broad Supreme Court ruling could jeopardize portions of the Lanham Act that regulate speech but do not serve the purpose of preventing deception.
Some of the Federal Circuit’s key holdings are:
• Section 2(a) is subject to strict scrutiny because the restrictions are viewpoint-based and apply to a trademark’s expressive, not source-identifying, aspect.
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• Section 2(a)’s disparagement/scandalous restrictions are viewpoint-based because “[t]he PTO rejects marks under § 2(a) when it finds the marks refer to a group in a negative way, but it permits the registration of marks that refer to a group in a positive, non-disparaging manner.”
• While trademarks by definition are used in commerce, the speech at issue is not merely commercial speech. Rather, “it is always a mark’s expressive character, not its ability to serve as a source identifier, that is the basis for the disparagement exclusion from registration.”
• Even though a registration is not required for most brand owners to build and enforce trademark rights, Section 2(a)’s disparagement/scandalous restrictions impede free speech by disincentivizing trademark owners from choosing or maintaining marks that could potentially be deemed disparaging or scandalous.
• It is unclear whether a user of an unregistrable, disparaging mark has any enforceable common law rights, either under state law or Section 43(a) of the Lanham Act.
• When the government is speaking, it is entitled to control the message. However, “the registrant’s right to attach the ® symbol to the registered mark, the mark’s placement on the Principal Register, and the issuance of a certificate of registration” do not amount to government speech.
• When the government provides a “subsidy” to a private party, it may “impose limits on the use of such funds to ensure they are used in the manner Congress intends, even when these limits exclude protected speech or other constitutionally protected conduct.” But a trademark registration is not a “subsidy” because applicants self-fund the registration process. A “trademark registration does not directly affect the public fisc.”
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Intellectual Property Review—Updates and Changes from 2016 2–12 Chapter 3 Copyright Law Review 2017
Katherine Spelman Lane Powell PC Seattle, Washington
Contents I. Google Book Search Cases ...... 3–1 II. Copyright Office Developments ...... 3–4 A. Register of Copyrights 3–4 B. Fees ...... 3–4 C. Communicating with the Copyright Office 3–6 D. Website (www.copyright.gov) ...... 3–7 E. Other Administrative Activity of Interest 3–7 III. Judicial Activity ...... 3–9 A. Procedure 3–9 B. Copyrightability/Originality 3–10 C. Uncopyrightable/Useful Article/Functionality ...... 3–13 D. Music Issues ...... 3–19 E. Ownership ...... 3–23 F. Contracts and Licenses ...... 3–34 G. Substantial Similarity ...... 3–36 H. Technologies ...... 3–50 I. Contributory Liability 3–52 J. Digital Millennium Copyright Act 3–52 K. Defenses/Exemptions 3–62 L. Remedies ...... 3–79 M. Preemption ...... 3–84 N. First Sale Doctrine/Perpetual Possession ...... 3–86 O. Termination 3–88 IV. Legislative Developments 3–90 Table of Authorities ...... 3–97 Presentation Slides 3–107 Chapter 3—Copyright Law Review 2017
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I. GOOGLE BOOK SEARCH CASES
ł Authors Guild, Inc. v. Google, Inc., 804 F.3d 202 (2d Cir. 2015)
In 2004, Google announced agreements with several major research libraries to digitally copy books in their collections. Since that date, Google scanned over twenty million books, delivered digital copies to participating libraries, created an electronic database of books, and made text available for online searching through the use of "snippets." Google did not obtain permission from the copyright holders for any of these usages of their copyrighted works. As a consequence, in 2005, plaintiffs brought this class action charging Google with copyright infringement. An Amended Settlement Agreement (ASA) was filed with the Court in November 2009. The Fairness Hearing took place on February 18, 2010, at which time parties, class members and objectors had an opportunity to present their positions to Judge Chin. In April, groups of photographers and graphic artists filed their own separate class action suit against Google for use of their work in the Google Books project. This second class action case was assigned to Judge Chin as well.
On March 22, 2011, thirteen months after the February 18, 2010 'Fairness' hearing, Judge Chin rejected the ASA on five grounds:
(1) Adequacy of Class Representation;
(2) Scope of Relief and Scope of the Pleadings;
(3) A Matter for Congress and Copyright Concerns;
(4) Antitrust Concerns; and
(5) International Law Concerns.
The court did not reject any settlement of the lawsuit, just the ASA as submitted. On May 31, 2012, Judge Chin issued an opinion denying Google's motion to dismiss and granting the individual plaintiffs' motion for class certification. On July 1, 2013, in a brief per curiam opinion, the Second Circuit vacated Judge Chin’s opinion and remanded for consideration of the fair use issues. On November 14, 2013, Judge Chin granted summary judgment to Google on fair use grounds, essentially finding Google’s use “highly transformative” and that the “significant public benefits” provided by the “invaluable research tool” of the Google Books database did not adversely impact the copyright owners.
On October 16, 2015, the Second Circuit affirmed Judge Chin’s fair use decision and held in favor of Google on each of the four fair use factors. The court noted at the outset of its discussion that the ultimate goal of copyright is to benefit the public and expand knowledge and understanding.
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For the first fair use factor, which examines the purpose of character of the secondary use, the Second Circuit confirmed Google’s use was “highly transformative.” The court also rejected the notion that Google’s overall profit motivation prohibits a claim of fair use, noting that many of the most universally accepted forms of fair use, such as news reporting, are done commercially for profit.
For the second factor, which examines the nature of the copyrighted work, the Second Circuit reiterated that this factor is rarely dispositive. Looked at in isolation it favors neither party, but in combination with the first factor it slightly favors Google.
For the third factor, which examines the amount and substantiality of the copyrighted work used, the Second Circuit found Google’s use of the copyrighted works as a transformative database necessitates the complete copying of the works. In other words, if Google copied less than the entire book into its library, the search function would be useless to its users. The court also noted that Google provides only discontinuous, tiny fragments at a time, amounting to no more than 16% of a book.
For the fourth factor, which examines the effect the secondary use will have on the copyrighted work’s market, the Second Circuit recognized that the snippet function can cause some loss in sales. For example, loss of sales could occur when a researcher’s need for a book is satisfied by Google’s search function. However, the court found there was no “meaningful or significant effect” upon the market.
The Second Circuit also dismissed three other arguments by the plaintiffs. First, the court found plaintiffs had no derivative right in the application of the search and snippet function. Second, the court dismissed plaintiff’s claim that Google’s database exposed the copyrighted material to the risk that hackers might gain access to the material and disseminate it freely. The court noted that Google protects the material by using the same security measures it uses to protect its own confidential information. Finally, the court found Google’s provision of digital copies to libraries that supplied the books, on the assumption the library would use them in accordance with copyright law, was not an infringing use.
The Author’s Guild petition for cert. was denied on April 18, 2016.
ł Authors Guild, Inc. v. Hathitrust, 755 F.3d 87 (2d Cir. 2014).
In September 2011 a group of authors, with The Authors Guild and other associations, filed a lawsuit against HathiTrust, five major universities, and university officials alleging that HathiTrust’s activities relating to the storage and search of full-text digital books was an infringement of copyright. HathiTrust is a digital repository of almost 10 million scanned books, most of them created as part of the Google Books project in partnership with leading research libraries. An estimated 76% of the books are still in copyright.
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At issue in the case were these specific uses:
(1) Storing of the scanned book images and text files for preservation;
(2) Enabling researchers to conduct word searches of the text files, but the search results only indicate where words appear in the text of books and do not allow viewing of the text; and
(3) Facilitating formats of the books to meet the needs of persons who are blind or visually impaired.
The Southern District of New York Court ruled on motions for summary judgment, finding that the retention and use of millions of digital books for purposes of preservation, text search, and accessibility for the visually impaired were within the limits of fair use, after balancing the four factors. Regarding the transformative factor, the court held that maintaining text files for searching purposes was a transformative use, “because the copies serve an entirely different purpose than the original works.”
Regarding orphan works, the court declined to rule on whether it would have been lawful since HathiTrust had no current plans to actually launch the orphan works initiative and make full text of those works available; the Court found this issue was not ripe for adjudication.
The court went further and said that libraries and universities are “authorized entities" under Section 121 of the Copyright Act. This statute permits an “authorized entity” to make formats of certain works available to persons who are visually impaired if its “primary mission” is to serve those needs.
At the Second Circuit, these three issues were again at issue:
(1) Allowing the general public to search for terms across all digital copies in the library;
(2) Allowing member libraries to provide patrons with print disabilities access to the full text of copyrighted works; and
(3) Permitting members to create a replacement copy of a work provided that the member owned an original copy that was destroyed and a replacement copy is unobtainable at a fair price elsewhere.
The court concluded that the first two uses were within the limits of fair use, and the third use was not appropriate for the court’s determination, as the plaintiffs did not have standing.
The court found full-text search to be “quintessentially transformative,” satisfying the first fair use factor. The court noted that factor four is concerned with only
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one type of economic injury: the harm that results because the secondary use serves as a substitute work. Therefore, “any economic ‘harm’ caused by transformative uses does not count,” thereby connecting the fourth and first factors on this issue. Providing access to print-disabled members was not transformative, but the court nevertheless concluded that this behavior served a valid purpose under the first factor for two reasons: the Supreme Court has noted that this purpose qualifies as fair use and the legislative history of the Copyright Act of 1976 displays the same conclusion.
II. COPYRIGHT OFFICE DEVELOPMENTS
A. REGISTER OF COPYRIGHTS
Marybeth Peters stepped down as Register of Copyright Office on December 31, 2010. Maria Pallante was appointed interim Copyright Register during the search period. On June 1, 2011, librarian James Billington named Maria Pallante as the Copyright Register.
B. FEES
1. Fee Schedule. (As of June 15, 2016; Copyright Office Fees were last revised effective May 1, 2014.)
Registration, Recordation, and Related Services Fees 1 Registration of a basic claim in an original work of authorship: -Form CO (Electronic Filing) (single author/claimant, one work) $35 - All other online filings 55 -Forms PA, SR, TX, VA, SE (paper filing) 85 2 Registration of a claim in a group of published photographs, database updates, or contributions to periodicals (Form GR/CP) -Form CO (electronic filing, when availability) -Online registration of groups of published photographs - pilot program 65 55 3 Registration of a renewal claim (Form RE): -Claim without addendum 100 -Addendum 100 4 Registration of a claim in a mask work (Form MW) 120
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5 Registration of a claim in a group of serials (Form SE/Group) [per issue, with minimum 2 issues] 25 6 Registration of a claim in a group of daily newspapers and qualified newsletters (Form G/DN) 80 7 Registration of a claim in a stored copyright (form GATT) 85 8 Preregistration of certain unpublished works 140 9 Registration of a correction or amplification to a claim (Form CA) 130 10 Providing an additional certificate of registration 40 11 Certification of non-electronic Copyright Office records (per hour) 200 12 Search-report prepared from official records 200 (per hour) [minimum 2 hours] Estimate of search fee [credited to search fee] 200
14 Recordation of document, including a Notice of 105 Intention to Enforce (NIE) (single title) Additional Titles (per group of 10 or fewer titles) 35 15 Recordation of an interim Designation of Agent to Receive Notification of Claim Infringement 105 under §512(c)(2) (single name) Additional domain names (per group of 10 or fewer names) 35 16 Issuance of a receipt for a §407 deposit without registration 30 17 Registration of a claim in a vessel hull (Form D/VH) (paper filing) 400 SPECIAL SERVICES 1 Service Charge for deposit account overdraft 250
2. Basic Registration.
a. Paper Filing: The fee is $85.
b. Electronic Filing: The eCO filing fee remains $35 or $55 as noted above.
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3. Special Handling.
a. The fee is $800.
b. Special handling is granted only in specific circumstances for pending or prospective litigation, customs matters, or contract or publishing deadlines that necessitate the expedited issuance of a certificate.
c. Best efforts for registration within 5 days of receipt.
4. Correction Amplification (CA).
a. The fee is $130.
5. Renewals.
a. The fee is $100.
6. Pre-registration of certain unpublished works.
a. The fee is $140 (Note: this does not cover the registration fee which is an additional $85 for paper registration or $35 for electronic registration).
7. Full Term Retention of Published Deposit.
a. This fee is $540.
C. COMMUNICATING WITH THE COPYRIGHT OFFICE
1. Website.
a. www.copyright.gov
2. Telephone Numbers.
a. Public Information Office (202) 707-5959
b. Literary Section (202) 707-8250
c. Performing Arts & Renewals (202) 707-8202
d. Visual Arts (202) 707-8202
e. Recording Documents (202) 707-1759
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3. Examiners.
a. Examiners have routinely started emailing, faxing and calling on the phone with questions instead of communicating by mail.
D. WEBSITE (www.copyright.gov)
1. Resources.
a. The Copyright Office website is the single most important means of communication of forms, new updates, legislation and Congressional Hearings from the Copyright Office. It is a very valuable resource and is extremely user friendly. It provides a plethora of resources on copyright law, a search database of valid copyright registrations, and access to forms.
2. Circulars.
a. The “Circulars” are valuable tools available from the Copyright Office website. They consist of concise summaries of copyright law and procedure, and are organized by topic.
3. Updates on the Eco.
a. As of July 1, 2008, the Copyright Office offers on-line registration of copyright claims as the preferred registration method. www.copyright.gov.eco/
E. OTHER ADMINISTRATIVE ACTIVITY OF INTEREST
1. Copyright law reform
The U.S. Copyright Office provided a comprehensive analysis of copyright reform requirements to Congress recently. See Statement of Maria A. Pallante, Register of Copyrights, United States Copyright Office, before the Subcommittee on Courts, Intellectual Property and the Internet, Committee on the Judiciary, United States House of Representatives, 113th Congress, 1st Session, March 20, 2013 - “The Register's Call for Updates to U.S. Copyright Law” - available at:
http://www.copyright.gov/regstat/2013/regstat03202013.html
The Register updated her testimony on April 29, 2015:
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http://judiciary.house.gov/index.cfm/2015/4/hearing-the-register- s-perspective-on-copyright-review (“THE REGISTER’S PERSPECTIVE ON COPYRIGHT REVIEW”)
The Copyright Office issued a new five-year strategic plan at the end of 2015: http://copyright.gov/reports/strategic-plan/sp2016- 2020.html
2. Music licensing issues
The U.S. Copyright Office recently released a comprehensive study, “Copyright and the Music Marketplace,” detailing the aging music licensing framework as well as the evolving needs of those who create and invest in music. In addition to providing an exhaustive review of the existing system, the report makes a number of recommendations that would bring both clarity and relief to songwriters, artists, publishers, record labels, and digital delivery services.
See http://www.copyright.gov/docs/musiclicensingstudy/
See also http://www.uspto.gov/ip/global/copyrights/lapolt_ and_tyler_comment_paper_02-10-14.pdf (music creators’ response to the Request for Comments on Department of Commerce's Green Paper on Copyright Policy, Creativity, and Innovation in the Digital Economy, expressing opposition to creation of a compulsory license for derivative works such as remixes, mash-ups, and sampling, and including supporting letters from Steve Tyler, Sting, deadmau5, Don Henley, Joe Walsh, Mick Fleetwood, Britney Spears, Ozzy Osbourne and Andre Young).
3. Fair Use Index
The U.S. Copyright Office Fair Use Index tracks a variety of judicial decisions to help both lawyers and non-lawyers better understand the types of uses courts have previously determined to be fair—or not fair. The decisions span multiple federal jurisdictions, including the U.S. Supreme Court, circuit courts of appeal, and district courts. See http://copyright.gov/fair-use
4. Electronic DMCA Filing Fees
The U.S. Copyright Office has issued a Notice of Proposed Rulemaking to enable electronic filing for DMCA 512(c)(3) copyright takedown notice agents. As part of the change, filing fees would be lowered from $105 (or more) currently to $6. However, the Office has also proposed a requirement that ISPs would be
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required to regularly renew their agent designations or risk losing their safe harbors. This proposed change has caused some controversy, as observers have noted how easy it would be for an ISP to innocently but mistakenly fail to file a timely renewal, and thus lose safe harbor and potentially open itself up to significant liability. Therefore, the rule is likely to be revised before it is finalized.
Also see the Legislative Developments, Part IV below, particularly the summary of the “Copyright Office for the Digital Economy Act of 2015,” H.R.4241.
III. JUDICIAL ACTIVITY
A. PROCEDURE
1. Jurisdiction (17 U.S.C. § 411(a))
ł Alig-Mielcarek v. Jackson, No. 11-00255, 2014 WL 272181 (S.D.Ohio, January 23, 2014)
Alig wrote a PhD dissertation in 2003 that Alig asserted was infringed by Jackson five years later and then incorporated into Jackson’s later book and on a website. Alig sued in Ohio both Jackson and the publisher, Rathsi Publishing.
The court dismissed for lack of personal jurisdiction in Ohio due to insufficient contacts with Ohio.
ł Andrews v. Daughtry, 994 F. Supp. 2d 728 (M.D.N.C. 2014)
A case carefully crafted to avoid federal court jurisdiction was denied removal because the defendant’s notice of removal was untimely. Plaintiffs filed to enforce an agreement that they, members of a band, share equally in profits. Defendant filed a motion to remove that was after the thirty days allowed, asserting that removal was mandatory, but did not assert any good cause for the delay in petitioning for removal. The case stayed in state court.
x SelectHealth, Inc. v. Risinger, 18 F. Supp. 3d 1268 (D. Utah 2014)
SelectHealth is a Utah-based healthcare insurance provider that engaged in negotiation to purchase a domain name registered to Risinger, a resident of Texas. SelectHealth alleged copyright infringement against Risinger after he copied and pasted SelectHealth’s web content to the site he owned and added a registration survey to capture data from site visitors. The District
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Court of Utah held that it had personal jurisdiction over the defendant and denied his motion to dismiss.
The court found that Risinger purposely directed his activities at Utah. First, he was on notice that SelectHealth was a Utah company and that the content he copied and pasted from its site would affect people in Utah seeking health insurance. Second, he used the duplicate content and survey to purposely target and attract Utah residents to his site. Third, Risinger took these actions in order to strengthen his bargaining position with a Utah company.
Finally, the court found that SelectHealth’s copyright claims arose out of Risinger’s contacts with SelectHealth and the resident site visitors and that the court’s exercise of jurisdiction did not offend traditional notions of fair play and substantial justice—in large part because of the state’s considerable interest in the local healthcare insurance industry.
B. COPYRIGHTABILITY/ORIGINALITY
ł Home Legend, LLC v. Mannington Mills, Inc., 784 F.3d 1404 (11th Cir. 2015)
The Eleventh Circuit reversed a grant of summary judgment for Home Legend and held that Mannington Mills’ two-dimensional laminate flooring design was eligible for copyright protection because it was a compilation that reflected sufficient creativity, was separable from the actual flooring, and was directed at the design rather than an idea or process.
First, the court held that the flooring design was not a slavish copy of nature, but rather an expression of an idea with sufficient creativity for it to be protectable by copyright. The rustic design was created through a process of distressing, staining, photographing, and digitally altering individual planks and arranging the individual elements in a designed compilation. The compilation reflected artistic judgement and sufficient creativity to meet the low bar set forth in 17 U.S.C. § 103. Second, the court concluded that the flooring design overlay was sufficiently separable from the useful article for it to be copyrightable. “Separability,” for the purpose of assessing copyright eligibility of a useful article’s design, requires that the design is either physically or conceptually severable from the utilitarian article. Here the court found that the “Glazed Maple” design overlay was both physically and conceptually separable (evidenced by the variety of designs applied to laminate flooring and the ability to use the design as art or wall covering). Third, the court found that although the evidence presented by Mannington
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Mills focused on the process of creating the design, the copyright itself was directed at copyrightable artwork.
In sum, Mannington Mills’ copyright covers the two-dimensional image used for laminate flooring design. However the copyright protection is not particularly strong because the elements of the design, individual woods planks, are in the public domain. Because it is a derivative work, the design is only afforded protection from identical or near-identical copies. Consequently, the case was remanded to determine if Home Legend’s use of a design similar to “Glazed Maple” is identical or near-identical.
On July 24, 2015 Home Legend filed a petition for a writ of certiorari alleging that Mannington’s design is a slavish copy of nature, that is inseparable from the utilitarian elements, and that the Eleventh Circuit’s opinion created a circuit split.
ł FireSabre Consulting LLC v. Sheehy, No. 11-04719, 2013 WL 5420977 (S.D.N.Y. Sept. 26, 2013)
Plaintiff, an education-focused technology development company, helped a middle-school technology instructor create the topography of several islands the school purchased in Second Life. The intent was to place content throughout the islands as an educational tool. Plaintiff started the process of terraforming or creating the landscape of at least one island. The parties never signed a contract and a dispute arose as to payment for services leading to plaintiff’s withdrawal from the project. Plaintiff registered forty screenshots of the islands. The court rejected the argument that terraforming is not eligible for copyright protection because it is not fixed. Although the work had been changed, it was visible for more than a transitory duration on the servers of Second Life. “That someone else could come along and, with or without permission, alter the original piece of art does not mean the art was too transitory to be copyrighted in the first place.”
ł Klinger v. Conan Doyle Estate, Ltd. 755 F.3d 496 (7th Cir. 2014), affirming 988 F. Supp. 2d 879 (N.D. Ill. 2013)
Conan Doyle Estate objected when Klinger used plots, features, and elements of Sherlock Holmes stories in modern film. All but ten stories of Arthur Conan Doyle are not pre 1923, and in the public domain. The defendant alleged that all that was taken was from the public domain stories. The Estate argued that the characters of the pre-1923 had additional elements and protectable aspects in the post-1923 works and that therefore the earlier stories were still protected. The court held that the low standard of originality
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required for copyright protection meant finding that the post-1923 story elements were copyrightable if original. The court granted summary judgment in part, and ordered that the ten post-1923 stories were derivative works which meant that the ‘increments of expression’ test should be applied.
On appeal, the Seventh Circuit affirmed. It concluded first that the threats by the estate created an actual rather than a potential controversy, so the court did have jurisdiction to issue a declaratory judgment. On the more central issue, the court noted that, because some of the Holmes stories remained under protection while others’ protection had lapsed, only the original elements added in those later stories remained protected. The court rejected the estate’s attempt to distinguish between “flat” and “round” characters, which would have allowed the estate to retain protection of the Holmes and Watson characters from the date of their most recent appearance. Judge Posner also ordered the estate to pay attorneys’ fees for bringing “nonexistent copyright claims” as a “form of extortion” against its competitor. Judge Posner applauded the competitor, author Leslie Klinger, for “performing a public service” by “exposing the estate’s unlawful business strategy.”
x StorageCraft Technology Corp v. Persistent Telecom Solutions, Inc., No. 2:14-CV-76-DAK, 2016 U.S. Dist. Lexis 79394 (C.D. Utah June 17, 2016)
StorageCraft, a computer software company that specializes in backup, disaster recovery and system migration software, and Doyenz, a cloud services provider, entered into a license agreement that permitted Doyenz to use a group of StorageCraft proprietary tools, referred to as the Data Center Recovery Product (“DCRP”). Among other things, the DCRP license authorized Doyenz to use four of StorageCraft’s proprietary tools. Specifically, Doyenz’s cloud services were designed to work primarily with StorageCraft’s proprietary backup image files, allowing customers to upload and recover those images in the event of a computer crash.
In 2012, StorageCraft consented to the assignment of its rights and obligations under the DCRP license from Doyenz to Persistent, which was in the process of purchasing all of Doyenz’s assets. However in 2013, StorageCraft notified Persistent that it would not be renewing the license agreement, set to expire on October 31, 2013, leaving Persistent without a license to use the DCRP or its component parts. Persistent then developed a replacement solution that relied on StorageCraft’s copyrighted tools to automatically convert StorageCraft’s proprietary backup files into a new format. Upon learning of Persistent’s
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continued reliance on the DCRP, StorageCraft brought suit alleging that Persistent was engaging in direct and contributory copyright infringement. Among Persistent’s affirmative defenses were: (1) Persistent’s use was protected under the fair use doctrine and (2) the tools at issue were ineligible for copyright protection. StorageCraft moved for summary judgment on both affirmative defenses.
First, the court denied StorageCraft’s motion for summary judgement on the fair use defense, concluding that Persistent had demonstrated genuine disputes of material fact. The court noted that the most important factor in establishing fair use is the “effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4). Using expert opinion, Persistent argued that rather than having a negative impact on the DCRP market, its replacement solution was likely to maintain or even increase the market for StorageCraft’s proprietary tools because the replacement solution only worked when the tools were installed on the end user’s computer. The court held that this factor was enough to demonstrate genuine disputes of material fact.
Second, the court denied StorageCraft’s motion for summary judgment regarding whether the tools at issue were ineligible for copyright protection, because Persistent demonstrated the existence of genuine disputes of material fact. Using expert opinion, Persistent argued that StorageCraft’s proprietary tools are not protectable by copyright because they are standard, stock, or common in the industry. Specifically the expert’s analysis of the source code led him to the opinion that the functions performed by the tools were “common practice in the IT and software industries” and are “old technology and not in any way new or novel.” Id. at 19-20. The court held that this demonstrated that a genuine dispute of fact existed regarding the copyrightability of StorageCraft’s proprietary tools.
C. UNCOPYRIGHTABLE/USEFUL ARTICLE/FUNCTIONALITY.
Section 102(b) of the Copyright Act provides:
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
ł Inhale, Inc. v. Starbuzz Tobacco, 755 F.3d 1038 (9th Cir. 2014), 135 S. Ct. 758 (2014) (denying cert.)
The 9th Circuit amended and superseded its previous opinion on denial of rehearing. By stipulation, the parties agreed that the object in dispute is a
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hookah water container. While the Copyright Office had issued a registration covering the ornamental aspects of the hookah, the trial court and the 9th Circuit found that the shape of the container was not independent of the container’s utilitarian function. The amendment makes clear that the opinion holds only that any part of the container that has the purpose of containing is not entitled to protection. The court noted that Inhale had not made the argument that the exterior shape, specifically of a drooping ring, was conceptually separable from the interior shape that contained the water. Instead, inhale argued that the “outer skin” of the water container could be peeled away and analyzed separately, which the court dismissed. The court remains open to the argument that an element that does not contribute to the containing function may be entitled to copyright protection.
ł DC Comics v. Towle, 802 F.3d 1012 (9th Cir. 2015)
The Ninth Circuit held that the Batmobile is subject to copyright protection, establishing a three-part test for making this determination. Defendant Towle operated a mechanic shop under the name “Gotham Garage.” He provided customers with replica versions of the Batmobile for $90,000, or alternatively would sell kits that allowed customers to modify their cars to look like the Batmobile. Towle conceded that these replicas copied the designs of the Batmobile from the 1966 television show and the 1989 motion picture.
DC Comics filed this action in May 2011 primarily alleging copyright infringement, trademark infringement, and unfair competition. Towle claimed the Batmobile that appeared in the 1966 television show and 1989 motion picture was not subject to copyright protection. Alternatively, Towle argued that DC did not own the copyright in either production, but rather just in the DC Comics’ version of the Batmobile. He also asserted a laches defense.
The district court found in favor of DC Comics on each issue, except for Towle’s laches defense to the copyright infringement claim. After a joint stipulation, the court entered judgment for DC Comics, and Towle subsequently appealed.
The Ninth Circuit first held that the Batmobile is a character that qualifies for copyright protection. Looking to precedent in the Ninth and Second Circuits, the court established a three-part test for determining whether a character is entitled to copyright protection:
First, the character must generally have “physical as well as conceptual qualities.” Second, the character must be “sufficiently delineated” to be recognizable as the same character whenever it appears. Considering the character as
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it has appeared in different productions, it must display consistent, identifiable character traits and attributes, although the character need not have a consistent appearance. Third, the character must be “especially distinctive” and “contain some unique elements of expression.” It cannot be a stock character. (citations omitted).
Applying the first element to the case, the court found the Batmobile is not merely a literary character. It has physical and conceptual qualities because it has appeared graphically and also as a three-dimensional car in different productions. Second, the court found the Batmobile has maintained its distinct physical and conceptual qualities in its appearances over time, namely its bat-like appearance, its crime-fighting characteristics, and state-of-the-art weaponry and technology. Specifically rejecting one of Towle’s arguments that the Batmobile has changed over time, the court noted that a consistent appearance is not as significant to its analysis as consistent character traits and attributes. Third, the court reiterated that the Batmobile has distinct character traits and is not merely a stock character.
Next, the Ninth Circuit held that Towle infringed DC Comics’ copyright. Towle argued that DC Comics did not own any copyright interest in the 1966 television series or 1989 motion picture and thus lacked standing. In other words, Towle admitted to copying the Batmobile from that television series and movie, but said DC Comics owns a copyright in the comic depiction of the Batmobile and not those subsequent works. The Court disagreed. When a copyright owner authorizes a third party to create a derivative work, the owner retains a copyright in the underlying work. The work created by the third party does not affect the scope of any copyright protection in the preexisting, underlying work. Thus, the Ninth Circuit affirmed the infringement.
Finally, the Ninth Circuit affirmed the district court’s finding that Towle could not assert a laches defense to the trademark infringement claim. Laches is an equitable doctrine that does not apply to cases of willful infringement. The court found that Towle admitted to exploiting DC’s trademarks and thus cannot use the defense.
The Supreme Court denied the cert. petition on March 7, 2016.
ł Tomaydo-Tohmahdo, LLC v. Vozary, 629 Fed.Appx 658 (6th Cir. 2015)
Tomaydo involved a dispute between the owner of a restaurant and catering business against the owner’s former business partner, who allegedly copied recipes from the owner’s recipe book for his own companies. The Sixth Circuit held that a list of ingredient is merely a
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factual statement and recipe instructions are merely functional directions, neither of which is protectable under copyright law. The court also held that, while recipe books can be protectable to the extent they show originality (by, for example, “lacing their directions for producing dishes with musings about the spiritual nature of cooking”), here nothing about the book was original enough to merit copyright protection. The court did not address any competition issues.
ł Lorenzana v. S. Am. Rest. Corp., 799 F.3d 31 (1st Cir. 2015)
In Lorenzana, an employee (Norberto Colón Lorenzana) created the “Pechu Sandwich” for his employer, South American Restaurants Corp., but later came to believe that he should be entitled to a percentage of the profits derived from the sandwich’s success. The First Circuit disagreed, holding that a recipe for a specific chicken sandwich was not copyrightable, upholding a grant of a motion to dismiss that reached the same conclusion. The First Circuit also noted that, contrary to Lorenzana’s assertions, the name of the sandwich was also not protectable, as the Copyright Act does not protect words and short phrases like names, titles, and slogans.
ł Bikram’s Yoga College v. Evolation Yoga, Case No. 13-55763 (9th Cir. 2015)
Bikram Choudhury developed a yoga class, detailed in his book Bikram’s Beginning Yoga Class, in which attendees practice twenty-six individual poses and two breathing exercises over a 90 minute period in a room heated to approximately 105 degrees Fahrenheit. Evolation Yoga offered several types of yoga, among them a “hot yoga” that closely resembles Bikram’s Basic Yoga System. The district court concluded that the sequence of twenty-six poses is not entitled to copyright protection.
Reviewing the district court’s decision de novo, the Ninth Circuit agreed that the sequence of yoga poses is not a proper subject of copyright.
Section 102(a) of the Copyright Act of 1976 explicitly excludes protection for ideas or concepts, only protecting the fixed expression of those ideas. The Ninth Circuit concluded that Bikram’s yoga methodology was an idea, not an expression, and therefore his copyright in Bikram’s Beginning Yoga Class did not extend to the poses or sequence of those poses. Copyright protection cannot give Bikram a monopoly on performing the sequence of poses.
The court also rejected the argument that the pose sequence qualifies for protection as a compilation. While a compilation is a proper subject for copyright protection in Section 103 of the Copyright Act, this protection must be seen as a complement to that provided for in Section 102. A
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compilation therefore must satisfy the requirements of Section 102 to be entitled to protection.
Finally, the court rejected the argument that the yoga system merited protection as a choreographic work. The sequence of poses was not copyrightable as choreography for the same reason that it was not copyrightable as a compilation: it was an idea, process, or system, and it did not comply with the requirements of Section 102.
ł Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015)
Varsity Brands, maker of cheerleading uniforms, sued Star Athletics, a competitor, for copying their uniform designs. Following a determination by the district court that Varsity did not have a valid copyright because the graphic elements of their designs are not separable from the utilitarian function of a cheerleading uniform, Varsity appealed.
The Sixth Circuit held that the district court erred by failing to give greater deference than it did to the Copyright Office’s determination that Varsity has a valid copyright in the designs. The court concluded that Copyright Office determinations merited Skidmore deference rather than the more stringent Chevron deference because individual decisions about the copyrightability of works were not like rules carrying the force of law, but still merited some deference. This deference should have shifted the burden to Star to overcome the presumption.
The court then turned to the doctrine of useful articles. The relevant test has two prongs: first, whether the design in question is a design of a useful article, and if so, second, whether the design of the useful article incorporates pictorial, graphic, or sculptural features that can be separately identified from the utilitarian aspects of the article and are capable of existing independently of it. There are two ways of determining this separability: physical separability and conceptual separability. The physical separability test asks whether the pictorial, graphic, or sculptural elements of an article may be physically separated from the article while still leaving the utilitarian aspects of the article intact. The conceptual separability test asks whether the pictorial, graphic, or sculptural elements of the article are conceptually separable from the utilitarian aspects. Most courts consider both tests together.
The Sixth Circuit enumerated nine possible approaches to conceptual separability, developing an approach that is a hybrid of several of them. The Sixth Circuit approach asked a series of questions:
1. Is the design a pictorial, graphic, or sculptural work? 2. If so, then is it a design of a useful article? 3. What are the utilitarian aspects of the useful article?
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4. Can the viewer of the design identify pictorial, graphic, or sculptural features separately from the utilitarian aspects of the article? 5. Can the pictorial, graphic, or sculptural features of the design exist independently of the utilitarian aspects of the article?
The court concluded that (1) Varsity’s designs were graphic works, and (2) the uniforms were indeed useful articles. (3) The utilitarian aspects were that the uniforms cover the body, wick away moisture, and withstand athletic movements. The graphic features of the uniforms (4) can be identified separately from the utilitarian aspects of the uniform, as the designs did not increase the garments’ value in covering the body or any other utilitarian function. Finally, (5) the graphic features can also exist independently of the utilitarian aspects, because the same designs could be placed on any garment. Therefore, the designs were copyrightable.
Finally, the court considered whether the designs in question constitute fabric design, because fabric design is protected while dress design is not. The court concluded that the graphic elements of Varsity’s designs are more like fabric design, and so are not excluded from protection.
The Supreme Court granted cert. in this case on May 2, 2016.
ł DaVinci Editrice S.R.L. v. ZiKo Games, LLC, H-13-3415, 2016 WL 1672519 (S.D. Tx April 27, 2016)
DaVinci, an Italian game company, designed and sold a role-playing card game called Bang!. The Chinese game company Yoka drew heavily from Bang! in the creation of its own game, called Legends of the Three Kingdoms (distributed in the U.S. by ZiKo Games), and DaVinci sued for copyright infringement. The two games have virtually identical formats and rules but different aesthetic themes (The Wild West for Bang! and Ancient China for Three Kingdoms). In 2014, the southern district of Texas dismissed most of DaVinci’s claims because game rules are not copyrightable, and the design aesthetics were sufficiently different so as to be separate expressions. However, the court ruled that one aspect of the game, character roles assigned to each player at the start of each game, was potentially copyrightable.
After discovery and cross-motions for summary judgment, the court decided for ZiKo. The court found the character roles were another rule of the game and thus not protectable expression. Although characters are generally protectable under copyright, in this case they were not truly expressive, literary characters. Instead, they were merely aspects of gameplay, largely because the character roles varied significantly game-to- game and did not have identifiable and protectable character traits.
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ł Naruto v. Slater, 15-cv-04324, 2016 WL 362231 (N.D. Cal. Jan. 28, 2016)
In the (in)famous “monkey selfie” case, PETA brought an action on behalf of an Indonesian monkey named Naruto for copyright infringement. Naruto used the camera of photographer David Slater to take pictures of itself, which Slater later published. PETA argued that Naruto is an “author” under the Copyright Act and thus is the owner of the photos, which Slater and his publisher exploited without the permission of Naruto.
The Northern District of California held that animals have no standing under the Copyright Act and therefore cannot be “authors.” The court noted that the Copyright Office has determined that works must be created by human beings in order to be copyrightable, and there is no protection for works produced by “nature, animals, or plants.”
The case is currently on appeal to the Ninth Circuit.
ł Sissom v. Snow, 626 Fed.Appx. 163 (7th Cir. 2015)
Sissom, who wrote a book about a sensational unsolved murder in Indiana, sued Snow for copyright infringement, alleging that Snow impermissibly paraphrased large chunks of her book in his own book about the murders and the investigation. However, Snow copied only factual and historical information and gave extensive attribution to Sissom, and the Southern District of Indiana granted Snow’s motion to dismiss. On appeal the Seventh Circuit affirmed, holding that factual information cannot be copyrighted and thus Snow could not have violated Sissom’s copyright.
D. MUSIC ISSUES
1. Public Performance Rights
ł In re Petition of Pandora Media, Inc., Opinion and Order, Case No. 12-Civ-8035 (DLC) (S.D.N.Y. Sept. 17, 2013) (finding the provisions of the 1941 ASCAP Consent Decree do not permit music publisher withdrawals);
ł Broadcast Music, Inc. v. Pandora Media, Inc., Opinion and Order, Case No. 13-Civ-4037 (LLS) (S.D.N.Y. Dec. 19, 2013) (finding the provisions of the 1964 BMI Consent Decree permit music publisher withdrawals).
ł Broadcast Music, Inc. v. Pandora Media, Inc., Opinion and Order, Case No. 1:13-cv-04047 (LLS) (S.D.N.Y. May 28, 2015) (holding 2.5% reasonable rate based on independent licenses);
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ł Pandora Media, Inc. v. Am. Soc. of Composers, Authors & Publishers, 785 F.3d 73, 75 (2d Cir. 2015) (affirming reasonable rate of 1.85%).
The two primary music performing rights organizations (ASCAP, representing 600,000 composers, songwriters, and music publishers and BMI, representing 460,000 composers, songwriters, and music publishers) attempted to implement requests by certain music publishers (primarily by Sony, EMI, and Universal) to withdraw digital streaming rights from the blanket public performance licenses administered by those organizations. Pandora challenged the music publishers’ efforts to withdraw their works from availability to online and mobile streaming services such as Pandora. Examining the differing specific text of the applicable consent decrees, two judges in the Southern District of New York reached contrary conclusions. ASCAP was not permitted to withdraw the works from its blanket license. See In re Petition of Pandora Media, Inc., Opinion and Order, Case No. 12-Civ-8035 (DLC) (S.D.N.Y. Sept. 17, 2013) (examining the provisions of the 1941 ASCAP Consent Decree). BMI was permitted to withdraw the works in question from its blanket license. See Broadcast Music, Inc. v. Pandora Media, Inc., Opinion and Order, Case No. 13-Civ- 4037 (LLS) (S.D.N.Y. Dec. 19, 2013) (examining the provisions of the 1964 BMI Consent Decree).
Pandora then filed actions concerning the applicable royalty rate. If ASCAP or BMI and a licensee cannot agree upon a licensing rate, their consent decrees stipulate that the Southern District of New York will determine a reasonable rate for the dispute.
In March 2015, the Second Circuit affirmed that 1.85% of Pandora’s revenue was a reasonable rate in the ASCAP dispute. ASCAP was seeking a rate that increased to 3.00% based on the rates of independent agreements that were invalid because they violated the consent decree’s blanket provision. The court held that ASCAP failed to demonstrate that the independent agreements were reasonable because the publishers involved held considerable market power and could extract above-market rates. Pandora conceded and the court held that a 1.85% rate was reasonable and that history establishes the presumption that five-year licenses should have a single rate.
In May 2015, the court in BMI’s dispute ruled that BMI’s requested rate of 2.5% of Pandora’s revenue was reasonable. Pandora argued that the most reasonable rate would be comparable to commercial radio broadcasting stations at around 1.7 to 1.85%. The court found
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that radio stations were not a reasonable benchmark because they differ significantly from the customized music streaming offered by Pandora. Unlike ASCAP, BMI successfully supported that independent licenses from partially withdrawn publishers and Pandora were the best indicator of reasonability. The court noted that the independent licenses “are the best benchmarks” at indicating “competitive market rates.”
2. Pre-1972 Sound Recordings
ł Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 15-1164-cv, 2016 WL 1445100 (2nd Cir. Apr. 13, 2016)
Flo & Eddie, a company with the rights to a number of songs from the band “The Turtles,” sued Sirius Radio, which is a radio and internet-radio broadcaster, for common-law copyright infringement under New York law in the southern district of New York. At issue in the case is Sirius’ unauthorized broadcast of Turtles songs from the 1960s. Federal copyright law only protects sound recordings fixed on or after February 15, 1972, but Flo & Eddie contend New York common law gives holders of pre-1972 sound recordings public performance rights.
Sirius Radio moved for summary judgment, arguing New York had no such common law protections. The district court denied the motion but certified the summary judgment order for interlocutory appeal. On appeal, the Second Circuit decided the question of whether New York had these common law protections was both unsettled and important, and certified the question for the New York Court of Appeals to answer. The New York Court of Appeals has accepted the certification and the question is being briefed and argued.
ł ABS Entertainment, Inc. v. CBS Corp., CV 15-6257 PA, 2016 U.S. Dist. LEXIS 71470 (C.D. Cal. May. 30, 2016)
Is a remastered version of a pre-1972 sound recording (which is protected only under state law) entitled to federal copyright protection? According to the central district of California, the answer is yes. ABS and several other companies that own the rights to a variety of pre-1972 sound recordings sued CBS for their unauthorized use across a variety of radio platforms, both digital and broadcast (pre-1972 sound recordings are protected under California state law). The parties agreed that CBS only ever used remastered recordings made after 1972 (which the plaintiffs did not own), but did not agree on the implications of that use. ABS argued that a remaster is essentially just the original track converted to a
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new medium (which would not give it independent copyright protection) while CBS argued that remastering a track involves enough artistic choices so as to create a derivative work entitled to its own copyright protection.
The court agreed with CBS and granted it summary judgment. The court held that remastering the songs in question involved substantial creativity, including adding new sounds and adjusting bass, treble, midrange, and other frequencies to change what instruments or vocalizations are emphasized. Thus, the remastered recordings qualified as a derivative work and were independently copyrightable. Because the remastered sound recordings qualify for federal copyright protection, California law is preempted.
Note: Additional cases pertaining to music copyright issues are found throughout, particularly in the substantial similarity section.
3. Miscellaneous Issues
x Willis v. Scorpio Music (Black Scorpio), No. 15cv1078 BTM (RBB), 2016 WL 231313, (S.D. Cal. Jan. 19, 2016)
In a prior lawsuit, Scorpio Music S.A. v. Willis, No. 11cv1557 BTM (RBB), Scorpio Music (“Scorpio”) and Can’t Stop Productions (“CSP”) sought a judicial determination for the percentage of copyrights to 24 compositions (“24 Disputed Works”) that Victor Willis was entitled to recover upon termination of his grants of copyright. Willis filed a counterclaim for a declaratory judgment that Henri Belolo did not contribute to the authorship of the 24 Disputed Works and that Willis was entitled to recapture 50% of the copyright interest of those works. In February 2015, the court issued a judgment that Belolo was not a joint author in 13 of the 24 Disputed Works (“13 Compositions”) and Willis was entitled to recapture 50% of the copyrights in those works.
On May 13, 2015, Willis commenced an action alleging that all financial and business decisions of CSP were solely made by Belolo and that Belolo had made false claims of authorship for the 13 Compositions, allowing him to collect royalties for those compositions. Willis asserted claims of vicarious copyright infringement against Belolo and breach of fiduciary duty against CSP, alleging that Belolo and CSP allowed Sixuvus, Ltd. ("Sixuvus") to present grand rights public performances of some of the 13 Compositions, without paying Willis any proceeds. Scorpio, CSP, and Belolo brought motions to dismiss Willis’ claims.
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The court granted the motions to dismiss Willis’ first four causes of action (unjust enrichment, conversion, misappropriation, and fraud), which were based on Belolo’s false claim of authorship for the 13 Compositions. The court held that these claims were based on the same transactional nucleus of facts as Willis’ counterclaims in the prior action and were therefore barred by the doctrine of res judicata because they could have been brought in the first action.
Furthermore, the court dismissed Willis’ fifth cause of action, which alleged that Belolo was vicariously liable for copyright infringement committed by Sixuvus. The court found Willis’ factual allegations failed to establish that infringement had occurred because there was no underlying infringement on which to base the claim. CSP had granted Sixuvus a license for dramatic performances of the compositions at issue.
Lastly, the court granted the motion to dismiss Willis’ sixth cause of action, which alleged that CSP breached its fiduciary duty to Willis because it failed to maximize the financial return of the subject compositions. The court found that CSP did not owe a fiduciary duty toward Willis because the duty to a co-owner of a copyright is not tantamount to owing a fiduciary duty. Brian Jonestown Massacre v. Davies, 2014 WL4076549 (N.D. Cal. Aug. 18, 2014). Therefore, CSP did not breach a fiduciary duty to Willis because it did not owe him one.
E. OWNERSHIP
1. Work Made For Hire.
ł 17 U.S.C. § 101 provides:
A "Work Made For Hire” is -
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a "supplementary work" is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining,
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revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an "instructional text" is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
ł 16 Casa Duse, LLC v. Merkin, 791 F.3d 247 (2d Cir. 2015)
16 Casa Duse, a film production company, brought action against Merkin, a film director, and his attorney seeking a temporary restraining order and injunction enjoining the director from interfering with 16 Casa Duse’s use of a film produced by 16 Casa Duse and directed by Merkin. 16 Casa Duse sought a declaratory judgment regarding copyright ownership of the film and asserting claims for breach of contract, tortious interference, and conversion. Merkin brought a counterclaim seeking a declaration regarding ownership of the film’s copyright, including a claim over raw, unedited film footage.
The parties agreed that Merkin was not a “joint author” or “co- author” of the film. Co-authorship requires that each co-author (1) made independently copyrightable contributions to the work, and (2) intended to be co-authors. The court found that 16 Casa Duse never intended to share authorship with anyone else, so even if Merkin’s contributions to the film constituted independently copyrightable contributions, Merkin and 16 Casa Duse were not co- authors.
The parties also agreed that Merkin’s efforts were not a work for hire, because Merkin was not an employee of 16 Casa Duse.
The Second Circuit held that Merkin’s contribution to the film did not constitute a ފwork of authorshipފ amenable to copyright protection. Both the legislative history of the Copyright Act and a recent statement by the Copyright Office supported the court’s position that mere involvement in a motion picture was not a copyrightable contribution. The court determined that a director’s contribution that is inseparable from an integrated work of authorship is not itself a work subject to copyright protection. Thus, Merkin did not possess a copyright in his contributions as director of the film.
The court agreed with the district court that 16 Casa Duse was the dominant author of the film and thus owned the copyright in the
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finished film and its prior versions, including the disputed raw footage.
ł Mahavisno v. Compendia Bioscience, Inc., No. 13-12207, 2014 WL 340369 (E.D. Mich. Jan. 30, 2014) and 2016 WL 716866 (E.D. Mich. Feb. 23, 2016)
Mahavisno, in 2002, was a graduate student and consultant at the University of Michigan’s Department of Pathology. Creating a computer program that allows cancer researchers to process and analyze genomic and cancer treatment data was a goal pursued by several at that time, including Mahavisno. The program was called ‘Oncomine’ and Mahavisno and others continued to contribute code over several years. Two of the collaborating colleagues on Oncomine formed a new company, “Compendia”, and negotiated with the University of Michigan to license Oncomine for commercial exploitation, granting sublicenses, and creating derivative works.
In 2013, Mahavisno sued claiming authorship status of Oncomine. Compendia contended that Mahavisno was an employee and the work therefore was a work made for hire (WMFH). The court rejected Compendia’s contention that Mahavisno’s contribution was WMFH.
Compendia filed a motion to dismiss contending that Mahavisno could not establish breach of an implied in fact contract for use of his work because he could not demonstrate a meeting of the minds between Compendia and Mahavisno. The court rejected Compendia’s contention stating Mahavisno had plausibly alleged unjust enrichment by alleging a meeting of the minds established by both receipt and implementation of his work.
In 2015, Compendia brought a motion for summary judgment on Mahavisno’s copyright infringement and breach of contract claims. First, the court granted Compendia’s motion for summary judgement on the copyright infringement claim. The court held that Mahavisno’s copyright infringement claim was barred because Compendia had an implied license to use Mahavisno’s source code. An implied license arises when the following three elements are satisfied: “(1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes the particular work and delivers it to the licensee who requested it, and (3) the licensor intends that the licensee-requester copy and distribute it.” Lulirama Ltd., Inc. v. Axcess Broad. Serv., 128 F.3d 872, 879 (5th Cir.1997) (quoting IAE, Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir.1996)). Here, the court found there was an implied license,
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evidenced by Mahavisno’s testimony which stated he created the software code and gave it to Compendia with the intent that Compendia would use the software in its products.
Second, the court denied Compendia’s motion for summary judgment on the breach of contract claim. Compendia argued that Mahavisno’s breach of implied-in-fact contract claim was time barred by Michigan’s six year statute of limitations for breach of contract claims. M.C.L. § 600.5807(8). Compendia argued it was clear in April 2007 that it had refused to perform on the promises Mahavisno believed had been made to him. However, the court denied Compendia’s motion because a genuine dispute of fact existed regarding the date that Compendia allegedly failed to perform on the implied contract. Specifically, the court found that a reasonable jury could find that Compendia had promised to give Mahavisno an ownership interest or other proceeds when Compendia was sold in 2012.
2. Ownership/Joint Authorship.
ł Derrick Petroleum Servs. v. PLS, Inc., No. 14-1520, 2015 WL 224991 (S.D. Tex. Jan. 15, 2015); Derrick Petroleum Servs. v. PLS, Inc., Slip Copy, No. 14-1520, 2014 WL 7447229 (S.D. Tex. Dec. 31, 2014)
The court denied PLS’s request for an interlocutory appeal from the November 2014 bench trial which held: (1) though the parties intended to create a partnership, they did not meet the requirements for a partnership under Texas law and thus did not create a partnership, (2) Derrick was the sole owner of the jointly branded Database, and (3) that the memorandum of understanding (“MOU”) and the parties’ business relationship ended October 3, 2014. The court reasoned the MOU did not contain a transfer of ownership or copyright interest from Derrick to PLS and Derrick retained exclusive ownership of the Database, expanded and marketed as the jointly branded Derrick/PLS Database.
ł TD Bank, N.A. v. Hill, No. 12-07188, 2014 WL 413525 (D.N.J. Feb. 03, 2014)
This was a declaratory judgment action filed by TD Bank after Hill sought a ruling of joint authorship.
Hill, a former employee of Commerce Bank (later acquired by TD Bank), worked on a book manuscript with Andelman about creating growth in the banking industry entitled “Fans Not Customers”. After sharing the draft manuscript with Commerce Bank, all
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entered into an agreement for completion of the manuscript as a “work made for hire.” A second book was written between Hill and Andelman describing Hill’s further adventures setting up a bank in the UK and describing success in that adventure. Commerce Bank objected to the content of the second book and asserts that the second book infringes the content of the first which is owned and ‘authored’ under WMFH doctrine by Commerce Bank. Hill filed for a declaration that he is a co-author, not a work made for hire author and that he retain his rights. Hill introduced testimony and correspondence demonstrating that it was always the parties intent that Hill retain ownership of his portion of the manuscript; that the writing of the book was outside the scope of employment; and, that no one supervised. TD Bank filed a ‘take down’ demand under the DMCA where the book was being sold; and sales of the book halted. Upon review, the court held that Hill had stated a claim to maintain the action for joint authorship and for violation of the DMCA in a wrongful take down. Case proceeds.
ł Brownstein v. Lindsay, 742 F.3d 55 (3d Cir. 2014)
This was a declaratory judgment action arising from a dispute over authorship of a computer program that implements rules for identifying the ethnicity of proper names for the purposes of direct marketing. Brownstein (code) and Lindsay (rule text) each had separate copyrights in works related to the resulting work. Lindsay filed multiple copyright registrations claiming herself as the sole owner. In those applications, Lindsay stated that the code and text were “irrevocably entwined.” As such, the Third Circuit found joint authorship.
ł Garcia v. Google, Inc. 786 F.3d 733 (9th Cir. 2015)
This widely-discussed decision addressed the validity of an independent copyright in a performance by an actress, whose brief performance was made for a fictional action film and later revised for use (for a duration of five seconds) in a short and controversial video entitled “Innocence of Muslims.” Garcia was hired to work on a fictional film called “Desert Warrior”, but, without her consent, the filmmakers took her footage and used it in a different, anti- Islamic documentary (“Innocence of Muslims”), overdubbing part of her words so that she is seen asking: ”Is your Mohammed a child molester?” The video was posted on YouTube among other websites. After receiving numerous death threats Garcia filed eight DMCA takedown notices with YouTube, alleging copyright infringement. When YouTube refused to remove the video, she sued the filmmakers for defamation and fraud, and also sued
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YouTube for copyright infringement. The District Court denied on the grounds that, even by Garcia’s own admission, she was not an author or co-author of the film, and therefore had no legitimate copyright interest in it. The Ninth Circuit initially reversed, holding that Garcia could have a protectable copyright interest in her 5- second performance. The Ninth Circuit ordered that the video be removed from YouTube. The decision was widely criticized and Google (the operator of the YouTube site) sought en banc review. An en banc re-hearing was ordered in November 2014 and held on Dec. 2014. On May 18, 2015, the en banc panel reversed, rejecting the validity of an independent copyright in Garcia’s performance.
The en banc panel summarized its decision as follows:
“In light of the Copyright Act's requirements of an ‘original work[] of authorship fixed in any tangible medium,’ 17 U.S.C. § 102(a), the mismatch between Garcia's copyright claim and the relief sought, and the Copyright Office's rejection of Garcia's application for a copyright in her brief performance, we conclude that the district court did not abuse its discretion in denying Garcia's request for the preliminary injunction. As a consequence, the panel's mandatory injunction against Google was unjustified and is dissolved upon publication of this opinion.”
ł Hendricks & Lewis v. Clinton, 755 F.3d 1077 (9th Cir. 2014)
Hendricks & Lewis (H&L) represented musician George Clinton in various disputes from 2005 to 2008 and received very little of its due compensation. After judgment in the Western District of Washington in H&L’s favor, H&L requested the appointment of a receiver and an order directing the assignment of Clinton’s master recordings, owned by Warner Brothers, to the receiver, such that the receiver could use those copyrights to satisfy the monetary judgment. The District Court appointed the receiver and held that, contrary to Clinton’s argument, the copyrights in the master recordings were subject to judicial sale or assignment to satisfy the money judgment.
The Ninth Circuit affirmed both the appointment of the receiver and the holding as to the master recordings’ authorization for sale. Because no federal statute directly addresses whether copyrights are subject to such execution, the court relied on Washington law and analogies to patent law in concluding that they are. The court then determined that § 201(e) of the Copyright Act, protecting individual authors from the involuntary transfer of their copyrights, does not protect Clinton from involuntary transfer, since Clinton was not the “author,” but rather was Warner Brothers’ employee for
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hire. In the alternate, the court noted, Clinton was the author but transferred all of his interest to Warner Bros. In appointing the receiver to manage or sell ownership of the master recordings, the district court did not err because the appointment was reasonable and necessary in the balancing of equities.
ł Karlson v. Red Door Homes, LLC, No. 11-01511, 2012 U.S. Dist. LEXIS 68395, 2012 WL 1747845 (N.D. Ala. Apr. 30 2014)
Red Door designs and sells building plans for new homes to builders. They paid the Karlson to create artistic renderings of their new home designs and compensated him per rendering. They subsequently distributed the drawings to builders, for which Karlson alleged copyright infringement.
The district court issued a summary judgment in favor of Red Door based on its conclusion that Karlson granted Red Door an irrevocable implied license in the renderings.
The court found that Karlson’s objective intent for Red Door to use and distribute his renderings was supported by evidence that he created the renderings at their request and delivered them with the knowledge that Red Door would use them to promote the sale of their new home designs to builders.
The court also found that invoices containing a copyright statement restricting use of the Karlson’s work were not part of the contract between the parties because the work was completed and sent to Red Door prior to their receipt of the invoices.
ł Marino v. Usher, 22. F. Supp. 3d 437 (E.D. Pa. 2014)
Marino brought copyright infringement claims against singer/songwriter Usher Raymond and others for the sale of a song of which Marino was an uncredited co-author. Marino’s co-authors registered a copyright and entered into a contract with Usher for the use and sale of the song but Marino’s name was not included in the registration or the agreement, despite his co-author status.
The district court dismissed the claims, finding the song was a joint work between Marino and his two co-authors—also co-defendants— and that his co-authors acted within their authority when they granted Usher and his associates non-exclusive rights to the song without Marino’s consent.
Alternatively the court found that Marino granted Usher an implied, non-exclusive license to exploit the song by agreeing to let
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him record and use it in his album, turning over the necessary digital files, assisting in the recording process, and celebrating its success. Moreover, Marino’s co-authors impliedly licensed the song through similar actions, including marketing the song to Usher’s associates and mixing the final track.
Finally, Marino’s sound recording copyright infringement claim failed because while his co-authors registered the underlying musical work, neither he nor they registered the sound recording as required by statute.
ł Isbell v. DM Records, Inc. (In re Isbell Records, Inc.), 774 F.3d 859 (5th Cir. 2014) (affirming various district court rulings); DM Records, Inc. v. Isbell, Petition for a Writ of Certiorari, Case No. 14- 1320 (S. Ct. filed May 1, 2015) (appeal to Supreme Court).
In 1993, Tag Team, the writers and producers of the song “Whoomp! (There It Is),” transferred ownership of the composition and the payment of royalties in a recording agreement with Bellmark Records (Bellmark). The agreement included a statement that Tag Team transferred 50% of the composition rights to the song to “Bellmark’s affiliated designee publisher.” The agreement, additionally, stated that Bellmark had the sole, exclusive right to administer and exploit the copyrights and musical composition.
In 1997, Bellmark filed for bankruptcy and in 1999, DM Records, Inc. (DM) purchased “all property of” Bellmark. DM then began using the composition copyright of the song to receive royalties.
Alvertis Isbell, the president of Bellmark, had formed his own music publishing company, Alvert Music, in 1977. In 2002, Alvert Music, claiming to own the composition copyright, filed for a declaratory judgment that Alvert Music, not DM, owned the composition copyright of the song and that DM was infringing on their rights. Alvert Music, which did not file for bankruptcy with Bellmark, argued that, although not expressly named, they were Bellmark’s affiliated designee publisher and owned the interest assigned in Bellmark and Tag Team’s recording agreement.
In September 2012, the court agreed and held that Alvert Music was the owner of a 50% interest in the composition copyright and DM was liable for its unauthorized use of the composition copyright. Following the court’s opinion, the jury awarded Isbell with $2.1 million in actual damages and $132,500 in statutory damages. DM then appealed.
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In December 2014, the Fifth Circuit upheld the jury award. DM contended that the district court erred in assigning and instructing the jury because the jury awarded Isbell the full amount of royalties received by DM and that the award should be, at most, 50% of the royalties. Since DM did not object to the jury instructions at trial, the appellate court found that the district court passed a plain error review. While evidence in the record could support a jury determination that Isbell was the administrator of 100% of the royalties, the court noted that Isbell could then pay Tag Team its remaining 50% share.
In May 2015, DM filed a petition for certiorari urging the Supreme Court to review the Fifth Circuit’s decision. The petition asks two questions: whether a co-owner of a copyright can recover all of an infringer's profits when it only owns a half share of the copyright, and whether a copyright owner who assigns all of its rights to a nonparty to a litigation can recover damages for infringement that occurred after the transfer. The second question deals with the fact that Isbell assigned away any rights he had to sue for infringement in November 2006, but he still received a judgment of damages that included the period after the assignment. The Fifth Circuit’s ruling that the transfer did not affect Isbell’s standing or ability to collect damages for the period after assignment contradicts the Ninth Circuit. The Supreme Court has yet to respond.
3. Derivative Works.
ł Antonick v. Elec. Arts, No. 11-1543, 2014 WL 245018 (N.D. Cal. Jan. 22, 2014)
In 1984, EA hired Antonick to write source code for a computer game called John Madden Football. The contract also gave Antonick the right to royalties on “Derivate Works” within the meaning of Copyright law. In 2011, Antonick brought suit against EA alleging breach of contract and fraud based on a failure to pay him royalties on the allegedly derivative work, Sega Madden. Following a two-phase trial in which the jury found EA breached its contract with Antonick for failing to pay royalties on the sales of Sega Madden, as a derivative work, EA was granted a motion for a new trial and judgement as a matter of law regarding Phase II of the jury trial.
The court found that even construing the evidence in the light most favorable to Antonick, there is no legally sufficient basis for the jury’s verdict in Phase II that any of the Sega Madden games as a whole are virtually identical to John Madden as a whole because there was no evidence of the games in their entirety provided at
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trial to make this comparison. Consequently, Antonick did not prove any of the Sega Madden games are infringing works, and EA is entitled to judgment as a matter of law
ł Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., 722 F.3d 591 (4th Cir. 2013)
Plaintiff provides multiple listing services for real estate and specifically provides a database of photographs. Defendant, a competitor, owns and operates a real estate search engine providing real estate ratings and rankings. Plaintiff sued because defendant was creating a derivative work of plaintiff’s photos from the plaintiff’s photo database and, without authorization, was publically displaying and reproducing them as derivative work. Defendant claimed that plaintiff lacked standing because the assignments of the photographs to the plaintiff were inadequate. The Fourth Circuit affirmed the trial court holding that the Electronic Signature in Global and National Commerce (ESIGN) Act was satisfied and the assignments using electronic signatures were valid and enforceable.
4. Standing.
ł Alaska Stock, LLC v. Houghton Mifflin Harcourt Publ’g Co., 747 F.3d 673 (9th Cir. 2014).
Alaska Stock, a stock photography company, receives copyright assignments from photographers for the purpose of bulk registration. To register these photos with the Copyright Office, Alaska Stock provides a CD or database of photos and lists only three of the photographers’ names. It then merely lists the remaining number of photographers whose works are included on the CD or database.
When Alaska Stock sued Houghton Mifflin Harcourt claiming infringement of individual photos registered in this bulk manner, the district court dismissed Alaska Stock’s claims because it held that Alaska Stock had registered only the collection of photos, not the individual photos themselves. To the district court, the Copyright Act unambiguously requires a registrant to list the title and author for each work the registrant intends to register.
The Ninth Circuit reversed, holding that registration of a collective work also registers the underlying constituent works if those works are owned by the registrant. The Ninth Circuit explained that the Copyright Office had met with the stock photography trade association and developed special procedures to allow bulk
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registration of photographs in the 1990s. Furthermore, for over three decades the Copyright Office has understood registration of a collective work to also register independently copyrightable works contained within the collective work. The Ninth Circuit reasoned that requiring registration of each individual work contained within a collective work would render portions of the Copyright Act superfluous and would not give due deference to the Copyright Office’s interpretation of the Act. Moreover, requiring the expensive and error-prone tedium of typing all the photographers’ names into records was bad policy. The Ninth Circuit was in good company in reaching its outcome: the Second, Third, Fourth and Fifth Circuits agreed, as does Nimmer on Copyright and the Copyright Office itself.
ł Minden Pictures, Inc. v. John Wiley & Sons, No. 14-15267, 2015 WL 4547593 (9th Cir. July 29, 2015).
Minden Pictures, a photography stock house, received from photographers the exclusive right to license the photos that photographers submit, subject to certain exceptions.
When Minden sued John Wiley & Sons for copyright infringement, the Ninth Circuit held that Minden had statutory standing to file infringement claims, and reversed the district court. Under the 1976 Act, a party with an exclusive right in a work, either via exclusive license or assignment, has standing to sue. Wiley argued that Minden did not have an exclusive license because the photographers retained certain licensing rights in the exceptions to the exclusive license. The Ninth Circuit rejected Wiley’s argument because co-authors can have exclusive rights even though the rights are shared. The Court held that a license is exclusive when the copyright holder grants a specific use and promises not to grant that use to others. Minden had such a promise.
ł McDonald v. Brown, No. 12-07109, 2014 WL 116003 (S.D.N.Y. Jan. 13, 2014)
McDonald is a screen writer who authored “Remnants” which he intended to turn into an indie film. Brown was interested and agreed to finance the film. Copyright assignments were executed, which moved ownership of the screenplay through several entities and ending in ownership by Conigliaro, who paid valuable consideration and had no knowledge of any fraud in the earlier assignments of the work.
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The district court ruled that Conigliaro was a bona fide purchaser and granted summary judgment. McDonald was found to have no valid ownership of the copyright.
ł Righthaven LLC v. Hoehn, 716 F.3d 1166 (9th Cir. 2013)
Plaintiff was the first copyright troll having been founded solely for the purpose of pursuing copyright infringement actions. Plaintiff sued defendant, a blogger, for posting unauthorized articles from newspapers that had authorized the plaintiff to enforce their copyrights. The Ninth Circuit affirmed the district court’s dismissal of the plaintiff’s claim for lack of standing and vacated the district court’s grant of summary judgment on the fair use defense. The Ninth Circuit pointed out that ‘the right to sue for infringement is not one of those enumerated under Section 106 of the Copyright Act. As the ‘right’ that was transferred does not exist, Righthaven lacked standing to sue.
F. CONTRACTS AND LICENSES
ł Carlin v. Bezos, No. 15-2774, 2016 WL 2957212, (E.D. Penn. May 23, 2016)
Joseph Carlin provided his four self-published books to CreateSpace, a subsidiary of Amazon. Under the service agreement, Carlin granted CreateSpace a non-exclusive license to publish, distribute, and sell its books through Amazon and other retailers in exchange for royalties. Carlin brought a claim, pro se, for one count of copyright infringement. He alleged that Amazon did not pay him all the royalties he was due and requested $100 million in damages. As evidence of the withheld royalties, Carlin submitted screenshots of copies of his book being offered for sale online. Amazon presented evidence that the copies had not been sold, and were merely available for sale to customers.
The court acknowledged that it is possible to maintain a claim for copyright infringement despite a license agreement if the licensee exceeds the scope of the license. For the purposes of its analysis, the court assumed that failure to make agreed-upon royalty payments constitutes copyright infringement. However, the court found that on the evidence presented, no reasonable trier of fact could find that Amazon had sold additional copies of Carlin’s books without paying royalties. The district court granted summary judgment to Amazon and denied Carlin’s cross-motion for summary judgment. The Third Circuit affirmed.
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ł Karlson v. Red Door Homes, No. 14-12371, 2015 WL 2117247 (11th Cir. May 7, 2015) (affirming district court summary judgment ruling), 18 F. Supp. 3d 1301 (N.D. Ala. 2014) (summary judgment ruling in favor of defendants)
In May 2015, the Eleventh Circuit affirmed a district court’s ruling that home designer Keith Karlson could not proceed with copyright infringement claims against home design distributors Red Door Homes, LLC (“Red Door”) and SMA Operations Management, LLC (“SMA”) for unlawfully selling his rendering of homes to third parties. Since the district court found that Karlson granted Red Door and SMA a non-exclusive implied license to use and distribute the renderings, the Eleventh Circuit affirmed the district court’s grant of summary judgment in favor of the distributors.
ł Complex Systems v. ABN AMRO Bank N.V., No. 08-07497, 2014 WL 1883474 (S.D.N.Y. May 9, 2014)
Complex licensed a software application called BankTrade to ABN Amro Information Technology Services Company (“IT”), a subsidiary of ABN, in 1997. In 2007, ABN Amro sold some of its assets, including its subsidiary IT. ABN Amro continued to use the BankTrade software despite no longer owning the subsidiary that licensed the software and therefore no longer having the right to use of the copyrighted software. In October 2013, the Southern District of New York ruled in favor of Complex on summary judgment as to all Complex’s claims and all ABN Amro’s defenses. Complex almost immediately filed a motion for a permanent injunction, seeking to compel ABN Amro to stop using BankTrade, as it did not have a license to the copyrighted material.
The court granted the permanent injunction, ordering that ABN Amro must transition entirely off of BankTrade within one year and may not use BankTrade in connection to any new financial transaction received within sixty days of the order.
In so ordering, the court rejected ABN Amro’s contention that Complex suffered only harms that could be resolved with damages payments. The court, fearing the imposition of “a perpetual, compulsory license” on Complex, cautioned that “to deny injunctive relief would convey to licensees that they hold the ultimate trump card in any negotiation[, since] if they reach an impasse, they could simply keep using the software and ask the court to impose a license complete with fee and other business terms.” The court also concluded that the balance of hardships is decidedly in favor of Complex, since failing to grant the injunction would diminish
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Complex’s negotiating leverage and sanction ABN Amro doing “that which it has no right to do” in the first place.
ł Rock River Communications, Inc. v. Universal Music Group, Inc., 745 F.3d 343 (9th Cir. 2014).
In a declaratory judgment action by a licensee filed in response to infringement lawsuit threats by UMG, the court held that Rock River was not required to affirmatively prove the validity of its recording licenses, based on Rock River’s long-standing good faith licensing and use of the songs, and allowed the Rock River claim for intentional interference with economic advantage (for threatening suit) to proceed. This case may be helpful to anyone who negotiates for and receives a license in good faith only to learn later than someone other that the licensor claims superior rights in the licensed work.
G. SUBSTANTIAL SIMILARITY
ł Lumos, Inc. v. LifeStrength, LLC, No. 12–01196, 2014 WL 4355451, 2014 U.S. Dist. LEXIS 124298 (D. Utah Sept. 3, 2014)
Lumos designs, develops, and distributes sports medicine products. In 2009 and 2012, Lumos published short online instructional videos demonstrating the technique for applying kinesiology tape, or KT tape, to help reduce muscle soreness. Lumos then registered the KT-tape videos as a collection and sued a competing KT-tape producer, Lifestrength, alleging copyright infringement of Lumos’s online videos. The court granted Lumos’s motion for summary judgment on copyright infringement.
The court held that Lumos had a valid copyright. Although Lifestrength identified an error in Lumos’s registration, the court reasoned that Lumos’s mistake was inadvertent, was not intended to defraud the Copyright Office, and was corrected by a supplemental registration which the Copyright Office approved.
The court held that Lifestrength had copied Lumos’s videos. Lifestrength conceded access to the Lumos videos. Also, on the test of probative similarity, a test less demanding than substantial similarity, the court found actual copying because the words spoken in some of the videos were nearly identical.
ł NTE LLC v. Kenny Construction Co., No. 14-09558, 2015 WL 500623 (N.D. Ill. Feb. 4, 2015)
The court rejected NTE’s request for a preliminary injunction against Kenny Construction Company, “Kenny”, based on claims of copyright
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infringement, breach of contract, and misappropriation. NTE met the minimum standard of likelihood of success on NTE’s claims that Kenny used NTE proprietary data in violation of the Service Agreement and in violation of copyright law, by printing screenshots of proprietary information in order to input into Kenny’s own system. However, NTE did not establish that a preliminary injunction would be required to prevent irreparable harm, an inadequate remedy at law, nor harm to the public interest. The court denied NTE’s motion to enjoin Kenny from using potentially protected data.
ł Sieger Suarez Architectural Partnership, Inc. v. Arquitectonica Intern. Corp., 998 F. Supp. 2d 1340 (S.D. Fla. 2014)
This District Court Judge has style. He begins this opinion with a quote attributed to Mies van der Rohe: “Architecture starts when you carefully put two bricks together. There it begins.” The facts are then laid out of this dispute between two leading Florida architecture firms. One firm alleges that that other infringed a large condominium building. The analysis focuses on the Architectural Works sections of the Copyright Act which states that an architectural work does “include the overall form as well as the arrangement and composition of the spaces and elements in the design…” but not the “individual standard features”.
In reaching the holding of “Plaintiff has failed to state a claim of copyright infringement because there is no showing of substantial similarity as a matter of law”, the court first was dismissive of other courts’ application of the substantial similarity test. The court crafted a new ‘fluid test’ for analyzing whether to find infringement. Four factors form the new ‘fluid test’:
(1) The manner by which the design is achieved;
(2) The use of structure and details, including features used to express vision;
(3) How the individual interacts with the space; and
(4) Location criteria that determine the arrangement of the elements.
ł Reno-Tahoe Specialty, Inc. v. Mungchi, Inc., No. 12-01051, 2014 WL 553181 (D. Nev. Feb. 10, 2014)
Plaintiff in 1997 took many photographs of the Las Vegas Strip and created a singular work called “695 View” and then a series of collateral products such as key chains, hats, and picture frames. There were two copyright registration filings in 1999 and again in 2003 for some of the photos and
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some of the collateral products, but not for the composite work “695 View.” The registrations covered the derivative works and not the underlying work. The court declined the invitation to grant summary judgment noting that the defendant had failed to exploit the weakness of the registration; and saying that the substantiality of infringement, if at all, is a jury question.
ł Building Graphics, Inc. v. Lennar Corp., 708 F.3d 573 (4th Cir. 2013)
BGI is an architectural firm with a specialty of single-family homes. Three BGI home plans were purchased by three homebuilders in three towns in the South East of the U.S.
Lennar is a homebuilder in eighteen states. BGI claimed that Lennar infringed the three BGI home plans. Lennar did not purchase the BGI home plans; and no copies were located in Lennar’s possession. BGI pled that Lennar had access.
The Court, after considering that BGI had failed to demonstrate either a chain of events supporting access or wide dissemination, held that BGI had ‘at best shown a mere possibility that Lennar might possibly have considered the BGI plans at issue.
The trial court granted summary judgment in favor of Lennar and the Fourth Circuit affirmed.
ł Zalewski v. Cicero Builder Dev. Inc., 754 F.3d 95 (2d Cir. 2014)
Zalewski, an architect who creates residential home designs, licensed several designs to Cicero and another builder. After the licenses expired, Zalewski claims the builders hired two other designers to customize his designs and built homes based on the infringing designs. Zalewski brought actions for infringement against both builders and designers.
The court affirmed the district court’s dismissal and summary judgment in favor of the defendants, holding that any copying of Zalewski’s designs extended only to unprotected elements of his architectural works.
The court found that Zalewski’s designs were copyrighted and that the defendants also likely copied his designs based on the probative similarity of the two designs. However, the design similarities were a result of consumer expectations—such as closets in every bedroom, design parameters controlled by the consumer or the lot size—such as the size of the rooms, or standard design features of all colonial style homes, which any architect is bound to draw from in designing a home of that style; thus, the similarities in the designs were limited to unprotected elements.
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Moreover, there were subtle differences in the designs in terms of their room arrangements and the size, paneling, and framing of doors and windows, changes that constituted significant differences in design given the constraints of the common colonial architectural style. Because Zalewski adhered to a commonly used pre-existing style to create his design, copying would have needed to be much closer and more exact to constitute infringement.
ł Harney v. Sony Pictures Television, Inc., 704 F.3d 173 (1st Cir. 2013).
A photo taken serendipitously in front of the Church of the Advent on Boston’s Beacon Hill by Harney on Palm Sunday becomes the basis for a copyright infringement claim. The photo coincidently captured Clark Rockefeller and his seven-year old daughter Reigh. Rockefeller, the defendant in a much publicized trial held in Massachusetts, in which Rockefeller, a long standing con artist, was accused and later convicted of kidnapping his minor daughter, Reigh. Harney's photograph was used by the police and FBI in order to help find Clark Rockefeller and to effectuate the return of Reigh Rockefeller to her mother and legal guardian, but no copyright infringement claim arose for that copying. This copyright infringement action arose because Sony reshot the father/daughter image when it produced a television movie based on the Clark Rockefeller story, the kidnapping of Reigh Rockefeller, and the resulting trial. That movie is entitled "Who is Clark Rockefeller?" In 2009, A & E disseminated the movie on cable television throughout the United States. Sony allegedly used Harney's photograph in order to create an image using the actors who portrayed Clark and Reigh Rockefeller in the movie.
The court found no copyright infringement in the reshot image. There were a variety of differences in the composition between the original Harney photograph and the Sony reshot image, such as the absence of the Church of the Advent in the background, lighting and other compositional features.
ł TufAmerica, Inc. v. Diamond, Memorandum and Order, Case No. 12-Civ- 3529 (AJN) (S.D.N.Y. Mar. 24, 2015) (dismissing TufAmerica’s suit for lack of standing); see also Tufamerica, Inc. v. Diamond, 968 F. Supp. 2d. 588 (S.D.N.Y. 2013) (rejecting in part and granting in part motion to dismiss sampling infringement claims).
In May 2012, TufAmerica, Inc. (TufAmerica) filed a lawsuit against various record labels and the Beastie Boys (Michael Diamond, Adam Horowitz, and the late Adam Yauch), arguing that the Beastie Boys used unlicensed samples ranging in length from one to six seconds of various Trouble Funk works in several tracks on their 1989 album Paul’s Boutique.
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Robert Reed, Tony Fisher, and James Avery formed Trouble Funk in the 1970s with no formal agreement governing their relationship with each other. In 1999, TufAmerica entered into two administration agreements (the “1999 agreements”) with Reed and Fisher to govern compositions and master recordings. Reed and Fisher purported to sell, assign, transfer, and set over to TufAmerica the exclusive rights to all of Trouble Funk’s works. Later in 2012, TufAmerica entered into a separate agreement with Avery to “exclusively license … his right to sue and recover on all accrued and future causes of action in connection with … Trouble Funk Copyrights,” but Avery granted no other rights to TufAmerica.
In September 2013, the court rejected in part and granted in part a motion to dismiss, finding four of six sampling claims de minimis—falling below the requisite quantitative and qualitative threshold to be entitled relief. Tufamerica, Inc. v. Diamond, 968 F. Supp. 2d. 588 (S.D.N.Y. 2013). The Beastie Boys argued that TufAmerica’s claims failed because TufAmerica admitted that the Trouble Funk samples were “effectively concealed to a casual listener.” Sophisticated software capable of closely analyzing the subject work for samples made TufAmerica’s claims possible and “only after conducting a careful audio analysis of [each Beastie Boys song] that included isolating the suspected portion of the recording and comparing it with various parts of [the Trouble Funk song]” was TufAmerica able to determine the Beastie Boys sampled Trouble Funk tracks. The court dismissed the argument because “the focus is on the quantitative and qualitative aspects of the allegedly infringed sample to the pre-existing work, not to the infringing work.” The court then found a one-second and three-second sample to be of sufficient quantitative and qualitative significance in Trouble Funk’s work and denied in part the Beastie Boy’s motion to dismiss.
In March 2015, the court dismissed TufAmerica’s lawsuit for lack of standing. The court found that the 1999 agreements did not transfer exclusive rights to TufAmerica because Avery retained all of his rights as a co-owner of the works. The court also held that even if Avery’s agreement in 2012 could be read with the 1999 agreements, Avery’s agreement did not convey enough rights to be a valid basis for standing because his agreement only contained a bare right to sue, which is not sufficient to create an exclusive license. Without the complete transfer of exclusive rights from all three members of Trouble Funk, TufAmerica did not obtain the right to sue.
On March 9, 2016, the court granted the Beastie Boys’ (and defendant UMG Records) motion for attorney fees and costs. The Copyright Act gives courts broad discretion whether or not to award fees and costs in copyright cases. The court found, because TufAmerica lacked standing to sue, that TufAmerica’s claims were “clearly without merit” and “objectively
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unreasonable” and granted substantial fees and costs totaling over $800,000 to the Beastie Boys.
We commend the court’s interim September 2013 decision in this case to you as the most thoughtful and detailed analysis we have seen to date of copyright claims for the use of unlicensed music samples. See TufAmerica, Inc. v. Diamond, 968 F. Supp. 2d. 588 (S.D.N.Y. 2013)
ł Pringle v. Adams, 556 F. App’x 586 (9th Cir. 2014)
The Ninth Circuit determined that the catchy and enormously successful Black Eyed Peas’ 2009 song “I Gotta Feeling” did not copy the hook from Pringle’s virtually unknown 1998 “Take a Dive.”
ł Automated Solutions Corp. v. Paragon Data Sys., 756 F.3d 504 (6th Cir. 2014)
Automated and Paragon contracted to develop software (Single Copy Distribution System, or “SCDS”) for the Chicago Tribune, which the Tribune then implemented. Tension developed between the two companies, and Paragon terminated the contract. Automated obtained a declaration in Ohio state court that it was the sole owner of the SCDS, and then it alleged several counts against Paragon in federal court, including copyright infringement. Automated alleged that Paragon had copied the SCDS in their DRACI software, developed later for another newspaper.
The district court granted summary judgment to defendant Paragon on all claims, and the Sixth Circuit affirmed. The court held that Automated had failed to submit evidence identifying protectable elements of the SCDS, and that in any case, there was insufficient evidence to imply that DRACI is substantially similar to SCDS.
ł Oracle America, Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014) and C- 10-03561 WHA (N.D. Cal. 2016).
API packages are interfaces used by programs in communicating with one another. Many software developers write in the Java language, developed by Oracle’s predecessor, and use Oracle’s Java API packages, in developing applications for laptops, smartphones, and other devices. The API packages have two kinds of code: the declaring code is a short header identifying a task, while the longer implementing code contains the complete instructions to the device performing the task. In district court, Google obtained a judgment allowing it to use Oracle’s Java API packages in developing Google’s own Android mobile operating system. The district court held that the declaring code and overall structure were not subject to copyright protection.
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The Federal Circuit disagreed with the district court, concluding instead that the declaring code was entitled to copyright protection. The merger doctrine did not preclude copyright protection, as there could exist many ways for Oracle to create the declaration code, and therefore the idea and expression do not merge. The court also held that the declaring code exhibited sufficient creativity to be copyrightable even though it consists of short phrases. The scenes a faire doctrine was held to be irrelevant to the verdict: Google, it found, improperly focused its scenes a faire claim on the circumstances presented to it rather than to Oracle, which represents a misunderstanding of the doctrine.
As to the structure, sequence, and organization of API packages, the court held that these structures, which are original and creative, merit copyright protection despite being functional. Oracle does not have copyright in the idea of organizing functions, but rather over its particular way of naming and organizing the 27 Java API packages at issue.
The court also held that the district court erred in invoking interoperability in its copyrightability analysis. Interoperability belongs instead in an analysis of fair use.
The district court jury hung on Google’s fair use defense, and the Federal Circuit remanded the fair use matter for further proceedings, as the record does not contain sufficient factual findings on which the court could base a decision.
Also at issue were a specific computer routine called rangeCheck and eight decompiled security files. Google’s copying of the nine-line rangeCheck code and the security files was held to be more than de minimis, and therefore the court affirmed the holding of infringement.
A jury trial on the question of fair use began in the Northern District of California on May 9 and concluded on May 23, at which time the jury received detailed and comprehensive jury instructions on fair use from the court for the jury’s deliberations. On May 26, the jury reached a verdict that the Google use of the Oracle’s software was a fair use.
On June 8, 2016, the court upheld the jury verdict in an Order Denying Rule 50 Motions.
ł Paycom Payroll v. Richison, 758 F.3d 1198 (10th Cir. 2014)
Defendant Richison wrote two software programs for use at Ernest Group, a payroll processing company that he founded (which did business as Paycom Payroll). Richison left the Ernest Group and formed a new payroll processing company, writing two additional software programs. The parties agreed that the district court would appoint a special master to
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review, analyze, and report to the court concerning whether this fourth program infringed upon either of the first two, whose copyrights belong to the Ernest Group. This special master concluded that the program infringed both of Ernest Group’s programs.
The court held that the special master’s report was flawed because it did not apply the “abstraction-filtration-comparison” test properly. The report also relied on an infringement analysis that began and ended with “copying in fact,” apparently ignoring the question of whether the elements copied by Richison were protected by copyright. The court therefore vacated and remanded the district court’s order in an effort to obtain a more through report.
ł Edwards v. Raymond, 22 F. Supp. 3d 293 (S.D.N.Y. 2014)
Edwards and his co-authors composed an original song entitled “Caught Up,” which they shared with artist Usher Raymond’s record label. They brought a copyright claim against Usher and his associates after a song of the same name appeared on his subsequent and highly profitable album.
The district court dismissed the copyright claim based on its conclusion that the two songs were not substantially similar. The court determined that “caught up” is a common phrase that was not original to Edwards, and its use in the structure of the song was not an original contribution protected by copyright. Additionally, the court found that the lyrics of both songs expressed similar ideas, but that the mode of expression itself was not sufficiently similar.
Moreover, the court concluded the music and lyrics of the songs considered as a whole were not substantially similar because Edwards’ version was more upbeat, a duet, and largely a rap song. By contrast, Usher’s version had a contemplative tone, and he sung all of the lyrics. Finally, similarities in the lyrics were limited to common unprotectable words and phrases.
ł Francescatti v. Germanotta, No. 11-CV-05270, 2014 U.S. Dist. LEXIS 81794, 2014 WL 2767231 (N.D. Ill. June 17, 2014)
Francescatti is a singer/songwriter and the registered author of a song call “Juda,” which she claims was infringed upon by a similarly named song, “Judas,” released by recording artist Lady Gaga (Germanotta). Francescotti claims Lady Gaga and her associates were exposed to the song through interactions with certain individuals—also co-defendants— who worked on and had professional knowledge of both songs.
The court granted summary judgment in favor of Lady Gaga and her associates, finding the songs were not substantially similar. The court
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determined that while the nature and timing of the collaboration and the clearly documented communication between the parties created a reasonable possibility that Lady Gaga and her associates accessed the song, no reasonable juror could find the two works to be substantially similar.
In deciding to apply expert testimony to determine substantial similarity between the two musical works, the court concluded that the music industry has become increasingly complex, and particularly, that a lay person may not be capable of assessing the similarities in musical works where computers and other technological enhancements were used during the production process. [J. Michael Keyes cited with approval]. In other words, the court concluded that computer enhancement should not be permitted to mask legally sufficient similarities between works and that experts can help educate the fact finder as to when this is the case.
Additionally, the court found that while Francescatti established copying under the extrinsic test, she failed to meet the requirements of the intrinsic test. Relying on expert testimony, the court concluded that the extrinsic test was satisfied because the songs had similar titles—Juda and Judas— which were used repetitively as a refrain throughout the song in a monotone fashion; however, the court declined to consider expert recommendations where the experts altered the works to enhance their similarity.
Conversely, the court concluded as a matter of law that the songs were intrinsically dissimilar from the perspective of a lay person because the lyrics were mostly different, the themes were different, and they sounded musically different in that Francescatti’s song was slower, more lyrical, recorded live, and lacked the EDM and digital enhancements of Lady Gaga’s song. Moreover, the similar titles and four common 16th notes were merely cosmetic and did not give rise to a similar concept and feel. Finally, the court concluded that song titles, repetition of song titles in the lyrics, and simple repetition of a note four times is ordinary and unprotectable expression.
x Williams v. Bridgeport Music, Inc., Case No. CV13-06004 (C.D. Cal. July 14, 2015) (Minute Order addressing various post-trial motions, awarding injunctive relief for ongoing royalties, and reducing damages award).
Robin Thicke, Pharrell Williams, and Clifford Harris, Jr. (better known as “T.I.”) filed a declaratory action in August 2013 to adjudicate allegations by the successors-in-interest to Marvin Gaye that “Blurred Lines” copied Marvin Gaye’s “Got to Give It Up.” Gaye’s children, the current copyright owners of his music, filed counterclaims against Williams, Thicke, Harris, and a variety of recording companies and publishers. A conflict of interest
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cross-suit by the Gaye children against EMI-Sony/ATVE, which owned rights to both “Blurred Lines” and “Got to Give It Up,” was settled in January 2014. A jury then decided the case in March 2015.
Jury Instruction No. 43 informed the jury that the Gaye children must show “both substantial ‘extrinsic similarity’ and substantial ‘intrinsic similarity.’” Extrinsic similarity considers “the elements of each of the works” and the jury decides if the songs are substantially similar. Alleged similarities included such matters as: the “‘Signature Phrase,’ hook, ‘Theme X,’ bass melodies, keyboard parts, word painting, lyrics, [and] rap v. parlando.” Instruction No. 43 stated that “[i]ntrinsic similarity is shown if an ordinary, reasonable listener would conclude … total concept and feel of the [works] are substantially similar.” A complete copy of Instruction No. 43 is provided on the next page.
The jury cleared Harris of the infringement allegations against him but held Thicke and Williams liable. The jury held that the Gaye children suffered $4 million in actual damages and determined that Thicke and Williams realized profits attributed to their infringement in the respective amounts of $1,768,191 and $1,610,455. Statutory damages were additionally awarded for $9,375, making Thicke and Williams liable for roughly $7.4 million in damages.
In July 2015, the court granted the (alternative) motion of the Gaye children to receive 50% of future royalties paid to Thicke and Williams for ongoing use of the “Blurred Lines” composition, and reduced the jury damages award by approximately $2 million.
Williams v. Bridgeport Music, Inc. Jury Instruction No. 43:
“INSTRUCTION NO. 43
In order for the Gaye Parties to meet their burden of proof to show by a preponderance of the evidence that there is substantial similarity between one of the Gaye Parties’ works and one of the Thicke Parties’ works, the Gaye Parties must show that there is both substantial “extrinsic similarity” and substantial “intrinsic similarity” as to that pair of works.
Extrinsic similarity is shown when two works have a similarity of ideas and expression as measured by external, objective criteria. To make this determination, you must consider the elements of each of the works and decide if they are substantially similar. This is not the same as “identical.” There has been testimony and evidence presented by both sides on this issue, including by expert witnesses, as to such matters as: (a) for “Got to Give It Up” and “Blurred Lines,” the so-called “Signature Phrase,” hook, “Theme X,” bass
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melodies, keyboard parts, word painting, lyrics, rap v. parlando; and (b) for “After the Dance” and “Love After War,” the chorus vocal melody and chords. The Gaye Parties do not have to show that each of these individual elements is substantially similar, but rather that there is enough similarity between a work of the Gaye Parties and an allegedly infringing work of the Thicke Parties to comprise a substantial amount.
Intrinsic similarity is shown if an ordinary, reasonable listener would conclude that the total concept and feel of the Gaye Parties’ work and the Thicke Parties’ work are substantially similar.
In considering whether extrinsic or intrinsic similarities are substantial, you may consider whether portions allegedly copied are either qualitatively or quantitatively important to either of the Gaye Parties’ works. A portion of a work is qualitatively important if, regardless of its size, it is shown to be very important to that work. The copying of a qualitatively important portion of a work may support a finding of substantial similarity even if that portion is very short. A portion of a work is quantitatively important if it comprises a significant portion of the work.”
ł Olem Shoe Corp. v. Wash. Shoe Corp., 591 F. App’x 873 (11th Cir. 2015).
In 2009, Washington Shoe sent Olem Shoe cease-and-desist letters claiming copyright infringement in the design of Washington’s Zebra Supreme and Ditsy Dot boots. These letters did not identify Washington’s copyrights by registration number or provide an image of the copyrighted shoes. Therefore, Olem’s counsel requested identifying registrations, which Washington then provided for the Disty Dot boots alone. Initially, Olem stopped selling its zebra-like and polka-dot shoes. After the Copyright Office failed to locate Washington’s registrations, however, Olem filed suit seeking a declaration of non-infringement. Washington counterclaimed alleging willful infringement.
The district court held on summary judgment that Olem had intentionally, but not willfully, infringed Washington’s copyrights. The parties cross- appealed and the Eleventh Circuit affirmed.
First, the Eleventh Circuit held that Olem had not willfully infringed because Olem did not have actual knowledge of its infringement and because Olem did not act with reckless disregard. The cease-and-desist letters did not include reference to copyright registrations or images of Washington’s infringed boots. Further, Olem ceased sales while it took steps to determine if Washington’s assertions of copyright ownership were true. Indeed, Washington ended up having to correct issues with its registrations. The striking similarity in the two parties’ designs was
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evidence of copying, but not willful copying. Also, Washington was unable to substantiate its assertions that sourcing goods from China increased the probability of infringement. Thus, no reasonable jury could find Olem’s infringement willful.
Second, the Eleventh Circuit affirmed that Olem had infringed. Washington owned valid copyrights. And circumstantial proof indicated actual copying: Washington widely disseminated its shoes and Olem’s shoes were substantially similar to Washington’s. Finally, the Eleventh Circuit held that district courts could make findings of substantial similarity without a jury.
ł Paramount Pictures Corp. v. Axanar Productions, Inc. 15-cv-09938, Dkt. 43 (C.D. Cal. May 9, 2016)
Paramount and CBS are the owners of Star Trek and its copyrights, which include hundreds of episodes of television, a dozen feature films, and countless other entries in the series such as novels and various merchandise. Axanar Productions released a short fan-film set in the Star Trek universe called Prelude to Axanar. Axanar is attempting, through crowd-funding platforms like Kickstarter, to produce a related feature film. Based on the planned feature film, Paramount and CBS sued Axanar for copyright infringement and asked the court to enjoin production of the feature film. Axanar moved to dismiss. Axanar specifically cited Paramount’s failure to identify each individual copyrighted work or element that allegedly was infringed, and argued that many if not all of the individual elements cited in the complaint--such as the Klingon language-- were not eligible for copyright protection.
The district court denied the motion to dismiss, reasoning that Paramount had provided enough details of the copyrighted works, including specific episodes of the television series, individual films, and some of the allegedly copied elements such as the U.S.S. Enterprise space ship, to put Axanar on sufficient notice. The court also held that it did not need to decide whether each element was protectable because Paramount was not claiming infringement of the individual elements, and included them in the complaint as examples to demonstrate how Axanar was substantially similar to the copyrighted Star Trek works as a whole. Furthermore, even if elements were not protectable “in a vacuum,” the court noted that combined together in sufficiently creative ways, unprotectable elements can gain some copyright protection.
An institute called the Language Creation Society submitted an amicus brief on the specific issue of the copyrightability of the Klingon language, and fictional languages generally, arguing that as a living and evolving language Klingon is not copyrightable. Because the Court did not reach
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the copyrightability of individual elements of the Star Trek universe, it declined to review the brief.
According to various media outlets, a settlement in this case is pending.
ł Croak v. Saatchi & Saatchi, N. Am., Inc., 15 Civ. 7201, 2016 WL 1274713 (S.D.N.Y. March 31, 2016)
In 1983 Croak, a visual artist, displayed a large multimedia sculpture depicting a taxidermied horse with wings attached bursting out of the roof of a lowrider car. Saatchi & Saatchi, an advertising agency, developed an ad campaign for Toyota’s RAV-4 SUV in 2014 that featured a RAV-4 with an oversized pegasus stuffed animal strapped to the car. Croak sued, alleging copyright infringement. Croak could not copyright the idea of a winged horse, a car, or even the idea of combining them in some fashion. Thus, to prove infringement, he would have to demonstrate that Saatchi & Saatchi’s expression of those ideas was “substantially similar” to his. The southern district of New York ruled, on a motion to dismiss by Saatchi & Saatchi, as a matter of law there was no substantial similarity between the two works and therefore no infringement.
The court noted that, despite a few superficially similar elements such as the presence of a large winged horse juxtaposed with a vehicle, no reasonable jury could find that the “total concept and overall feel” of the works was substantially similar. The court found meaningful differences in, among other elements, the horses (real albeit taxidermied versus a child’s toy), vehicles (a “cool” lowrider versus a family SUV), and perhaps most importantly the overall tone of the works (cool and edgy versus playful and warm). Thus, the court reasoned an ordinary observer would not regard the aesthetic appeal of the works as the same or perceive Saatchi & Saatchi as having improperly copied Croak’s expression.
ł Hayuk v. Starbucks Corp., 15CV4887, 2016 WL 154121 (S.D.N.Y. Jan. 12, 2016)
Maya Hayuk, a visual artist, brought a copyright infringement lawsuit against Starbucks in the southern district of New York. Hayuk alleged that Starbucks improperly copied her art for a promotional campaign. Hayuk’s art style consists of brightly colored geometric shapes, and the ad campaign had a similar style. Hayuk argued that Starbucks infringed the “core” of her work, overlapping colored rays, and through the use of cropped and rotated pictures demonstrated some close similarities. The Court granted Starbucks’ motion to dismiss, holding that there was no substantial similarity because Starbucks at most copied Hayuk’s general style, which is not protectable. The court noted that colors and geometric shapes are ideas in the public domain. Furthermore, any similarities to the cropped and rotated pictures were largely irrelevant because Starbucks did
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not copy the “total concept and feel” of the protectable parts of Hayuk’s work.
ł Gold Glove Productions, LLC v. Handfield, 14-55797, 2016 WL 1553912 (9th Cir. Apr. 18, 2016)
On appeal from the central district of California, the Ninth Circuit upheld a grant of summary judgment in favor of the producers of the baseball movie “Trouble with the Curve.” Gold Glove Productions sued over the movie’s alleged similarities to its own unproduced screenplay “Omaha.” The court found that, while the two stories had some broad similarities (both were father-daughter baseball stories), the similarities were the sort of common storytelling scenes-a-faire that are not copyrightable. Thus both the district court and the Ninth Circuit, applying the “extrinsic test” for substantial similarity, found the more specific, protectable elements quite different as a matter of law.
ł Folkens v. Wyland (NFN), 2:14-cv-02197-CKD, 2016 WL 1375584 (E.D. Cal., Apr. 7, 2016)
Folkens, a marine researcher and the illustrator of a picture of two dolphins under the sea, sued Wyland for copyright infringement for Wyland’s allegedly similar painting, also of two dolphins under the water. However, a picture of two dolphins underwater is an unprotectable idea, and Folkens failed to identify any protectable elements in his illustration that Wyland’s picture resembled at all, much less one that passed the extrinsic and intrinsic tests for substantial similarity. As the court put it, “much like a narwhal's tusk, Plaintiff's arguments do not help it survive in the sea of Ninth Circuit precedent.”
ł Skidmore v. Led Zeppelin, CV 15-3462, 2016 WL 1442461 (C.D. Cal. Apr. 8, 2016)
In May 2014, the Randy Craig Wolfe Trust filed a lawsuit contending that Led Zeppelin’s “Stairway to Heaven” (released in 1971) infringed the song “Taurus,” which the late Wolfe’s band Spirit released in 1967. In April 2015 a federal court in the central district of California denied summary judgment on the issue of whether “Stairway to Heaven” is substantially similar to “Taurus,” allowing the case to proceed to trial in June 2016. However, the court dismissed claims against all defendants that did not perform or distribute “Stairway to Heaven” before 2011 on statute of limitations grounds. The court also dismissed the Wolfe Trust’s somewhat fanciful claims for equitable relief based on “Right of Attribution” and “Falsification of Rock’n’Roll History.”
However, although the Wolfe Trust is able to proceed to trial, it faces a number of tough issues. The trust must prove access, substantial
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similarity based only on the sheet music (sound recordings did not have a protected public performance right before 1972), ownership, damages, non-abandonment/non-waiver, and that laches does not bar an award of profits.
Trial in the case began in June 2016.
H. TECHNOLOGIES
ł American Broadcasting Cos. v. Aereo, 134 S.Ct. 2498 (2014).
Aereo, which launched in February 2012, used thousands of dime-sized antennas to pick up free, over-the-air TV signals, which it sent to customers over the Internet for a monthly fee starting at $8. The startup infuriated the major broadcasters, including NBC, FOX, ABC and CBS, which sued the company right after it launched, charging that the service was illegal because it doesn’t pay to pick up the signals it streams to users.
The Second Circuit affirmed the district court’s refusal to enjoin Aereo from transmitting recorded television programs to paid subscribers through the Internet. A subscriber may sign into an account and select a program to watch through one of Aereo’s thousands of dime-sized antennas capturing broadcast transmissions or watch a program the subscriber pre-recorded. Aereo does not pay the broadcasters a fee for transmitting the captured signal over the Internet to Aereo’s subscribers. Broadcasters argue that Aereo’s transmission of the captured signal violates their performance rights. The Second Circuit found its precedent in Cablevision controlling in that the potential audience of each Aereo transmission was the “single user who requested that a program be recorded.” The case went before the Supreme Court, with oral argument held on April 22, 2014 and a decision in June 2014.
The Court asked two questions: does Aereo “perform” the broadcasted works, and does Aereo transmit the performance publicly?
The Court determined that Aereo was doing more than simply supplying the equipment that enables subscribers to record and transmit performances; instead, it held that Aereo, functioning more like a cable television service, needs a license to retransmit copyrighted material.
On the second question, the Court concluded that Aereo does transmit copyrighted work publicly. Rejecting Aereo’s argument that transmissions go to subscribers individually and therefore should be regarded as private, the Court held that Aereo transmits copyrighted works to a large number of people well outside the normal circle of family and friends.
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The Court’s limited holding addresses transmissions, not distributions. The holding therefore does not affect other cloud-based services: the Court did not comment upon the validity of downloading content as opposed to streaming it.
ł The Aereokiller Cases: Fox TV Stations, Inc. v. AereoKiller, 2015 U.S. Dist. LEXIS 97305 (C.D. Cal July 16, 2015); Fox TV Stations Inc. et al. v. FilmOn X LLC et al., 2015 U.S. Dist. LEXIS 161304 (D.C. Dec. 2, 2015)
These conflicting decisions discuss whether an Internet television streaming service is eligible for a compulsory license under § 111. In Aereo, the U.S. Supreme Court focused on whether the retransmissions of over- the-air content were public performances of copyright material. In contrast, these two decisions focus on § 111, which permits traditional cable companies to retransmit copyrighted content for a set royalty rate.
Defendant, FilmOn X (formerly Aereokiller), is an Internet-based television provider. It captures the signals of local television channels that are broadcast over the air and streams them to online users via thousands of tiny, dime-sized antennas. Plaintiffs are a group of television broadcasters and programmers that own much of the streamed content.
On July 16, 2015, Judge Wu of the Central District of California held that FilmOn X was entitled to a compulsory license under § 111. This decision surprised many given that Aereo unsuccessfully made a similar § 111 argument in N.Y. district court shortly after the U.S. Supreme Court found its service to be illegal. However, Judge Wu actually used the Aereo decision to lend support to his finding in favor of FilmOn X. In Aereo, the U.S. Supreme Court noted the similarity between traditional cable systems and newer Internet-based services in finding Aereo’s online service to be a public performance. Judge Wu agreed and found that technological advancements should not affect the balance of rights between broadcasters and retransmitters, unless and until Congress chooses to change the statute. Judge Wu certified the matter for immediate appeal and it is currently pending before the Ninth Circuit.
On December 2, 2015, Judge Collyer of the District of Columbia ruled, perhaps more expectedly, that FilmOn X was not entitled to a compulsory license because it was not a traditional cable company as contemplated by the statute. Judge Collyer found that § 111’s definition of “cable system” was limited to physical facilities. Even though FilmOn X did utilize thousands of tiny antennas, ultimately it relied on the Internet to deliver the content to subscribers. Judge Collyer held the Internet was neither tangible nor a physical facility and further noted that Congress did not consider the Internet when it enacted § 111 in 1976.
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Because the Ninth Circuit and the D.C. Circuit will be set to hear these conflicting appeals in 2016, those coming decisions may set the stage for a potential U.S. Supreme Court determination.
I. CONTRIBUTORY LIABILITY
ł Luvdarts, LLC v. AT&T Mobility, LLC, 710 F.3d 1068 (9th Cir. 2013)
Luvdarts sued AT&T for copyright infringement of ‘commercial multimedia messaging content’, in the form of greeting card style messages. Specifically, the greeting card style message is only to be read once, but AT&T failed to have a digital management system in place, which enforced that. The 9th Cir affirmed the trial court’s dismissal for failure to state a claim holding that AT&T’s failure to implement a digital rights management system is not a substitute for an allegation of capacity to supervise which is integral to a vicarious or contributory infringement.
ł Broadcast Music v. Meadowlake, Inc. 754 F.3d 353 (6th Cir. 2014)
A restaurant owned by a limited liability company played live and recorded music without the permission of the copyright holders. BMI sued the owner, his son who manages the day-to-day operations of the restaurant, and the company itself. The latter two parties declared bankruptcy and therefore escaped the suit. The District Court for the Northern District of Ohio granted BMI’s motion for summary judgment.
The owner appealed on the theory that he did not perform any of the copyrighted music: bands performing music live and people turning on recording systems did the actual performing. However, the owner is vicariously liable. He had (1) the right and ability to supervise the infringing conduct and (2) an obvious and direct financial interest in the infringement, and thus is subject to liability.
J. DIGITAL MILLENNIUM COPYRIGHT ACT
1. Digital Millennium Copyright Act (17 U.S.C. § 512(a)-(d)).
ł Provides “safe harbor” from liability for online service providers;
ł Required to comply with valid “take down” requests;
ł Required to comply with valid DMCA subpoena requests;
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ł Required to maintain “repeat infringer” policy;
ł Required to register DMCA Agent with Copyright Office;
ł No duty to monitor site activities.
2. DMCA: Copyright Management Information.
17 U.S.C. § 1202 prohibits removal of "copyright management information" knowing, or having reason to know, it will induce, enable or conceal infringement. "Copyright management information" ("CMI") is information provided in connection with copies, performances, or displays of a work, including in digital form:
ł Name of author;
ł Title and other identifying information about the work;
ł Terms and conditions for use of the work;
ł "Links" that refer to such information.
3. DMCA: Safe Harbor/Take Down Requirements.
Section 512 of the DMCA provides a safe harbor from liability for online service providers for infringing materials residing on their systems, provided that: 1) they have no actual knowledge that the material or activity is infringing, 2) they are not aware of facts from which infringement is apparent, and 3) they act expeditiously to remove or block access to the material upon obtaining knowledge or awareness of the infringement. To qualify under the safe harbor, the provider must:
ł Designate an agent to receive notices of claimed infringement, register that agent with the Copyright Office and make the agent's name and contact information available through its services;
ł Adopt a policy to terminate the membership of repeat infringers and notify users of that policy.
ł Accommodate and not interfere with "standard technical measures" identifying and protecting copyrighted materials.
Effective notification and counter notification of a claimed infringement must be in writing and must include substantially the
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elements set forth in sections 512(c) and (g) of the DMCA. Case law on safe harbor/take down issues has been sparse.
ł Perfect 10 Inc. v. Giganews, Inc., 993 F. Supp. 2d 1192 (C.D. Cal. 2014)
Perfect 10 is a publisher of adult erotica; Giganews is a Usenet provider which claims eligibility for the DMCA safe harbors. After getting repeated ‘take down’ demands from Perfect 10, Giganews sued claiming that the ‘take down’ demands are inadequate and do not comply under the DMCA; and moreover that Perfect 10 failed to demonstrate that Giganews’ repeat infringer termination policy was inadequate to the task. Finally, Giganews claimed that Perfect 10 did not provide information reasonably sufficient to permit identifying the location of the image that was demanded be taken down. The court denied Perfect 10’s motion for summary judgment. Case proceeds.
ł Lenz v. Universal Music Corp., 801 F.3d 1126 (9th Cir. 2015)
In February 2007, Stephanie Lenz uploaded a 29-second video to YouTube that led to this action. The video is of her two young children dancing in the family kitchen with a Prince song playing in the background. At that time, Universal was responsible for enforcing Prince’s copyrights. An assistant in Universal’s legal department was tasked with searching YouTube videos for potential unauthorized uses of Prince’s songs. That assistant found the video and sent YouTube a DMCA takedown notification. YouTube subsequently removed the video in early June and notified Lenz of the removal, who responded with a counter-notification. Universal contested this counter-notification, but eventually the video was reinstated in mid-July. Lenz filed her initial action on July 24, 2007 and after amending her complaint, the district court allowed her claim for misrepresentation under § 512(f) to continue.
Under the DMCA, service providers such as YouTube may avoid liability for posting copyrighted works if they field DMCA takedown requests and “expeditiously” work to remove infringing content. Section 512 outlines the requirements of sending a DMCA takedown notice. One such requirement is “a statement that the complaining party has a good faith belief that the use of the material . . . is not authorized by the copyright owner . . . or the law.”
In order to form this “good faith belief,” the Ninth Circuit held that someone must consider fair use before sending a DMCA takedown notice. The court noted fair use is different from other traditional affirmative defenses. Fair use has been codified under § 107 and
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while labeled as an “affirmative defense,” fair use is not actually a defense to infringement. Rather, the fair use of copyrighted material is similar to the licensing of protected material in that it is not an infringing use at all. Thus, it is authorized by law. This was an issue of first impression in any circuit across the nation.
Second, the Ninth Circuit turned to the § 512(f) claim and found that it was for the jury to decide whether Universal subjectively formed a good faith belief that the video was not authorized by law, i.e., did not constitute fair use. Section 512(f) makes liable “any person who knowingly materially misrepresents . . . that a material . . . is infringing.” Lenz argued Universal did not consider fair use at all before sending a takedown request and thus should be liable. Universal argued that its procedures were tantamount to considering fair use. In reaching a decision, the Ninth Circuit confirmed the proper inquiry should focus on Universal’s subjective intent, but held that it was up to the jury to determine whether Universal formed that subjective good faith belief. If so, Universal would not be liable for violating § 512(f).
Third, the Ninth Circuit rejected the district court’s conclusion that Lenz could continue forward under the willful blindness doctrine. Willful blindness exists when the defendant (1) subjectively believes that there is a high probability that a fact exists and (2) takes deliberate action to avoid learning of that fact. If Universal acted willfully blind, it would be in violation of § 512(f). The district court allowed Lenz to continue under this theory in finding that Universal failed to provide evidence that it lacked willful blindness. However, the Ninth Circuit said the burden was on Lenz to initially provide sufficient evidence from which a juror could infer Universal was willfully blind. Because Lenz failed to do so, the court did not allow this theory to advance. Lenz could still proceed under an actual knowledge theory though.
Finally, the Ninth Circuit confirmed that a plaintiff may seek recovery of nominal damages for a § 512(f) injury. Universal argued Lenz must show actual monetary loss to continue but the court noted the statute provides for the recovery of “any damages.” Judge Smith issued an eight-page partial dissent and concurrence in the judgment questioning whether the focus should be on Universal’s subjective good faith belief and also questioning whether the willful blindness doctrine is relevant to analyzing the § 512(f) claim.
ł UMG Recordings, Inc. v. Shelter Capital Partners LLC, 718 F.3d 1006 (9th Cir. 2013)
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Ninth Circuit affirms Safe Harbor status under the DMCA for Veoh, a video content sharing company. Veoh generates revenue by displaying ads in the side columns (a la YouTube). Veoh has a pop up banner that warns users when they upload videos that unauthorized content of third parties violates the Veoh terms of use. Additionally, Veoh takes down infringing videos upon receipt of a ‘take down’ demand; and employs various technologies to prevent re-upload. The court found that such vigilance qualifies Veoh to the affirmative defense of the Safe Harbor provisions of the DMCA.
With regard to the question of whether the automatic processes making user-uploaded videos were accessible ‘at the direction of the user”. The Court held that Veoh satisfied the threshold requirement that the infringement by “by reason of the storage at the direction of the user of material” residing on Veoh’s system. Finally, the Court held that Veoh’s interactions with and conduct toward its users did not rise to the level of exerting substantial influence on the activities of others.
ł Columbia Pictures Industries, Inc. v. Fung, 710 F.3d 1020 (9th Cir. 2013)
Fung is sued by a consortium of L.A. studios for copyright infringement because Fung’s many sites collect torrent files of full length movies and then induce, through enthusiastic invitation and easy-click activation, user uploading of the unauthorized movie files.
The Ninth Circuit affirmed the trial court’s grant of summary judgment, in part; vacated in part and modified the permanent injunction. The Ninth Circuit held that Fung’s activities did not fit in the statutory definition of ‘service provider’ under Section 512 as the Fung’s trackers were more than mere conduits between computer users.
ł Viacom Intern. Inc. v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012), on remand, Viacom Intern. Inc. v. YouTube, Inc., 940 F. Supp. 2d 110 (S.D.N.Y. 2013)
This is considered one of the most important rulings interpreting the safe-harbor provisions of the DMCA (17 U.S.C. § 512(c)). The lower court granted Defendant Google’s motion for summary judgment. The Court wholly rejected Viacom’s copyright claims of direct and secondary liability and found that Google was safe from liability under the DMCA for infringing materials posted by users on the Google-owned website, YouTube.
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The central question was whether the statutory phrases "actual knowledge that the material or an activity using the material on the system or network is infringing," and "facts or circumstances from which infringing activity is apparent" in § 512(c)(1)(A)(i) and (ii) mean a general awareness that there are infringements (here, claimed to be widespread and common), or rather mean actual or constructive knowledge of specific and identifiable infringements of individual items.
The lower court found that while it was true that Defendants were aware (and even “welcomed”) infringing materials on the YouTube site, which, in turn, attracted users and therefore advertising income for Google, “general knowledge” of infringement occurring on the YouTube site was not the same as the “specific knowledge” required under the DMCA. The Court further noted that Google had proper takedown procedures in place, in compliance with the DMCA, including: having a designated agent, removing infringing materials swiftly upon receipt of a specific notice and deleting accounts of repeated offenders. The Court could find no fact to aversely affect Defendants’ safe-harbor coverage. In effect the burden is on the copyright owner to identify the infringement and properly notify the search engine.
The Second Circuit reversed the summary judgment, finding that a "reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website" and the right and ability to control infringing activity need not require knowledge of specific infringements.
Among other things, Viacom and the other plaintiffs focused on internal emails among YouTube employees who seemed to be aware of at least the possibility of occasional infringement, which could be considered knowledge that would disqualify YouTube from safe harbor protection. Thus, the case was slated to go back to a jury trial.
However, the court upheld one aspect of the district court's ruling. The plaintiffs had argued that four of YouTube's software functions relating to user uploads disqualified the service from safe harbor protection, but the appeals court agreed with the lower court in that three of the functions—transcoding, playback, and related-video thumbnails— were within the scope of safe harbor. The fourth function, syndication, was remanded for further fact-finding.
The case settled in 2014.
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ł Capitol Records, LLC v. Escape Media Group, Inc., Memorandum and Order, 12-CV-6646 (AJN) (S.D.N.Y. Mar. 25, 2015) (finding Grooveshark liable for willful copyright infringement);
ł Arista Records LLC v. Tkach, Memorandum and Order, Case No. 1:15-CV-03701 (AJN) (S.D.N.Y. June 3, 2015) (holding service provider is bound by restraining order).
In April 2015, music streaming website Grooveshark, owned by Escape Media Group, Inc., started completing the terms of its settlement with nine record companies by shutting down. The record companies filed suit in November 2011 against Grooveshark, which once had 35 million users, for enabling users to upload and stream digital audio files without securing licenses.
Grooveshark argued that it had a policy in place to comply with the Digital Millennium Copyright Act (DMCA), which protected them from infringement claims. The court found the DMCA safe harbor did not apply because Grooveshark failed to keep adequate records of infringement, prevented copyright owners from collecting the information required for takedown notices, and did not terminate repeat infringers’ accounts. Further, the court noted Grooveshark “overtly instruct[ed] its employees to upload as many files as possible to Grooveshark as a condition of their employment.” In September 2014, the court found Grooveshark liable for willful copyright infringement
Grooveshark faced liability for potentially $736 million in damages but agreed to settle out of court. The settlement agreement included payment of $50 million to the record companies, an apology, permanent shut down of the website, and forfeiture of its intellectual property (including its website, mobile apps, patent, and copyrights). If Grooveshark violates the terms of the settlement, it has agreed to pay $75 million to the record companies.
After the shut down, a Grooveshark replacement appeared, but within days of starting up, a restraining order was filed against domain registrars and hosting companies from offering their services to the site. CloudFlare, Inc. (CloudFlare), an internet service provider, argued that the order did not apply to it because the nature of its services is passive. On June 3, 2015, the court held otherwise because CloudFlare provided access and performance solutions to the site.
ł BMG Rights Mgmt. (US) LLC v. Cox Communications, Inc., 2015 U.S. Dist. LEXIS 161091 (E.D. Va. Dec. 1, 2015)
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A federal court in the Eastern District of Virginia ruled that Cox was not entitled to use the safe harbor provisions under the DMCA. BMG claimed that Cox was vicariously and contributorily liable for acts of direct copyright infringement by Cox’s internet users. Users were allegedly sharing digital music files through BitTorrent that contained BMG’s copyrighted material. BMG employed a third- party company that would identify potential infringing uses of BMG’s copyrighted material and subsequently send notices to websites. The company allegedly sent 2.5 million notices to Cox regarding material its users were downloading. Cox failed to forward or respond to these notices and eventually blocked the third-party from sending further notices.
Cox sought to use the safe harbor provisions under § 512(a), which limit liability for service providers. However, the judge ruled on a partial summary judgment that Cox failed to reasonably implement a policy to terminate the accounts of repeat offenders, as required under § 512(i) of the safe harbor provisions. Shortly after this ruling, a jury found Cox liable for $25 million in damages for contributory infringement.
ł Couponcabin, LLC v. Savings.com, Inc., No. 2:14-CV-39-TLS, 2016 WL 3181826 (N.D. Ind. June 8, 2016)
Couponcabin, a provider of online, printable grocery coupons, brought state and federal claims against Savings.com, Cox Target Media, Linfield Media, Internet Brands, and Sazze (collectively, “Defendants”) for violations of the Digital Millennium Copyright Act (“DMCA”) 17 U.S.C. § 1201, among other claims. Couponcabin alleged that the Defendants violated the DMCA by engaging in scraping programs that systematically acquired data from Couponcabin’s website, in violation of its Terms and Conditions.
In 2013, Couponcabin noticed an increase in its unique content appearing on competitors’ websites, and launched an investigation into the matter. The investigation allegedly uncovered that the Defendants were using scraping programs to acquire data from Couponcabin’s website. In response to the scraping, Couponcabin hired a third-party security provider to implement technological safeguards and barriers, which included blocking access to all traffic emanating from certain cloud and internet providers identified as being used heavily by the Defendants. Couponcabin also communicated with all but one of the Defendants, demanding that they cease and desist the scraping programs. When the alleged scraping continued, Couponcabin brought action against the Defendants. On January 15, 2016 the Defendants filed a motion to
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dismiss for failure to state a claim under the DMCA, among other motions.
The court granted the Defendants’ motion to dismiss for failure to state a claim because Couponcabin failed to plead sufficient facts to show that its copyrighted work was “effectively controlled” by a technological measure, as is required by the DMCA under §§ 1201(a)(1)(A) and 1201(a)(2). Chamberlain Group v. Skylink Technologies, Inc., 381 F.3d 1178 (Fed. Cir. 2004). The court explained that a “technological measure effectively controls access to a work if the measure, in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work.” § 1201(a)(3)(B). Here, although Couponcabin implemented some technological safeguards and barriers to its website, the website remained accessible to users that had not been blocked by the safeguards. This was evidenced by Couponcabin’s allegation that the Defendants continued to access its website using a variety of servers and internet providers. Therefore, the copyrighted work had not been “effectively controlled” by a technological measure as is required under the DMCA. Accordingly, the court dismissed the complaint without prejudice, with leave for Couponcabin to refile if it could successfully amend its complaint within 14 days of the date of the Order.
ł BWP Media USA, Inc. v. Clarity Digital Group, LLC, 15-1154, 2016 WL 1622399 (10th Cir. Apr. 25, 2016)
BWP, the owner of the rights to photographs of various celebrities, sued Clarity (now known as AXS Digital Media Group), the operator of a news website called Examiner.com, for the unauthorized use of 75 of its photos. Examiner.com’s business model relies on various freelance writers contributing content under an independent contractor agreement that explicitly forbids them from using unauthorized copyrighted material, and all of the photos at issue were uploaded as part of these freelance articles. On summary judgment, the district of Colorado ruled that the DMCA’s safe harbor provisions applied to Examiner.com because all of the copyrighted material was uploaded by freelance writers and not the ISP itself.
BWP appealed to the Tenth Circuit, arguing that the contributing writers were not “users” under the DMCA because they worked for AXS and thus the safe harbor provisions of the DMCA did not apply. The Tenth Circuit disagreed and affirmed the district court’s judgment, holding that the contributing writers were not employees
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or agents and that independent contractors or contributors are generally “users” under a plain-language reading of the DMCA because they “use” the website. Because all of the other requirements of the DMCA were met, most importantly that AXS did not direct or encourage the posting of the infringing content, AXS qualified for the safe harbor.
ł BWP Media USA, Inc. v. T&S Software Associates, Inc. 3:13-CV- 2961-BF, 2016 WL 1248908 (N.D. Tex. March 25, 2016)
In the T&S case, BWP sued T&S Software Associates for direct and vicarious copyright infringement. T&S operates a website that hosts celebrity-discussion forums. On these forums, users often upload pictures of celebrities, several of which were copyrighted photographs owned by BWP. T&S explicitly forbade users from uploading copyrighted content in its terms of use, and removed copyrighted images once made aware of them. However, T&S failed to designate a DMCA agent as required by the statute. On summary judgment, the northern district of Texas found for T&S on both causes of action. The court held that there was no direct infringement because the pictures were user submitted, and no vicarious infringement because BWP did not provide evidence showing that T&S directly profited from the infringing conduct, despite the presence of traffic-based online advertising on the forum.
The case is on appeal to the Fifth Circuit.
Ɣ BWP Media USA, Inc. v. Polyvore, Inc., No. 13-CV-7867 (RA), 2016 WL 3926450 (S.D. N.Y. July 15, 2016)
BWP, the owner of a variety of celebrity photographs, sued Polyvore, the operator of a style website, for the unauthorized use of some of BWP’s copyrighted photographs. In a prior action the court denied Polyvore's motion to dismiss because of the factual nature of BWP’s claims. BWP had raised an interesting legal issue as to whether the preservation of metadata, which allowed BWP to identify its photographs on other websites and which Polyvore purportedly deleted, is a “standard technical measure” that Polyvore must accommodate and not interfere with in order to invoke the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”) as an affirmative defense. However, in the interim between this case and the prior action BWP did not conduct any depositions or appear to participate in discovery in any meaningful way. Therefore, despite the interesting legal question at hand, the court held that BWP did not meet its initial burden to present proof of any volitional conduct by Polyvore, and thus failed
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to establish a prima facie case of copyright infringement. Polyvore's motion for summary judgment was granted.
K. DEFENSES/EXEMPTIONS
1. 17 U.S.C. § 107: The Fair Use Defense.
Notwithstanding the provisions of Sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include: (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.
ł Swatch Group Management Services Ltd. v. Bloomberg L.P., 742 F.3d 17 (2d Cir. 2014)
The Second Circuit affirmed the finding that Bloomberg’s acquisition and dissemination of the Swatch recorded 2010 earnings report was for the public benefit and therefore protected under the Fair Use defense.
Swatch invited over three hundred financial analysts to a regular earnings call and prohibited any recording by the attendees. Bloomberg was not among those invited to the call. Immediately after the call, Bloomberg obtained an unauthorized recording of the earnings call and made that recording available online, both as a transcript and as a recording. Bloomberg argued that the information was of critical importance to the American security market. That public importance, Bloomberg argued, was of greater importance than the Swatch instructions and prohibitions. Bloomberg did not transform the work in any way, but instead simply made the entire, unpublished work available. The court found that the sole purpose of the call was to convey financial information and that use of the entire report was reasonable as it allows the public to learn important financial information.
ł Diversey v. Schmidly, 738 F.3d 1196 (10th Cir. 2013)
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Diversey, a graduate student in the Linguistics Department at the University of New Mexico, had some charged communications with members of his dissertation committee which resulted in the dissertation being confiscated and in 2009, Diversey protesting after a copy of the dissertation was deposited in the school library. In 2012, Diversey sued upon learning that the library still had copies of the unpublished work.
The Tenth Circuit upheld the trial court finding that the statute of limitations had been tolled by the continuing wrong theory of damages and further that there was no entitlement to the defense of fair use as there is no educational purpose in having a school’s library hold dissertations. The court accepted as true both Diversey’s assertion that he could not complete a dissertation at another university while UNM is listed in library catalogues as being Diversey’s school, and that Diversey’s dissertation’s value arose entirely from the value that the dissertation had for Diversey to complete this graduate studies degree.
ł Bouchat v. Baltimore Ravens Ltd. Partnership, 737 F.3d 932 (4th Cir. 2013)
This is a sequel case to the copyright dispute between these parties in the mid 1990’s. Defendants were found to have infringed. Defendants recently used the ‘Flying B Logo’ that was the basis for the law-suit twenty years ago, in historical documents celebrating the history of the team. Bouchat claimed copyright infringement in the new use of the infringed logo in three videos appearing in the club level of the defendant’s stadium. The Fourth Circuit affirmed the trial court finding of such incidental use amounting to a fair use and therefore protected under the Fair Use Defense.
ł American Institute of Physics v. Winstead PC, No. 12-01230, 2013 WL 6242843 (N.D. Tex. Dec. 03, 2013)
Publisher sued law firm for making copies of articles and journals for submission to the USPTO under prior art requirements. There was no other claim of copyright infringement. There was no claim that the infringing copies were used in the client file copies, or for interoffice meetings. This case is only about submission to the USPTO.
The court granted summary judgment, stating that the law firm’s submission has a different purpose of providing background context for patent examiners; and, that the submission to the USPTO transformed the expressive content into evidence of the
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facts within it. Court found the copying to be transformative despite the fact that the copies were complete and exact copies.
ł Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013)
Cariou, a photographer, spent time with Rastafarians in Jamaica over the course of six years. Cariou published a book of photos that were taken during his time in Jamaica. Prince is a well-known "appropriation artist" who has shown at numerous museums. Prince tore pictures from Cariou's book and painted over some portions of the 35 photos and used only portions of some; others were used in their entirety.
Cariou sued claiming copyright infringement; Prince defended claiming fair use. In discovery, it became clear that Prince did not intend to comment on Cariou, his photos, or aspects of popular culture associated with either when he appropriated the photos. Prince's own testimony showed that his intent was not transformative. While there might have been some minimal transformative element intended in Prince's use of the photos, the overall transformative nature varied from work to work depending on the amount of copying.
Contrary to the trial court’s ruling, the Second Circuit ruled that the law imposed no requirement that a work comment on the original or its author in order to be considered transformative. The 2nd Circuit’s observation of Prince’s works themselves convinced it of the transformative nature of all but five of the works. These twenty- five works manifested an entirely different aesthetic from Cariou’s photos. Where Cariou’s serene and deliberately composed portraits and landscape photos depicted the natural beauty of Rastafarians and their surrounding environs, Prince’s crude and jarring works, on the other hand, were hectic and provocative. Prince had created collages on canvas that incorporated color, featured distorted human and other forms and settings, and measured between ten and nearly a hundred times the size of the photos.
The case settled in 2014 prior to any consideration on remand regarding the five works that the Second Circuit determined required further analysis.
ł Capitol Records, LLC v. ReDigi Inc., 934 F. Supp. 2d 640 (S.D.N.Y. 2013)
ReDigi created a new on-line music resale market for digital on line stored content. In version 1.0 (now long since superseded by more sophisticated versions), the music as first verified as legitimate and
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not bootleg and then transferred to the new ‘owner’ by a copy of the music being made and transferred using ‘data migration in packet to packet transfer’ and removal of the original file from the seller’s device also was verified. The court found this technology to involve an unauthorized reproduction, well outside the fair use defense.
This case is worthy of review in light of the First Sale Doctrine cases (Augusto, Vernor).
ł Morris v. Guetta, No. 12-00684, 2013 WL 440127 (C.D. Cal. Feb. 04, 2013)
Photographer Morris sued defendant appropriation artist Guetta alleging infringement in plaintiff’s photograph of Sid Vicious, bassist to the band Sex Pistols, which defendant used to make seven separate pop art works. Defendant claimed fair use in the same theory as Prince v. Cariou. Court found defendant’s work to be not sufficiently transformative. No fair use found.
ł SOFA Entertainment, Inc. v. Dodger Productions, Inc., 709 F.3d 1273 (9th Cir. 2013)
SOFA owns copyrights in the entire run of the Ed Sullivan Show, among other assets. The founder of SOFA attended the Broadway show, “Jersey Boys” and realized at the video clip used at the conclusion of the first act was unauthorized. This case is about whether the seven (7) second clip of the band, the Four Seasons, from the January 2, 1966 episode is used and allowable under the Fair Use defense or whether that seven-second use is infringing.
The context of use is the musical ‘Jersey Boys’, a dramatization of the Four Seasons band’s history. The story revolves around the four band member’s individual perspectives on the period of time.
The Court held that the use of the seven-second clip does constitute fair use and is eligible for the defense. The Court pointed out that the clip conveyed a ‘biographical anchor’; that the clip conveyed mostly factual information; that the clip was quantitatively insignificant; and that the plaintiff’s claim that the clip was for its own entertainment value was not supported by the record.
ł Associated Press v. Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d 537 (S.D.N.Y. 2013)
Meltwater, a clipping news service, uses spider, robotic engines to automatically capture and republish designated segments of text from third party articles, without adding any further commentary
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or new text. AP sued claiming copyright infringement. Meltwater claimed fair use because the capture and republish activities ‘functioned as search engines creating transformative use’.
Court found no fair use stating that the ‘permitting Meltwater to take the fruit of AP’s labor for its own profit’ injuring AP’s ability to perform this essential function.
ł Caner v. Autry, No. 14-00004, 2014 WL 2967607 (W.D. Va. July 1, 2014)
Plaintiff Caner, the dean of Liberty Theological Seminary, began making false statements about his own upbringing, claiming that he had grown up as a Muslim in Turkey, trained in the tradition of jihad, when he in fact grew up in Ohio, becoming a born-again Christian at an early age. Defendant Autry attended Liberty while Caner was dean and came to feel that Caner was a detriment to the Christian religion and to their institution. Autry posted videos of Caner speaking about his upbringing in an attempt to discredit and expose him. Caner attempted to have the videos taken down from YouTube, but Autry argued that posting the videos qualifies for the fair use defense.
The court sided with Autry on the issue of fair use, concluding that the critical nature of Autry’s purpose renders the use transformative. The video is informational rather than creative, so it is entitled to less protection. The “amount of work used” factor is neutral or slightly in favor of Caner, since Autry used the entirety of the videos. Finally, the court concluded that while it is possible for Autry’s criticism to destroy the market for Caner’s work, this did not preclude a finding of fair use.
ł White v. West Publ'g Corp., 29 F. Supp. 3d 396 (S.D.N.Y. 2014)
White—an attorney in a class action matter—wrote and filed two trial briefs for which he subsequently registered copyrights. Co- defendants, West and Lexis, acquired the documents through PACER and included them in their respective litigation databases. White asserted copyright infringement claims against both companies.
The district court found the defendants’ conduct to be a fair use of White’s work and affirmed its order of summary judgment in favor of West and Lexis. The court concluded that the defendants used the briefs as tools to facilitate legal research, while White created them to secure a specific legal outcome, and that these different
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objectives constituted a transformative use outweighing its commercial purpose.
The court also determined that the nonfictional nature of the work and the fact that White intentionally published it using PACER weighed in favor of fair use, as did its finding that no potential market exists for licensing briefs that could have been impaired by the defendants’ use. Finally, the court concluded that fair use was not contraindicated by the defendants’ copying the entirety of the works because they only copied what was reasonably necessary to further their transformative use.
ł Fox News Network, LLC v. TVEyes, Inc., 124 F.Supp.3d 325 (S.D.N.Y. 2015)
This case deals with the fair use questions surrounding a commercial service that created a searchable archive of news clips. TVEyes comprehensively archives the programs of various news channels, including Fox News, which brought this copyright infringement suit. The programs are stored on the TVEyes server for 32 days. The TVEyes service allows subscribers to search for specific news clips using searchable transcriptions. TVEyes also provided ancillary services such as the ability to archive certain clips on the website’s servers so they remained available longer than 32 days, the ability to email clips to others (including non- subscribers), the ability to download clips to the subscriber’s computer, and the ability to search and view by day and date in addition to by term.
In 2014, the court granted partial summary judgment to TVEyes for its core archive-and-search function on fair use grounds. The court held that TVEyes’ use, which allowed meta-analysis of the news, was transformative for similar reasons as the Google Books case. However, the court declined to rule on the other services TVEyes offered, noting that the factual record was insufficient for summary judgment either way. After further discovery and briefing, the court held that the archive function was an extension of TVEyes’ core, transformative service, and was therefore also protected by fair use. Similarly, the court held that the email functionality was potentially protected, but TVEyes needed to add safety measures to prevent abuse and unnecessarily broad dissemination. However, the court held that the downloading and date-and-time search functions were not a fair use, because they were not necessary for research and commentary and posed “undue danger” to the content-owners’ exploitation of their copyrights.
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In accordance with the court’s order, the parties submitted proposals for protections on TVEyes’ email functionality. The court issued a permanent injunction implementing some of these proposals, as well as enjoining TVEyes from continuing the download and date-and-time search functions. The case is currently on cross-appeal by both parties to the Second Circuit.
ł Keeling v. Hars, 809 f.3d 43 (2nd Cir. 2015)
Jaime Keeling is the author of Point Break Live! (“PBL”), an unauthorized stage parody of the 1991 Keanu Reeves surfing action movie Point Break. The stage production largely uses the film’s script, but with comedic elements added such as replacing waves with squirt guns and having Reeves’ lines read by an audience member to mock Reeves’ purportedly flat line delivery. Eve Hars owns a production company that staged performances of PBL, initially authorized. However, after the contract ended, Hars continued producing the show, and Keeling brought suit in the southern district of New York alleging copyright infringement.
Keeling did not license the rights to Point Break, and Hars contended in a motion for summary judgment that, even if PBL constitutes lawful fair use, a parody making fair use of a copyrighted work cannot merit its own copyright protection. Hars also argued that almost all of PBL’s parodic changes involved stage directions and other non-copyrightable theatrical devices and therefore PBL did not have sufficient creative expression to warrant copyright protection. The district court denied the summary judgment motion and the case proceeded to trial on the question of whether PBL was a fair use. The jury found for Keeling, and Hars appealed both the verdict and the denial of summary judgement.
The Second Circuit agreed with the district court and affirmed the ruling and the verdict. The court held that a parody with sufficient creative elements (as the jury found PBL to have) is a transformative work and can itself gain copyright protection for those elements. The court also held that, even though the stage directions and theatrical elements may not individually be copyrightable, when arranged with sufficient creativity (as the jury found to be the case) they can form a protectable work.
Hars has filed a petition for cert., which is pending.
ł Equals Three, LLC v. Jukin Media, Inc., 139 F.Supp.3d 1094 (C.D. Cal. 2015)
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Jukin Media finds and acquires the rights to “viral videos,” and has more than a million subscribers on YouTube and a library of over 17,000 videos that it actively licenses. Equals Three produces short humor programs for YouTube, where a host introduces a series of short video clips (often used in their entirety), and adds commentary and other content such as text and graphics. Equals Three used a number of Jukin clips in its shows. Jukin complained about this use to Equals Three and sent takedown notices to YouTube. Equals Three filed an action for declaratory judgment, and Jukin filed for summary judgment on the issue of fair use, which both parties agreed was largely dispositive.
The central district of California weighed the statutory fair use factors and found that on balance they favored fair use (with the exception of one video). The court found that, although it was unclear if the Equals Three videos were parodies of Jukin’s clips (parody being a classic example of fair use), the segments criticize and comment on the clips and are thus transformative. Equals Three makes comments and jokes about the clips, and thus adds something new to them that changes their “essential character.” The court found that the clips were creative and Equals Three used a substantial portion of them, so factors two and three favored Jukin, but noted that factor one and the finding of transformation were much more important. The court also found that neither party had provided enough evidence to rule either way on market harm (factor four).
ł TCA TV Corp. v. McCollum, 15 civ. 4325, 2015 WL 9255341 (S.D.N.Y. December 17, 2015)
Plaintiffs, the heirs of comedians Abbott and Costello, sued in the southern district of New York for copyright infringement over the use of a significant chunk of Abbott and Costello’s seminal comedy routine “Who’s On First?” in a Broadway play called Hand to God. In the play, a boy uses a puppet to do a part of the routine to impress his crush, but the puppet, which seems to develop a sinister life of its own during the play, undermines the boy.
The district court granted defendants’ motion to dismiss on fair use grounds, finding the segment highly transformative and with minimal plausible market impact. The court found that the way the routine is used creates “new aesthetics and understandings” to illustrate the boy’s character and the play’s themes, and that the use of part of the routine in a play creates little plausible harm to the market for the whole performance.
The case is currently on appeal to the Second Circuit.
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2. Copyright Misuse.
ł Costco Wholesale Corp., v. Omega, S.A., 776 F.3d 692 (9th Cir. 2015)
In 2004, Omega sued Costco asserting copyright infringement of the Omega ‘Astrolabe’ design (U. S. Copyright Office Registered) which measures three millimeters in size on he back side of certain Omega watches made in the E.U.
While in a hyper technical sense it is a copyright case, this case is more properly a case of arbitrage where Omega is using its copyright to control sales and manage prices.
After Costco defended with a claim of copyright misuse, Omega moved to strike that affirmative defense. On summary judgment, the Central District of California granted Costco’s motion without explanation and did not rule on the copyright misuse defense on the grounds that the defense was now moot. Omega appealed to the Ninth Circuit.
After going up to the Supreme Court which affirmed 4-4 the lower court, the issue of copyright misuse was again taken up by Judge Hatter in the Central District of California who found that “Omega misused its copyright by leveraging its limited monopoly in being able to control the importation of that design to control the importation of its watches. Omega appealed to the Ninth Circuit, which affirmed the decision on other grounds.
3. Visual Artists Rights Act (“VARA”).
ł Cheffins v. Stewart, 12-16913, 2016 WL 3190914 (9th Cir. June 8, 2016)
La Contessa, a replica of a 16th-century Spanish galleon, began its life as a school bus. Simon Cheffins and Gregory Jones acquired the bus and transformed it into a mobile sculpture of a historical vessel. La Contessa appeared at the Burning Man festival in 2002, 2003, and 2005. At Burning Man, La Contessa transported festival goers and served as a performance venue for poets and acrobats. When it was not in use, the “boat” was stored on private property. That land came into Michael Stewart’s possession in 2005, when the previous owner abandoned it. La Contessa remained on Stewart’s property until December 2006. Stewart then intentionally burned the boat’s wooden structure to allow a scrap metal dealer to remove the bus from his land.
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Cheffins and Jones filed suit against Stewart under the Visual Artists Rights Act (VARA). The VARA aims to protect artists’ “moral rights,” including safeguarding works from mutilation or destruction. The protection only extends to works of “visual art,” a term that the statute does not specifically define, although it provides examples of exclusions and inclusions. “Applied art” is excluded from the definition of visual art; however, “applied art” is also undefined. Whether Cheffins and Jones were entitled to protection under VARA turned on whether La Contessa was visual or applied art, but the court was left largely adrift without statutory definitions to guide its analysis.
The majority adopted a rule to distinguish applied art from visual art: where an object initially served a utilitarian function and, after an artist’s embellishments and alterations, it continues to serve that utilitarian function, it is applied art. The court concluded that because La Contessa continued to serve a transportation function after its transformation, it was applied art and therefore not entitled to protection under the VARA. Judge McKeown concurred in the result but found the majority’s test to be insufficient. She supports a more nuanced test that considers the work as a whole, where the analysis would turn on whether the object’s utilitarian purpose is subservient to the artistic purpose. Her inquiry would address the primary purpose of the resultant work. She concludes that under her test, La Contessa would still be applied art, and thus concurs in the court’s judgment.
ł Cohen v. G&M Realty L.P., 988 F. Supp. 2d 212 (E.D.N.Y. 2013)
Cohen is a ‘curator of aerosol art’ and an artist of aerosol paintings. G&M Realty owns a building that has housed many and various commercial businesses over the years. Since the 1990’s, the building was the place for distasteful graffiti, but since Cohen became the curator of the exterior walls, the quality of the art improved and became a mecca for high-end and recognized aerosol artists. Cohen knew that the building was to be soon demolished to make room for two apartment complexes.
When the date for demolition was known, Cohen petitioned the court for an injunction to prevent the destruction pursuant to VARA claiming that the works qualified as works of ‘recognized stature’ Cohen claimed that no amount of money would compensate the artists for the destruction of their art. The court ruled that the works at issue could live on in other media as they had been photographed; the fact of the imminent destruction was well known; and there was no differentiation made between the
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preliminary and permanent injunction, especially problematic as the nature of that art is transient. The demolition was allowed to proceed.
See discussion above in Section IV.B.
4. Statute of Limitations and Act-of-State Doctrine.
ł Geophysical Service Inc. v. ConocoPhillips Co., CV H-15-2766, 2016 WL 2839286 (S.D. Tex. May 13, 2016), on reconsideration, CV H- 15-2766, 2016 WL 3974834 (S.D. Tex. July 25, 2016)
Geophysical Service Incorporated (GSI)’s copyright infringement claims against ConocoPhillips Company (Conoco) were dismissed as time-barred, barred under act-of-state doctrine, and insufficiently pleaded. GSI provides seismic data services to the gas and oil industry. In Canada, GSI is required to submit its data to a regulatory agency, the Canada-Nova Scotia Offshore Petroleum Board (CNSOPB). After ten years, the CNSOPB will share the data with third parties when they request it.
GSI claimed that Conoco committed contributory infringement by requesting copies of GSI’s data from CNSOPB and direct infringement by subsequently copying it and creating derivative works. To sustain a contributory infringement claim, GSI needed to prove that Conoco encouraged an act of direct infringement. Under the act-of-state doctrine, United States courts do not evaluate the legality of foreign governments’ actions. The court concluded that CNSOPB, as a foreign state actor, could not be adjudged to have committed direct infringement. The court granted Conoco’s motion to dismiss the contributory infringement claim because without an act of direct infringement, Conoco could not have committed contributory infringement. The court also found that the statute of limitations had run on the contributory infringement claim.
For the direct infringement claim, the statute of limitations is three years. The court applied the discovery rule, which states that claims accrue when the infringement is discovered or when they should have been discovered through reasonable diligence. A Canada court concluded in a 2003 case that organizations that submit data to the CNSOPB, like GSI, are entitled to know which entities requested their data. So GSI was free to request the list of organizations that sought its data since 2003, but it did not request the list until nearly a decade later. The court concluded that GSI should have discovered Conoco’s alleged infringement by 2003. However, each act of infringement starts the three year statute of limitations afresh. So when GSI filed suit in 2015, any infringement that
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occurred in the three preceding years was still within the statute of limitations. The court dismissed GSI’s direct infringement claims for anything before 2012 as time-barred, but any claims of infringement that occurred between 2012 and 2015 were timely.
Ultimately, the court dismissed even the timely claims. It found that GSI’s complaint did not demonstrate that there were any ongoing acts of infringement after 2012. The court was not convinced that Conoco had any reason to continue to copy or create derivative works from decade-old data.
5. Laches.
ł Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014)
In Petrella, the Supreme Court held that laches cannot be invoked as a defense to preclude claims brought within the Copyright Act’s three-year statute of limitations for successive acts of copyright infringement. At issue were Frank Petrella’s screen plays written in 1963 and 1978, and the 1980 movie “Raging Bull.” In 1980 Frank Petrella died; and in 1991, his daughter, Paula Petrella (Petrella), filed the renewal applications on the 1963 screen play. In 1998, Petrella contacted defendants Metro-Goldwyn-Mayer (“MGM”) regarding the alleged infringement. Petrella and MGM engaged in correspondence but the law suit was not filed until 2009. Petrella filed suit in 2009 for damages and injunctive relief based on infringement dating to 2006. The Supreme Court concluded that Petrella’s eighteen-year delay in filing suit did not warrant curtailment of relief at the outset of litigation.
The Court framed the question presented as whether the equitable defense of laches may bar relief on a copyright infringement claim brought within section 507(b)’s three-year limitations period. A claim normally accrues when an infringing act occurs. Under copyright’s separate accrual rule, when a defendant has committed successive violations, each new infringing act starts a new limitations period with respect to that act of infringement. The Court cautioned that separately accruing harm, which includes each time an infringing work is reproduced or distributed, should not be confused with harm from past violations that is continuing.
The Court denied all of MGM’s principal arguments. First, the Court denied that it had ever applied laches to bar claims for discrete wrongs occurring within a federally prescribed limitations period. Although laches is listed as a separate affirmative defense from a statute of limitations defense in 8(c) of the Federal Rules of Civil Procedure, the Court stated that the laches defense should not
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be available in every action to bar all forms of relief. Second, the Court distinguished laches from equitable tolling, the latter being a guide when no statute of limitations had been prescribed. Third, the Court dismissed MGM’s contention that allowing a copyright owner to sit on a claim was not advisable as the delay would create problems of proof as evidence was lost over time. The Court noted that Congress had provided for reversionary renewal rights exercisable by an author’s heirs. In so allowing, Congress must have been aware that the passage of time and the author’s death could cause evidentiary issues. Further, the Court noted that the plaintiff bears the burden of proving infringements and the need for extrinsic evidence was reduced by the registration mechanism. The Court concluded that any evidentiary difficulty caused by a copyright holder’s delay in bringing an action is as likely to harm the copyright holder as it is the alleged infringer.
The Court distinguished two circumstances under which a plaintiff may not be entitled to some or any relief. First, the doctrine of estoppel may still bar a claim where the copyright owner engaged in intentionally misleading representations concerning their abstention from suit and the alleged infringer detrimentally relies on the deceptive behavior. Second, in extraordinary circumstances, a court may curtail relief at the outset of litigation. The Court indicated that extraordinary circumstances might be those where injunctive relief would lead to a nearly-completed project’s destruction. The Court provided the example of a nearly completed housing project that was found to have used infringing architectural drawings. In this scenario, the Court would not order the housing project destroyed as a form of relief.
Overall, the Court in Petrella sought to define the “essentially gap- filling, not legislation-overriding” role of laches, which, “in [the] face of a statute of limitations enacted by Congress… cannot be invoked to bar legal relief.” A copyright owner need not challenge every actionable infringement. However, once a copyright owner does raise a challenge, the action is limited to the statutes three- year lookback period prescribed in 507(b) and a court may take account of a plaintiffs delay in commencing suit when determining appropriate injunctive relief and assessing profits.
ł Rentmeester v. Nike, No. 15-00113, 2015 WL 3766546 (D. Or. June 15, 2015)
The District Court granted Nike’s motion to dismiss Jacobus Rentmeester’s copyright infringement claims, finding the
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copyrighted work and the alleged infringing works were not substantially similar.
The copyrighted work at issue was Rentmeester’s 1984 photograph of Michael Jordan (the Rentmeester Photo). Rentmeester agreed to grant a limited license to Nike to use color transparencies of the Rentmeester Photo. Within seven months of receiving the transparencies, Nike created a similar photograph (the Nike Photo) and began to display it on billboards and posters. Rentmeester learned of the Nike Photo and contacted Nike to discuss the copying in breach of the terms of use. Nike and Rentmeester negotiated a limited temporary use of the Nike Photo for a period of two years. At expiration of the two year period, Nike continued to use the Nike Photo. In 1987, Nike began to use the Jumpman Logo, derived from the Nike Photo, on all Jordan Brand merchandise.
Rentmeester claimed the Nike Photo and the Jumpman Logo both infringed on the copyrighted Rentmeester Photo. The court first applied the Mattel test and determined that the Rentmeester Photo only merited thin protection. The court then filtered out the unprotected elements of the photo and found that either (1) the angle of the photograph was the only original element, or (2) the angle and the pose were the only original elements. Accepting either, the court found no substantial similarity. The court found the angle and the pose of the Nike Photo and the Jumpman Logo materially different from the Rentmeester Photo.
Rentmeester’s claim represents the type of claim likely to be brought in the wake of the Supreme Court’s ruling in Petrella. Following prior Ninth Circuit precedent, the court would have dismissed the claim under the doctrine of laches as 28 years had elapsed since the claim arose. However, Nike continues to use the Jumpman Logo on Jordan Brand merchandise. Each use represents a successive violation that starts a new three-year limitations period with respect to that act of infringement. Therefore, Rentmeester’s claim could not be dismissed for timeliness.
Rentmeester appealed to the Ninth Circuit on June 19, 2015. The appeal is currently pending.
6. Public Domain.
ł Good Morning to You Productions Corp. et al. v. Warner/Chappell Music Inc. et al., case number 2:13-cv-04460, in the U.S. District Court for the Central District of California (Rupa Marya et al. v. Warner/Chappell Music, Inc. et al., 2015 U.S. Dist. LEXIS 129575 (C.D. Cal. Sept. 22, 2015))
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In June 2013, Marya, a document film maker (Good Morning to You Productions), filed a class action complaint against Warner/Chappell Music Inc. seeking a declaratory judgment to have “Happy Birthday” placed into the public domain. The complaint notes that the song was initially composed in 1893, with the title “Good Morning to All” and alleges that any valid copyright in that song expired no later than 1921 and that the only rights Warner/Chappell controls are for specific piano arrangements published in 1935, as the song itself was put into fixed form long before that. If the suit is not successful, “Happy Birthday” could remain protected under copyright law until 2030. The melody of “Happy Birthday” is the same as another song, “Good Morning to All,” which was authored by two sisters, Mildred and Patty Hill, around 1893. This dispute focuses primarily on the lyrics of the song as both parties agree that any copyright protection in the melody of Happy Birthday expired in 1949.
Warner/Chappell argued the Hill sisters authored the lyrics to “Happy Birthday” around 1893 and held onto the common law rights to the song for years until transferring them to Summy Co., which subsequently registered the copyright in 1935. There was a dispute over this 1935 registration when the Hill sisters sued Summy Co. in 1942. That suit was settled in 1944, resulting in the Hill sisters assigning Summy Co. all eleven of their registered copyrights, including the 1935 registration. Warner/Chappell later acquired Summy Co.
The district court found the 1935 registration by Summy Co. to be insufficient to establish a presumption that Warner/Chappell owned a valid copyright. Specifically, the registration sought to cover a piano arrangement and listed “Preston Ware Orem” as the author. Both parties agreed Orem is not the author of the lyrics. Further, the court found that Warner/Chappell could not establish who authored the lyrics to “Happy Birthday” and whether that author properly transferred any rights. Accordingly, the district court granted summary judgment in Marya’s favor and held Warner/Chappell did not have a valid copyright in the lyrics.
This decision opened up Warner/Chappell to the potential of losing millions in class action damages because it had been charging licensing fees to filmmakers and others who wanted to use the song. However, Warner/Chappell entered into a final settlement with the plaintiffs on December 9, 2015, that provided for $14 million in payments to those prior licensees, as made public on February 9, 2016.
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7. Sovereign Immunity
ł Regents of the University of California v. Aisen, 15-cv-1766-BEN, 2016 WL 1428072 (S.D. Cal., Apr. 12, 2016)
The Southern District of California held that the University of California had waived any sovereign immunity defense from cross- claims when that entity voluntarily brought claims in state court and the case was properly removed to federal court. The underlying case involves a researcher (Aisen) who for many years conducted Alzheimer’s research at the University of California at San Diego. In 2015, the University of Southern California successfully courted Dr. Aisen and members of his research team, and Dr. Aisen took much of his research, and a related computer program, to USC, which prompted UCSD to sue.
Though UCSD sued in state court and explicitly alleged only state law claims (mostly varieties of tortious interference and violations of duties), much of the case depended on who owned Dr. Aisen’s research and the computer program. This necessarily depended on federal copyright law and specifically the work-for-hire doctrine, and Dr. Aisen removed the case to the Southern District of California. The court subsequently ruled this was a proper removal. Once in federal court, Dr. Aisen brought counterclaims, and the court ruled that UCSD’s sovereign immunity defense was waived because UCSD had brought the suit in the first place, albeit in state court. The case is ongoing.
8. De Minimis Copying
ł VMG Salsoul, LLC v. Ciccone, Nos. 13-57104 & 14-55837, 2016 WL 3090780 (9th Cir. June 2, 2016)
Setting music sampling up for a potential U.S. Supreme Court battle, the Ninth Circuit sided with Madonna Louise Veronica Ciccone and her producer (Shep Pettibone) in emphatically rejecting the Sixth Circuit’s bright-line rule that all unlicensed sampling constitutes copyright infringement. Cf. Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005).
Music sampling, which is common in some musical genres, is the use of snippets from a sound recording — often altered or enhanced in some manner — in a new sound recording. In Ciccone, the Ninth Circuit affirmed the district court’s grant of summary judgment in favor of defendants Madonna, Pettibone and their associated record labels, music publishers and distributors on the grounds that — contrary to the Sixth Circuit rule set forth in Bridgeport — the de
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minimis exception to copyright infringement applies to sound recordings just as it does to other types of copyrighted works. The court also recognized that under prior precedent, the de minimis exception precluded a finding that the sampling infringed the underlying musical composition. The samples in question were “horn hits” (punctuation-like snippets of horn section chords) that lasted, respectively, less than a second and less than a quarter- second, and the court found that the average listener was unlikely to recognize their source.
While the sampled horn hits in Ciccone were very short and not central to the allegedly infringing song, that was not dispositive. Rather, under U.S. law a “use is de minimis only if the average audience would not recognize the appropriation” — in other words, only if “ordinary observations would cause [the sample] to be recognized as having been taken from the work of another.” This is because “the plaintiff’s legally protected interest” is “the potential financial return… which derive[s] from the lay public’s approbation of his efforts.” Ciccone at *4.
The Ninth Circuit noted that Madonna had taken the samples from only one track (the horns) rather than taking an “entire… temporal segment” of the original song and emphasized the ways in which the producer had digitally altered the sound of the horns. (among other changes, the horn hits were transposed into a different key, truncated to make them “punchier,” and combined with other sounds and effects). Ciccone, at *5–6. A defendant’s digital alteration of the sample is likely to be relevant in many future U.S. sampling cases because, as one musicologist who has served as an expert in such cases has observed, “samples are rarely used unaltered…. [an] important ethic for many producers is to ‘flip’ or transform the sample in some way in order to show their own creativity.” Alexander Stewart, “Been Caught Stealing: A Musicologist’s Perspective on Unlicensed Sampling Disputes”, 83 UMKC L. Rev. 339, 342 (2014).
The Ninth Circuit also supported its finding that the sample was unrecognizable as to source by discussing the fact that “Plaintiff’s primary expert originally misidentified the source of” one of the two horn hits, opining that it came from a different part of plaintiff’s song and later corrected his opinion after obtaining masters of the accused Madonna song and listening to the horn track separately. Because the standard is whether the average listener can recognize the sample, such a mistake by “a highly qualified and trained musician listening… with the express aim of discerning which parts
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of the song had been copied” permitted a finding of no infringement as a matter of law. Id. at *6.
The Ninth Circuit broadly attacked the Sixth Circuit’s reasoning in Bridgeport. First, the court explained that the Sixth Circuit’s approach to statutory analysis was a “logical fallacy.” Id. at *7-–10 (stating, inter alia, that “Bridgeport ignored the statutory structure and § 114(b)’s express limitation on the rights of a copyright holder”). Second, the court rejected Bridgeport’s reasoning that sampling involves a “physical taking rather than an intellectual one” and thus even trivial takings have value. Id. at *11 (“the possibility of a ‘physical taking’ exists with respect to other kinds of artistic works,” such as photographs, “to which the de minimis rule applies”). Finally, the court recognized that “a deep split among the federal courts already exists” because “almost every court not bound by [Bridgeport] has declined to apply” its bright-line rule. The Ninth Circuit vacated an award of attorney’s fees to defendants because the plaintiff’s claim was premised on a legal theory “adopted [in Bridgeport] by the only circuit court to have addressed the issue” and thus was “objectively reasonable.”
L. REMEDIES
1. Damages/Injunction Post eBay.
䖃 Hoge v. Schmalfeldt, No. 14-01683, 2014 WL 3052489 (D. Md. July 1, 2014)
Defendant Schmalfeldt repeatedly took blog posts produced by plaintiff Hoge and comments on those posts, and Schmalfeldt reproduced them in books, websites, and on the social media service Twitter. Hoge alleged copyright infringement and filed a motion for preliminary injunction.
The court looked at the four preliminary injunction factors. On the second, it concluded that Hoge was unlikely to suffer irreparable harm. Factors three and four the court barely considered, concluding quickly that they do not point toward preliminary injunction. On the first factor, likelihood of success on the merits, the court noted both that Hoge likely does not hold the copyright in comments on his blog, since he did not author them. The court examines in moderate depth the fair use defense, concluding that Schmalfeldt has a plausible defense under that theory. The court denied the motion for a preliminary injunction on these grounds.
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ł Tempest Publishing, Inc. v. Hacienda Records and Recording Studio, Inc., Memorandum and Opinion, Case No. 4:12-CV-000736 (SD Tex. Mar. 18, 2015).
In May 2012, Tempest Publishing (Tempest) sued Hacienda Records (Hacienda) for infringing the copyright to the 1992 Tejano song “Somos Dos Gatos” by Joe Martinez and Lee Quirino. Tempest claimed that Hacienda recorded and distributed a song substantially similar to “Somos Dos Gatos” without authorization.
“Somos Dos Gatos” was originally named “Dos Gatos,” with exclusive rights to the song signed to Tessitura Music Trust (Tessitura). The song was recorded and released as “Somos Dos Gatos” and the form filed with the Copyright Office was corrected to reflect the new name. Copies of the original songwriters’ contracts were modified by handwritten additions of the song’s new name. Tessitura later transferred the rights in “Somos Dos Gatos” to Musica Adelena, and in 1998, Musica Adelena transferred the song rights to Sharkey. Sharkey, eventually, transferred the rights to Tempest in 2000.
In 2008, Hacienda recorded a song called “Popurri: El Viento/Dos Gatos” with Hacienda-signed artist Conjunto Inizzio. Evidence showed that members of Conjunto Inizzio informed Hacienda’s vice president, Rick Garcia, that someone else had written parts of their song. Garcia believed Musica Adelena was the copyright owner and he knew he needed a license to distribute and record copies of Conjunto Inizzo’s song. Garcia testified that he intended to ask for a license but did not.
Hacienda’s net revenue from sales of the album was $79.40, and the court found that Tempest suffered no more than $4.37 in lost royalties. In March 2015, the court award $5,000 in statutory damages to Tempest after finding Hacienda’s infringement was willful. Although the infringement was willful, the court declined to award attorneys’ fees because Tempest alleged Hacienda infringed the copyrights of four songs and only succeeded on its “Somos Dos Gatos” allegation. Upon balancing “frivolousness, motivation, objective unreasonableness . . . [and] compensation and deterrence” factors considering all four claims, the court found an award of attorneys’ fees was unsupported.
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2. Attorney Fees (and Statutory Damages).
ł Malibu Media, LLC v. Pelizzo, 604 F. App’x 879 (11th Cir. 2015)
Leo Pelizzo appealed the district court’s decision declining to grant him prevailing-party fees under the Copyright Act, 17 U.S.C. § 505. The district court dismissed with prejudice an infringement claim brought by Malibu Media against Pelizzo. Malibu claimed Pelizzo had infringed its copyright to a number of films by repeatedly downloading them through an IP address assigned to Pelizzo. After the district court dismissed the case with prejudice, Pelizzo moved for prevailing party fees under the Copyright Act, 17 U.S.C. § 505 and vexatious-litigation fees under 28 U.S.C. § 1927. The district court determined, in accordance with the first two “Fogerty Factors,” that Malibu’s subjective motivation for filing suit was not improper and the suit was not frivolous. See Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). Based on these findings the district court declined to grant Pelizzo prevailing-party fees. The court affirmed the district court’s holding, finding no abuse of discretion in the lower court’s decision to deny Pelizzo prevailing-party fees under the Copyright Act.
ł Hewlett Custom Home Design, Inc. v. Frontier Custom Builders, Inc., 588 F. App’x 359 (Mem)(5th Cir. 2014)
The Fifth Circuit affirmed a jury verdict in favor of Hewlett Custom Home Design in a copyright infringement action it brought against Frontier Custom Builders for the infringement of Hewlett’s copyrighted home design. Frontier brought an evidentiary sufficiency challenge on the third element of copyright infringement, that of factual copying, which may be proved by demonstrating that the home designs contain probative similarities and that Frontier had access to the copyrighted home design. Frontier also contended that the judgement should be reversed or a new trial ordered because of the jury’s failure to apportion damages between Frontier’s misappropriation of the plans and other potential sources of profit gained from the infringing home design.
The court found first, that because the model home design in question was open to the public, there was sufficient proof of Frontier’s access to the plans. Second, regarding the apportionment of damages, the court reasoned that under 17 U.S.C. § 504(b) there is an initial presumption that the infringer’s entire gross revenue is attributable to the infringement of the copyright unless the infringer proves other factor’s attributed to the profits.
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ł Kirtsaeng v. John Wiley & Sons, Inc., Case No. 15-375, ___ U.S. ____(June 16, 2016)
In 2013, the U.S. Supreme Court determined that Supap Kirtsaeng, a Thai citizen, had the right to resale foreign-made books under the first-sale doctrine. Following that case, Kirtsaeng attempted to recover substantial attorney fees from Wiley pursuant to 17 U.S.C. § 505. There, the Copyright Act provides that reasonable attorney fees may be provided to the prevailing party. Kirtsaeng argued that special consideration should be given when considering whether a lawsuit resolved an important and close legal issue. Conversely, Wiley urged that the objective reasonability of the losing argument should be the primary factor in which a district court determines whether fees should be awarded to the prevailing party. Both the District Court and the Second Circuit dictated that the objective reasonableness of Wiley’s position prevented Kirtsaeng from recovering attorney fees. Cert. was granted.
The Supreme Court held that when determining whether to award attorney fees, under 17 U.S.C. § 505, the District Court should give substantial weight to the objective reasonableness of the losing party’s position, but that weight should not be controlling. The Court reasoned (adopting Wiley’s approach) that giving considerable weight to objective reasonability balances the potential for the pursuit of trial. Parties with strong positions remain likely to go forward with their petitions, while those with weak positions are deterred from continuing to appeal. Additionally, the Court rejected Kirtsaeng’s proposal outright, stating that the result of enforcing a fee-shifting policy would return mixed results, at best. The fee-awards would only serve as enticement to adventurous parties, and discourage parties whose cases may be on either side of a close legal issue. Regardless of the preferred argument, the Court found that the language of the Second Circuit raised a presumption against granting fees, while still properly calling for the district courts to give substantial weight to the reasonableness of a losing party’s position. The Supreme Court vacated and remanded the case to District Court, so that could take all other relevant factors into account in addition to the objective reasonableness of the losing party.
(The substantive issues in the case are discussed above in Section III.N.)
ł EMI April Music Inc. v. 4MM Games, LLC, No. 12-2080, 2014 WL 1383468 (S.D.N.Y. Apr. 7, 2014)(Mem. Op.)
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4MM is a video game developer that created “Def Jam Rapster” a video game that allows its players to perform famous rap songs. 4MM negotiated a license agreement with Capitol Records for several rap songs, for a total license fee of $78,375 plus a 15% royalty of the retail price charged for each downloadable recording. The parties never executed the license agreement and although 4MM used the Capitol recordings in its game 4MM never paid Capitol for the use of its sound recordings. Approximately 720,000 units of the game were sold worldwide; the number of downloadable recordings sold was not known. Capitol and other plaintiffs sued 4MM and other defendants. All defendants settled but 4MM. 4MM never responded to the complaint and a default judgment was entered against it. Capitol submitted briefing on its damages, for seven sound recordings, and the court awarded $535,125 in statutory damages, determined by trebling the original negotiated licensing fee of $78,375 and adding $100,000 per work for the three recordings available for download, plus pre-judgment interest.
ł Broadcast Music, Inc. v. Evie's Tavern Ellenton, Inc., 772 F.3d 1254 (11th Cir. 2014) (affirming damages, attorneys’ fees, and permanent injunction).
In September 2011, Broadcast Music, Inc. (BMI) filed suit against Evie’s Tavern Ellenton, Inc. (Evie’s) and Michael Evanoff, Evie’s president and owner, alleging six counts of copyright infringement. Evie’s, a Florida bar, had performed the compositions without a license despite receiving multiple cease and desist demands from BMI.
In September 2013, the court entered judgment in favor of BMI on five of six alleged infringement claims. The court awarded BMI statutory damages of $3,390.66 per song ($17,000 total) and $32,517.50 in attorneys’ fees. The court also granted a permanent injunction. Evie’s appealed the decision arguing that material issues of fact were present regarding the chain of title of the compositions and that statutory damages should have been reduced because Evie’s claims they were innocent infringers. They additionally challenged the permanent injunction and award of attorneys’ fees.
In April 2015, the Eleventh Circuit affirmed the holding finding that BMI had a valid licensing agreement for the five compositions. The appeals court noted an error in the district court’s analysis of one composition’s chain of title because there was a genuine issue of material fact as to whether the copyright ownership was properly
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assigned to Sony, a co-plaintiff. The appeals court held that the error was harmless because “BMI would have been granted summary judgment even without Sony’s involvement in the case” since, in the alternative, BMI would own Sony’s alleged rights. The court confirmed that the remaining four songs had sufficient records of transfer to BMI.
The Eleventh Circuit rejected Evie’s claim that its status as an innocent infringer made the court’s judgment and award of damages improper. The district court did not specify that Evie’s acted willfully but the award was upheld because the court considered the appropriate factors for damages (the infringers’ blameworthiness, the expenses that were saved and profits that were reaped in connection with the infringement, the revenues that were lost due to the defendants’ conduct, and the deterrent value of the damages).
The Eleventh Circuit held that the award of attorneys’ fees and imposition of a permanent injunction were not an abuse of discretion. The awarding of attorneys’ fees follows no precise rule or formula and the district court properly considered factors such as frivolousness, motivation, and deterrence. The district court did not specifically cover its finding of the factors required for an injunction, but its express agreement with BMI’s explanation of how it met the requirements was sufficient. At the end of the appeal, the court awarded BMI an additional $16,055.00 in attorneys’ fees.
M. PREEMPTION
ł Ryan v. Editions Limited West, Inc., 786 F.3d 754 (9th Cir. 2015)
The Ninth Circuit held that the Copyright Act’s attorney fees provisions, 17 U.S.C. § 505, did not preempt enforcement of a contractual attorney fees provision in copyright-based litigation.
Artist Victoria Ryan sued Editions Limited West (“ELW”), a publisher of art posters, claiming contributory infringement. She alleged that ELW knowingly supplied other entities with posters of her artwork to create derivative works, in violation of their publishing agreement and the Copyright Act. Ryan had failed to timely register the copyright and therefore an award of attorney fees under the Copyright Act was not available. Instead, she sought attorney fees under the California law that permits the execution and enforcement of contractual fee-shifting provisions. The district court found in favor of Ryan. The district court held that Ryan was entitled to the attorney fees she sought under the attorney fees provision of the parties’ agreement.
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On appeal, the Ninth Circuit affirmed in part, concluding that the Copyright Act does not preempt enforcement of a contractual attorney fees provision, even where the underlying claim is for copyright infringement. The Ninth Circuit found that Congress did not preempt the field when it enacted the Copyright Act and, therefore, claims that fell outside § 301(a)’s express preemption are not in conflict with the act. The Ninth Circuit determined that this contract claim fell outside the scope of § 301(a) and did not conflict with the purpose of the Copyright Act. The court affirmed the award of attorney fees under the California law.
The Ninth Circuit further held that the district court abused its discretion by categorically excluding the majority of Ryan’s attorney fees. The Ninth Circuit stated that the district court failed to provide an adequate explanation for its reduction in the award of attorney fees and impermissibly deducted categories of fees on a pro rata basis.
ł Spear Marketing, Inc. v. Bancorpsouth Bank, ARGO Data Resource Corp., 791 F.3d 586 (5th Cir. 2015)
Spear Marketing Inc., “SMI”, produces a banking cash inventory program called VaultWorks for banking customers, such as Bancorpsouth, “BCS”. VaultWorks software requires customers to access a user interface on the internet and manually enter inventory data. ARGO, another banking software developer, produced BCS’s automatic teller program. In 2004 ARGO began developing a cash inventory management program, similar to VaultWorks, which would eventually be bundled with their automatic teller program.
In 2010 SMI contacted ARGO to see if it would be interested in acquiring SMI. ARGO expressed interest and later received an hour demonstration of VaultWorks, during which SMI disclosed confidential business and technical information. ARGO later decided not to acquire SMI and continued to develop its inventory management system, marketing the program to BCS as a fully integrated package with BCS’s current program. BCS decided to use ARGO’s fully integrated program option and notified SMI of its intention not to renew the VaultWorks Agreement. In 2012 SMI filed suit claiming ARGO and BCS had stolen both technical and business trade secrets related to VaultWorks. In response to a removal motion by ARGO and BCS under federal preemption, SMI amended its claim to avoid removal.
The court held that to determine whether a claim is preempted, the original complaint must be considered, rather than the amended complaint. Using Globeranger's two-prong test to determine if the claim is preempted under the Copyright Act, the court found SMI's complaint comprised of know-how, ideas, procedures, systems, methods of operation, and concepts, which constituted SMI's trade secrets, but are
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excluded from copyright protection because they are not limited to specific expressions. Moreover, the court concluded that although the original complaint established items that were outside of copyrightable expressions, some of the allegations were within the subject matter of copyright and concern specific expressions.
The court held that SMI's claims are partially based on reproduction, distribution or display of SMI's trade secrets, and therefore equivalent and preempted by the Copyright Act. The court concluded that SMI's Texas theft liability and conversion claims were partially preempted, and removal was proper. SMI's motion to remand was denied.
ł Estate of Graham v. Sotheby’s, Inc., CV-11-08604-MWF-FFM, 2016 WL 1464229 (C.D. Cal. Apr. 11, 2016)
The Central District of California ruled that California’s Resale Royalty Act (CRRA), which mandates a small royalty on all fine art resold in California as long as the seller or sale is in California, is preempted by the federal Copyright Act. The Copyright Act expressly preempts state laws that “fall within the subject matter of copyright.” Here, the court held that CRRA contravenes the first sale doctrine, which says that once an individual copyrighted item (such as a copy of a book) is sold, the buyer owns the rights to that particular item and can re-sell it at will. By interfering with that at-will resale right, the court found that CRRA impermissibly stepped into the territory of the Copyright Act.
N. FIRST SALE DOCTRINE/PERPETUAL POSSESSION
ł Adobe Sys. Inc. v. Christenson, No. 12-17371, 2015 WL 9487887 (9th Cir. 2015)
In a dispute over ownership of Adobe software and the first sale doctrine, the Ninth Circuit held Adobe failed to carry its burden of proving the software was licensed rather than sold to Christenson. Christenson sold Adobe software on his website that he purchased legally from a third-party distributor. Under 17 U.S.C. § 109(a), the first sale doctrine allows a lawfully-obtained copy of a copyrighted work to be sold or otherwise disposed of by the new owner without the copyright owner’s permission.
The Ninth Circuit affirmed the district court and found that once Christenson established that he lawfully acquired ownership of the copyrighted software, the burden shifted to the copyright owner to establish the absence of a first sale. Adobe was unable to meet this burden, primarily because it was precluded from offering in evidence documents or testimony that generally described ways Adobe typically licenses software. Adobe could not point to a specific license or otherwise document the
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terms of contract with Christenson or the parties involved. Thus, Adobe did not carry its burden and summary judgment was proper.
The Ninth Circuit also affirmed that Christenson’s use of Adobe’s trademark to sell the goods fell under the nominative fair use defense because Christenson only used the trademark to identify and refer to Adobe’s genuine goods.
ł Kirtsaeng v. John Wiley & Sons, Inc., 133 S.Ct. 1351 (2013); John Wiley & Sons, Inc. v. Kirtsaeng, 713 F.3d 1142 (2d Cir. 2013)
Supap Kirtsaeng, a Thai citizen, who came to the United States in 1997 and graduated from Cornell for an bachelors degree and USC for a Ph.D. in mathematics. His education was paid for under a grant from the government of Thailand, which required him to return to Thailand to teach for ten years.
While in the United States, Kirtsaeng observed that the identical textbooks that were inexpensive in Thailand were much more expensive in price in the United States. Kirtsaeng enlisted friends and family to buy the foreign edition English-language textbook in Thai bookshops at inexpensive prices, and then mail them to him in the United States. Kirtsaeng sold the Thai bought books in the United States, reimbursing the friends and family and pocketing the profit.
Wiley sued in 2008 claiming that Kirtsaeng’s unauthorized importation of its books and later resale into the United States constituted infringement under Section 106.
Kirtsaeng defended that the books were ‘lawfully made’ and that he had acquired them legitimately.
The trial court found infringement; the Second Circuit affirmed; and the Supreme Court reversed and remanded. The ruling essentially is that the First Sale Doctrine applies to copies made abroad.
The Supreme Court based its ruling on a conclusion that Congress would not have intended to create the practical harms with which a geographical interpretation would threaten ordinary scholarly, artistic, commercial and consumer activities. Considerations of simplicity and coherence tipped the purely linguistic balance in favor of the non-geographical reading.
Justice Ruth Bader Ginsburg was joined in her dissent, in which she contends that copies made outside of the U.S. do not fall under the U.S. Copyright Act’s “first sale” doctrine, by Justices Anthony Kennedy and Antonin Scalia.
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In light of the Court’s decision, the Second Circuit determined there were no further issues to decide on remand, and reversed the district court.
The request for an award of attorney’s fees in this case is discussed above in the Attorney’s Fee Section, Under Section L, Remedies.
O. TERMINATION
ł Brumley v. Albert E. Brumley & Sons, Inc. 15-5429, 2016 WL 2848668 (6th Cir. Apr. 20, 2016)
In the late 1920s, Albert Brumley wrote the gospel favorite, “I’ll Fly Away.” He assigned the rights in the song to a music company, which he later bought, recapturing his assigned copyright. Brumley co-owned his music company with his wife, Goldie. The couple later sold their company to two of their sons, Robert and William. In 1979, after Brumley died, Goldie assigned her rights in the song to her sons’ company. William later sold his interest in the company to Robert. Robert owned the music company and the copyright to “I’ll Fly Away.”
Brumley and Goldie’s four other children sought to terminate the assignment to Robert’s company. Because Brumley initially transferred the copyright before 1978, §304 of the Act governs, which allows the author or his heirs to terminate unfavorable assignments and negotiate new licenses. Termination rights pass from authors to their children and surviving spouses. When Brumley died, half of his termination interest passed to his wife Goldie, and the other half passed in equal shares to his children. When an individual or group with more than half of a termination right complies with the Act’s termination procedure, termination is effected. However, the termination right can only be used once.
Robert argued the siblings’ termination was not effective. First, he argued that Goldie exercised the termination right when she assigned her rights away in 1979. Thus, Robert argued, the termination right had already been used once and could not be used again by the siblings. The court rejected that argument, stating that the Act provides specific requirements for termination. Because the 1979 assignment did not fulfill or even reference those requirements, termination did not occur at that time. The court stated that even if it overlooked the procedural requirements, the contract did not supplant the previous agreement, so it could not be considered a termination. Furthermore, the court points out that in 1979, Goldie only held half of the termination right and could not exercise it alone. Therefore, even if she had intended to use the termination right, she would not have been able to. The district
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court held that as a matter of law, the siblings’ termination was effective. The Sixth Circuit agreed. Larson v. Warner Bros Entertainment, Inc., Nos. 13-56243, 13-56244, 13-56257, & 13- 56259, 2016 WL 537071 (9th Cir. 2016)
This is another appeal in a long-running litigation stemming from the 1938 transfer of the Superman copyright from Jerome Siegel, Superman co-creator, to DC Comics (“DC”). In consolidated actions, Laura Siegel Larson, heir of Jerome Siegel, appealed the courts earlier decision that a 2001 letter from the Siegel family’s attorney to DC’s attorney constituted a binding settlement agreement. The court affirmed its earlier finding, that the letter constituted a present assignment of copyrights, not conditioned on future signing of a formal contractual agreement, because the letter finalized material terms of a contract to which the parties agreed. Additionally, the court held that the agreement by which the Siegel heirs reassigned purportedly recaptured copyrights in exchange for compensation was valid because the heirs had bargained with statutory termination power in hand, and made no showing that they were in any way prejudiced by the agreement under 17 U.S.C.A. § 304(c)(5), (c)(6)(D).
ł Baldwin v. EMI Feist Catalog, Inc., 805 F.3d 18 (2nd Cir. 2015)
In a dispute over the termination rights to “Santa Clause is Coming to Town,” the Southern District of New York granted summary judgment to the longtime rights holder, EMI. The song’s original writer assigned ownership of the work to Leo Feist, Inc. (a large music publisher and the predecessor to EMI) in 1951, and thirty years later (after Congress granted the termination right), in 1981 executed an agreement that the district court interpreted as a termination and new grant. Because a copyright holder only get one “bite at the apple” to terminate, the district court found that the heirs could no longer terminate the copyright assignment. However, the Second Circuit reversed, finding that the 1981 agreement superseded the one from 1951 and preserved the termination right, and the heirs observed all necessary formalities when they served a termination notice in 2007 for a termination effective in late 2016. EMI has petitioned for cert.
ł The Ray Charles Found. v. Robinson, No. 13–55421, 2015 WL 4591871 (9th Cir. July 31, 2015)
Before he died, famous musician Ray Charles informed all of his children that he would establish irrevocable trusts of $500,000 for each of them if they agreed to waive all further claims to his estate.
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When he died, the sole beneficiary of Ray Charles’s estate was his charitable foundation, The Ray Charles Foundation.
In 2010, seven of the children filed notices with the Copyright Office that they intended to terminate copyright transfers Ray Charles had made to Warner/Chappell Music. In 2012, the Foundation filed a lawsuit to challenge the termination notices. The district court dismissed the Foundation’s lawsuit for lack of standing on the theory that the Foundation could not assert Warner/Chappell’s interests for them.
The Ninth Circuit reversed and remanded for further proceedings. The Foundation had Article III standing because the terminations would stop the Foundation from receiving royalty income from Warner/Chappell. The suit was ripe because some of the children’s asserted termination dates had passed during the course of litigation and there was no pending action before the Copyright Office. Although the Ninth Circuit held that the Foundation was not the beneficial owner of the copyrights, it held that the Foundation was a real party in interest because the Foundation was likely to lose its royalty payments. Also, the Foundation met the zone-of- interests test, despite the children’s arguments that the termination clauses were intended to protect authors and their children, because the Foundation was arguing the Act’s termination provisions did not apply to the Ray Charles songs at issue.
IV. LEGISLATIVE DEVELOPMENTS
The following copyright-related bills are pending in the current (2015-2016) U.S. Congress:
Copyright Office for the Digital Economy Act of 2015, H.R.4241
Establishes the United States Copyright Office as an agency in the legislative branch, moving it from its current position within the Library of Congress.
Establishes the position of Director of the United States Copyright Office and sets qualifications for the appointment of such position.
Charges the Director with appointing and fixing the pay of other officers and employees of the Office.
Grants specific powers and duties to the Office, including:
(1) Advising Congress on copyright and related matters;
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(2) Assisting the executive branch an the Judiciary on copyright and related matters;
(3) Serving on United States delegations relating to copyright and related matters;
(4) Conducting studies and programs including educational programs conducted cooperatively with foreign copyright offices and intergovernmental organizations; and
(5) Keeping records, authenticating certified documents issued by the Office, and performing other functions as Congress may direct.
Modernizes copyright registration provisions to require examination copies rather than deposits of physical materials.
Establishes a Copyright Advisory Board, to be appointed by the Director, to advise and consult with the Copyright Office in the exercise of its functions.
Provides transition protocol for the interim, before the Copyright Office becomes an independent agency.
Requires the Director to conduct a study on the future administration of mandatory deposit provisions in Section 407 of Title 17 of the United States Code.
Requires the Director to conduct period studies on information technology necessary to maintain a modern copyright system.
Songwriter Equity Act of 2015, S.662, H.R. 1283 -
CRS Bill Summary:
“Amends federal copyright law regarding the exclusive rights of sound recording copyright owners to remove a provision that prohibits license fees payable for the public performance of sound recordings, by means of a digital audio transmission, from being taken into account in any administrative, judicial, or other governmental proceeding to set or adjust the royalties payable to copyright owners of musical works for the public performance of their works.
Requires Copyright Royalty Judges (CRJs), when setting royalty rates under the compulsory license available for the reproduction and distribution of musical works (commonly referred to as a "mechanical license"), to establish rates and terms that most clearly represent the rates and terms that would have been negotiated in the marketplace between a willing buyer and seller.
Requires CRJs, in establishing such rates and terms, to base their decision on marketplace, economic, and use information presented by the participants.
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Allows consideration of comparable uses and circumstances under voluntary license agreements.”
Fair Play Fair Pay Act of 2015, H.R. 1733 -
CRS Bill Summary:
“Amends federal copyright law to extend a sound recording copyright owner's rights to include the exclusive right to perform or authorize the performance of the recording publicly by means of any audio transmission, thereby requiring terrestrial AM/FM broadcast radio stations that play copyrighted sound recordings to pay royalties for the non-digital audio transmissions of the recordings. (Currently, sound recording copyright owners have a performance right that applies only to digital transmissions by cable, satellite, and Internet radio stations.)
Requires the Copyright Royalty Judges (CRJs) to commence a proceeding to determine royalty rates and terms for nonsubscription broadcast transmissions. Directs the CRJs, in determining royalty rates for statutory licensing of such digital or non-digital transmissions, to: (1) distinguish among different types of services, and (2) include a minimum fee for each type of service. Allows differences to be based on the quantity and nature of the use of sound recordings and the degree to which use of the service may substitute for or promote consumer purchases of phonorecords.
Requires the CRJs to establish rates that most clearly represent the rates and terms that would have been negotiated in the marketplace between a willing buyer and a willing seller. Directs the CRJs to base their decision on economic, competitive, and programming information presented by the parties, including: (1) the sound recording copyright owner's other streams of revenue from the recordings; and (2) the relative creative contribution, technological contribution, capital investment, cost, and risk of the copyright owner and the transmitting entity.
Caps the annual royalty rate at: (1) $500 for small commercial broadcast stations with less than $1 million in revenues for the calendar year, and (2) $100 for public broadcasting stations. Exempts religious service broadcasts or incidental uses of music from royalty payment requirements.
Requires proceeds for direct licenses of transmissions otherwise licensable under the statutory license to be distributed in the same manner as statutory license proceeds. Requires payment of 45% to featured artists, 2.5% to nonfeatured musicians, and 2.5% to nonfeatured vocalists. Makes such distribution the sole payments to which featured and nonfeatured artists are entitled under a direct license.
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Requires payment of performance royalties for sound recordings fixed before February 15, 1972, in the same manner as royalties are paid for sound recordings fixed after such date.
Requires a collective designated by the CRJs to implement a policy to accept instructions (referred to as a "letter of direction") from a sound recording copyright owner, or from a recording artist, to distribute a portion of performance royalty payments to a producer, mixer, or sound engineer who was part of the creative process behind the sound recording.
Requires the collective to adopt special procedures for a producer, mixer, or sound engineer to receive a portion of royalties for recordings fixed before November 1, 1995, by certifying that a reasonable effort has been made to obtain a letter of direction from an artist who owns the right to receipts payable with respect to the sound recording.”
American Royalties Too Act of 2015, S.977, H.R.1881
CRS Bill Summary:
“Expands copyright owners' exclusive rights, in the case of a work of visual art, to include the right to collect or authorize the collection of a royalty if the work is sold by a person other than the author for at least $5,000 in an auction.
Defines "auction" as a public sale of visual art to the highest bidder run by an entity that sold at least $1 million of works of visual art during the previous year.
Revises the term "work of visual art" to make requirements for photographs consistent with requirements for paintings, drawings, and prints. (Currently, a photograph must be a still photographic image produced for exhibition purposes only.)
Limits the amount of such a royalty to the lesser of: (1) 5% of the purchase price; or (2) $35,000, subject to cost-of-living adjustments.
Directs entities conducting such auctions to collect and pay the royalties to a visual artists' copyright collecting society. Requires the collecting society, at least four times each year, to distribute the appropriate royalties (minus administrative expenses) to authors or successor copyright owners.
Requires an author of a work of visual art, in order to be eligible to receive such a royalty, to: (1) be a citizen of, or domiciled in, the United States or a country that provides resale royalty rights; or (2) have first created the work in the United States or a country that provides such royalty rights.
Establishes a copyright infringement offense for the failure to pay such a royalty. Subjects infringers to: (1) statutory damages, and (2) liability for the full royalty.
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Prohibits the sale, assignment, or waiver of the right to collect such a royalty, subject to exceptions for works made for hire and transfers of copyright ownership.
Directs the Register of Copyrights to issue regulations governing visual artists' copyright collecting societies.”
Breaking Down Barriers to Innovation Act of 2015, S.990, H.R.1883
CRS Bill Summary:
“Revises procedures established under the Digital Millennium Copyright Act for the Librarian of Congress to conduct an administrative rulemaking every three years to determine whether to exempt certain noninfringing uses of a copyrighted work from the statutory prohibition on circumventing a technological measure controlling access to a particular class of work.
Requires the Librarian, when evaluating whether to allow an administrative exemption, to consider the impact of the circumvention prohibition on: (1) any reduction in the availability for use of copyrighted works; (2) repairs, recycling, or other fair uses when applied to copyrighted works, as well as access to information not subject to copyright protection; (3) accessibility of works and technologies for persons with disabilities; and (4) security research.
Prohibits the Librarian from placing the burden of proof on the proponent of an exemption. Requires consideration of the totality of the evidence.
Allows the Librarian to make administrative exemption determinations through rulemaking proceedings outside of the three-year review process if it is substantially likely that users of a copyrighted work are, or are likely to be in the succeeding three-year period, adversely affected by virtue of the prohibition in their ability to make noninfringing uses.
Requires the Librarian to automatically renew for an ensuing three-year period any exemptions granted under a rulemaking unless, as a result of changed circumstances, it is unlikely that users are adversely affected by the prohibition.
Establishes a presumption that users are likely to be adversely affected if a technological measure inhibits noninfringing uses that improve accessibility of works or technologies for persons with disabilities.
Expands existing statutory exceptions by removing certain restrictions and conditions that apply to permissible circumventions for:
x reverse engineering to achieve interoperability of an independently created computer program with other programs;
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x encryption research on copies, phonorecords, performances, or displays of a published work;
x activities to prevent the collection or dissemination of personally identifying information about a natural person; or
x authorized security testing on computer systems or networks.”
You Own Devices Act, H.R.862
CRS Bill Summary:
“Amends federal copyright law to allow the owner of a machine or other product operated in any part by a computer program to transfer an authorized copy of the computer program, or the right to obtain such copy, when the owner sells, leases, or otherwise transfers the machine or product to another person. Prohibits such right to transfer the computer program from being waived by any agreement.
Requires any right to receive modifications to such a computer program relating to security or error correction that applied to the owner of the machine or product to apply to the person to whom the machine or product and the copy of the computer program are transferred.
Prohibits this Act from being construed to permit the owner to retain an unauthorized copy of the computer program after such a transfer.”
Unlocking Technology Act of 2015, H.R.1587
CRS Bill Summary:
“Amends the prohibition under federal copyright law on the circumvention of a technological measure that controls access to a copyright-protected work to require that such prohibition apply only to circumventions carried out in order to infringe or facilitate infringement of a protected work.
Declares that it shall not be a violation to:
(1) circumvent a technological measure if the purpose is to engage in a use that is not an infringement of federal copyright law; or
(2) use, manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part primarily designed or produced to facilitate noninfringing uses of protected works by circumventing a technological measure that effectively controls access to such work, unless the intent is to infringe or facilitate infringement of a copyright.
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Declares that it is not an infringement to copy or adapt the software or firmware of a user-purchased mobile communications device for the sole purpose of enabling the device to connect to a wireless communications network if:
(1) the copying or adapting is initiated by, or with the consent of, the owner of that device or the owner's agent;
(2) the owner or agent is in legal possession of the device; and
(3) the owner has the consent of, or an agreement with, the authorized operator of such wireless communications network to make use of its network.
(Thus, allows the "unlocking" of mobile devices without requiring an owner to obtain the consent of the initial carrier network before switching to a new carrier.)
Directs the President to ensure that applicable bilateral and multilateral trade agreements are modified to be consistent with this Act.”
Copyright and Marriage Equality Act, S.23, H.R.238
CRS Bill Summary:
“Amends federal copyright law to revise the definition of "widow" or "widower" for purposes of provisions concerning the transfer of a copyright to an author's spouse or other next of kin following the author's death. Declares that an individual is the widow or widower of an author if the courts of the state in which the individual and the author were married (or, if the individual and the author were not married in any state but were validly married in another jurisdiction, the courts of any state) would find that the individual and the author were validly married at the time of the author's death. (Currently, only the author's surviving spouse under the law of the author's domicile at the time of death is considered a widow.)”
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TABLE OF AUTHORITIES
Page(s)
Cases
16 Casa Duse, LLC v. Merkin, 791 F.3d 247 (2d Cir. 2015) ...... 23
ABS Entertainment, Inc. v. CBS Corp., CV 15-6257 PA, 2016 U.S. Dist. LEXIS 71470 (C.D. Cal. May. 30, 2016)...... 21
Adobe Sys. Inc. v. Christenson, No. 12-17371, 2015 WL 9487887 (9th Cir. 2015) ...... 84
Alaska Stock, LLC v. Houghton Mifflin Harcourt Publ’g Co., 747 F.3d 673 (9th Cir. 2014)...... 31
Alig-Mielcarek v. Jackson, No. 11-00255, 2014 WL 272181 (S.D.Ohio, January 23, 2014) ...... 9
American Broadcasting Cos. v. Aereo, 134 S.Ct. 2498 (2014) ...... 48
American Institute of Physics v. Winstead PC, No. 12-01230, 2013 WL 6242843 (N.D. Tex. Dec. 03, 2013) ...... 62
Andrews v. Daughtry, 994 F. Supp. 2d 728 (M.D.N.C. 2014)...... 9
Antonick v. Elec. Arts, No. 11-1543, 2014 WL 245018 (N.D. Cal. Jan. 22, 2014)...... 30
Arista Records LLC v. Tkach, Memorandum and Order, Case No. 1:15-CV-03701 (AJN) (S.D.N.Y. June 3, 2015)...... 56
Associated Press v. Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d 537 (S.D.N.Y. 2013) ...... 64
Authors Guild, Inc. v. Google, Inc., 804 F.3d 202 (2d Cir. 2015) ...... 1
Authors Guild, Inc. v. Hathitrust, 755 F.3d 87 (2d Cir. 2014) ...... 2
Automated Solutions Corp. v. Paragon Data Sys., 756 F.3d 504 (6th Cir. 2014) ...... 40
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Baldwin v. EMI Feist Catalog, Inc., 805 F.3d 18 (2nd Cir. 2015)...... 86
Bikram’s Yoga College v. Evolation Yoga, Case No. 13-55763 (9th Cir. 2015)...... 16
BMG Rights Mgmt. (US) LLC v. Cox Communications, Inc., 2015 U.S. Dist. LEXIS 161091 (E.D. Va. Dec. 1, 2015) ...... 57
Bouchat v. Baltimore Ravens Ltd. Partnership, 737 F.3d 932 (4th Cir. 2013)...... 61
Brian Jonestown Massacre v. Davies, 2014 WL4076549 (N.D. Cal. Aug. 18, 2014) ...... 22
Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005) ...... 75
Broadcast Music, Inc. v. Evie's Tavern Ellenton, Inc., 772 F.3d 1254 (11th Cir. 2014) ...... 81
Broadcast Music, Inc. v. Pandora Media, Inc., Opinion and Order, Case No. 1:13-cv-04047 (LLS) (S.D.N.Y. May 28, 2015) ...... 19
Broadcast Music, Inc. v. Pandora Media, Inc., Opinion and Order, Case No. 13-Civ-4037 (LLS) (S.D.N.Y. Dec. 19, 2013) ...... 19
Broadcast Music v. Meadowlake, Inc. 754 F.3d 353 (6th Cir. 2014)...... 51
Brownstein v. Lindsay, 742 F.3d 55 (3d Cir. 2014) ...... 26
Brumley v. Albert E. Brumley & Sons, Inc. 15-5429, 2016 WL 2848668 (6th Cir. Apr. 20, 2016)...... 85
Building Graphics, Inc. v. Lennar Corp., 708 F.3d 573 (4th Cir. 2013) ...... 37
BWP Media USA, Inc. v. Clarity Digital Group, LLC, 15-1154, 2016 WL 1622399 (10th Cir. Apr. 25, 2016) ...... 58
BWP Media USA, Inc. v. Polyvore, Inc., No. 13-CV-7867 (RA), 2016 WL 3926450 (S.D. N.Y. July 15, 2016) ...... 59
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BWP Media USA, Inc. v. T&S Software Associates, Inc. 3:13-CV-2961-BF, 2016 WL 1248908 (N.D. Tex. March 25, 2016)...... 59
Caner v. Autry, No. 14-00004, 2014 WL 2967607 (W.D. Va. July 1, 2014) ...... 64
Capitol Records, LLC v. Escape Media Group, Inc., Memorandum and Order, 12-CV-6646 (AJN) (S.D.N.Y. Mar. 25, 2015)...... 56
Capitol Records, LLC v. ReDigi Inc., 934 F. Supp. 2d 640 (S.D.N.Y. 2013) ...... 63
Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) ...... 62
Carlin v. Bezos, No. 15-2774, 2016 WL 2957212 (E.D. Penn. May 23, 2016)...... 33
Chamberlain Group v. Skylink Technologies, Inc., 381 F.3d 1178 (Fed. Cir. 2004) ...... 58
Cheffins v. Stewart, 12-16913, 2016 WL 3190914 (9th Cir. June 8, 2016)...... 68
Cohen v. G&M Realty L.P., 988 F. Supp. 2d 212 (E.D.N.Y. 2013) ...... 69
Columbia Pictures Industries, Inc. v. Fung, 710 F.3d 1020 (9th Cir. 2013)...... 54
Complex Systems v. ABN AMRO Bank N.V., No. 08-07497, 2014 WL 1883474 (S.D.N.Y. May 9, 2014)...... 34
Costco Wholesale Corp., v. Omega, S.A., 776 F.3d 692 (9th Cir. 2015)...... 68
Couponcabin, LLC v. Savings.com, Inc., No. 2:14-CV-39-TLS, 2016 WL 3181826 (N.D. Ind. June 8, 2016) ...... 57
Croak v. Saatchi & Saatchi, N. Am., Inc., 15 Civ. 7201, 2016 WL 1274713 (S.D.N.Y. March 31, 2016) ...... 46
DaVinci Editrice S.R.L. v. ZiKo Games, LLC, H-13-3415, 2016 WL 1672519 (S.D. Tx April 27, 2016) ...... 18
DC Comics v. Towle, 802 F.3d 1012 (9th Cir. 2015)...... 13
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Derrick Petroleum Servs. v. PLS, Inc., No. 14-1520, 2015 WL 224991 (S.D. Tex. Jan. 15, 2015) ...... 25
Derrick Petroleum Servs. v. PLS, Inc., Slip Copy, No. 14-1520, 2014 WL 7447229 (S.D. Tex. Dec. 31, 2014) ...... 25
Diversey v. Schmidly, 738 F.3d 1196 (10th Cir. 2013) ...... 61
EMI April Music Inc. v. 4MM Games, LLC, No. 12-2080, 2014 WL 1383468 (S.D.N.Y. Apr. 7, 2014)(Mem. Op.)...... 80
Equals Three, LLC v. Jukin Media, Inc., 139 F.Supp.3d 1094 (C.D. Cal. 2015)...... 67
FireSabre Consulting LLC v. Sheehy, No. 11-04719, 2013 WL 5420977 (S.D.N.Y. Sept. 26, 2013) ...... 11
Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 15-1164-cv, 2016 WL 1445100 (2nd Cir. Apr. 13, 2016)...... 20
Folkens v. Wyland (NFN), 2:14-cv-02197-CKD, 2016 WL 1375584 (E.D. Cal., Apr. 7, 2016)...... 48
Fox News Network, LLC v. TVEyes, Inc., 124 F.Supp.3d 325 (S.D.N.Y. 2015)...... 65
Fox TV Stations Inc. et al. v. FilmOn X LLC et al., 2015 U.S. Dist. LEXIS 161304 (D.C. Dec. 2, 2015) ...... 49
Fox TV Stations, Inc. v. AereoKiller, 2015 U.S. Dist. LEXIS 97305 (C.D. Cal July 16, 2015) ...... 49
Francescatti v. Germanotta, No. 11-CV-05270, 2014 U.S. Dist. LEXIS 81794, 2014 WL 2767231 (N.D. Ill. June 17, 2014)...... 42
Garcia v. Google, Inc. 786 F.3d 733 (9th Cir. 2015)...... 26
Geophysical Service Inc. v. ConocoPhillips Co., CV H-15-2766, 2016 WL 2839286 (S.D. Tex. May 13, 2016) ...... 70
Gold Glove Productions, LLC v. Handfield, 14-55797, 2016 WL 1553912 (9th Cir. Apr. 18, 2016) ...... 47
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Good Morning to You Productions Corp. et al. v. Warner/Chappell Music Inc. et al., case number 2:13-cv-04460, in the U.S. District Court for the Central District of California ...... 73
Estate of Graham v. Sotheby’s, Inc., CV-11-08604-MWF-FFM, 2016 WL 1464229 (C.D. Cal. Apr. 11, 2016) ...... 83
Harney v. Sony Pictures Television, Inc., 704 F.3d 173 (1st Cir. 2013)...... 38
Hayuk v. Starbucks Corp., 15CV4887, 2016 WL 154121 (S.D.N.Y. Jan. 12, 2016)...... 47
Hendricks & Lewis v. Clinton, 755 F.3d 1077 (9th Cir. 2014) ...... 27
Hewlett Custom Home Design, Inc. v. Frontier Custom Builders, Inc., 588 F. App’x 359 (5th Cir. 2014) ...... 79
Hoge v. Schmalfeldt, No. 14-01683, 2014 WL 3052489 (D. Md. July 1, 2014) ...... 77
Home Legend, LLC v. Mannington Mills, Inc., 784 F.3d 1404 (11th Cir. 2015) ...... 10
IAE, Inc. v. Shaver, 74 F.3d 768 (7th Cir.1996)...... 25
In re Petition of Pandora Media, Inc., Opinion and Order, Case No. 12-Civ-8035 (DLC) (S.D.N.Y. Sept. 17, 2013) ...... 19
Inhale, Inc. v. Starbuzz Tobacco, 755 F.3d 1038 (9th Cir. 2014), 135 S. Ct. 758 (2014) ...... 13
Isbell v. DM Records, Inc. (In re Isbell Records, Inc.), 774 F.3d 859 (5th Cir. 2014)...... 29
John Wiley & Sons, Inc. v. Kirtsaeng, 713 F.3d 1142 (2d Cir. 2013) ...... 84
Karlson v. Red Door Homes, LLC, No. 11-01511, 2012 U.S. Dist. LEXIS 68395, 2012 WL 1747845 (N.D. Ala. Apr. 30 2014)...... 28
Keeling v. Hars, 809 f.3d 43 (2nd Cir. 2015) ...... 66
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Kirtsaeng v. John Wiley & Sons, Inc., 133 S.Ct. 1351 (2013)...... 79, 84
Klinger v. Conan Doyle Estate, Ltd. 755 F.3d 496 (7th Cir. 2014), (N.D. Ill. 2013) ...... 11
Larson v. Warner Bros Entertainment, Inc., Nos. 13-56243, 13-56244, 13-56257, & 13-56259, 2016 WL 537071 (9th Cir. 2016) ...... 86
Lenz v. Universal Music Corp., 801 F.3d 1126 (9th Cir. 2015) ...... 52
Lorenzana v. S. Am. Rest. Corp., 799 F.3d 31 (1st Cir. 2015) ...... 15
Lulirama Ltd., Inc. v. Axcess Broad. Serv., 128 F.3d 872 (5th Cir.1997)...... 25
Lumos, Inc. v. LifeStrength, LLC, No. 12–01196, 2014 WL 4355451, 2014 U.S. Dist. LEXIS 124298 (D. Utah Sept. 3, 2014) ...... 35
Luvdarts, LLC v. AT&T Mobility, LLC, 710 F.3d 1068 (9th Cir. 2013)...... 50
Mahavisno v. Compendia Bioscience, Inc., No. 13-12207, 2014 WL 340369 (E.D. Mich. Jan. 30, 2014)...... 24
Malibu Media, LLC v. Pelizzo, 604 F. App’x 879 (11th Cir. 2015)...... 78
Marino v. Usher, 22 F. Supp. 3d 437 (E.D. Pa. 2014) ...... 28, 42
McDonald v. Brown, No. 12-07109, 2014 WL 116003 (S.D.N.Y. Jan. 13, 2014) ...... 32
Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., 722 F.3d 591 (4th Cir. 2013)...... 31
Minden Pictures, Inc. v. John Wiley & Sons, No. 14-15267, 2015 WL 4547593 (9th Cir. July 29, 2015) ...... 32
Morris v. Guetta, No. 12-00684, 2013 WL 440127 (C.D. Cal. Feb. 04, 2013) ...... 63
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Naruto v. Slater, 15-cv-04324, 2016 WL 362231 (N.D. Cal. Jan. 28, 2016) ...... 18
NTE LLC v. Kenny Construction Co., No. 14-09558, 2015 WL 500623 (N.D. Ill. Feb. 4, 2015)...... 35
Olem Shoe Corp. v. Wash. Shoe Corp., 591 F. App’x 873 (11th Cir. 2015)...... 45
Oracle America, Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014) and C-10-03561 WHA (N.D. Cal. 2016)...... 40
Pandora Media, Inc. v. Am. Soc. of Composers, Authors & Publishers, 785 F.3d 73 (2d Cir. 2015) ...... 19
Paramount Pictures Corp. v. Axanar Productions, Inc. 15-cv-09938, Dkt. 43 (C.D. Cal. May 9, 2016) ...... 46
Paycom Payroll v. Richison, 758 F.3d 1198 (10th Cir. 2014) ...... 41
Perfect 10 Inc. v. Giganews, Inc., 993 F. Supp. 2d 1192 (C.D. Cal. 2014)...... 52
Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) ...... 71
Pringle v. Adams, 556 F. App’x 586 (9th Cir. 2014) ...... 40
The Ray Charles Found. v. Robinson, No. 13–55421, 2015 WL 4591871 (9th Cir. July 31, 2015) ...... 87
Regents of the University of California v. Aisen, 15-cv-1766-BEN, 2016 WL 1428072 (S.D. Cal., Apr. 12, 2016) ...... 75
Reno-Tahoe Specialty, Inc. v. Mungchi, Inc., No. 12-01051, 2014 WL 553181 (D. Nev. Feb. 10, 2014)...... 36
Rentmeester v. Nike, No. 15-00113, 2015 WL 3766546 (D. Or. June 15, 2015)...... 72
Righthaven LLC v. Hoehn, 716 F.3d 1166 (9th Cir. 2013) ...... 33
Rock River Communications, Inc. v. Universal Music Group, Inc., 745 F.3d 343 (9th Cir. 2014) ...... 35
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Rupa Marya et al. v. Warner/Chappell Music, Inc. et al., 2015 U.S. Dist. LEXIS 129575 (C.D. Cal. Sept. 22, 2015) ...... 73
Ryan v. Editions Limited West, Inc., 786 F.3d 754 (9th Cir. 2015)...... 82
Scorpio Music S.A. v. Willis, No. 11cv1557 BTM (RBB)...... 21
SelectHealth, Inc. v. Risinger, 18 F. Supp. 3d 1268 (D. Utah 2014) ...... 9, 34
Sieger Suarez Architectural Partnership, Inc. v. Arquitectonica Intern. Corp., 998 F. Supp. 2d 1340 (S.D. Fla. 2014) ...... 36
Sissom v. Snow, 626 Fed.Appx. 163 (7th Cir. 2015)...... 18
Skidmore v. Led Zeppelin, CV 15-3462, 2016 WL 1442461 (C.D. Cal. Apr. 8, 2016)...... 17, 48
SOFA Entertainment, Inc. v. Dodger Productions, Inc., 709 F.3d 1273 (9th Cir. 2013)...... 63
Spear Marketing, Inc. v. Bancorpsouth Bank, ARGO Data Resource Corp., 791 F.3d 586 (5th Cir. 2015) ...... 82
StorageCraft Technology Corp v. Persistent Telecom Solutions, Inc., No. 2:14-CV-76-DAK, 2016 U.S. Dist. Lexis 79394 (C.D. Utah June 17, 2016) ...... 12
Swatch Group Management Services Ltd. v. Bloomberg L.P., 742 F.3d 17 (2d Cir. 2014) ...... 60
TCA TV Corp. v. McCollum, 15 civ. 4325, 2015 WL 9255341 (S.D.N.Y. December 17, 2015) ...... 67
TD Bank, N.A. v. Hill, No. 12-07188, 2014 WL 413525 (D.N.J. Feb. 03, 2014) ...... 26
Tempest Publishing, Inc. v. Hacienda Records and Recording Studio, Inc., Memorandum and Opinion, Case No. 4:12-CV-000736 (SD Tex. Mar. 18, 2015)...... 77
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Tomaydo-Tohmahdo, LLC v. Vozary, 629 Fed.Appx 658 (6th Cir. 2015)...... 15
TufAmerica, Inc. v. Diamond, Memorandum and Order, Case No. 12-Civ-3529 (AJN) (S.D.N.Y. Mar. 24, 2015) ...... 38
Tufamerica, Inc. v. Diamond, 968 F. Supp. 2d. 588 (S.D.N.Y. 2013) ...... 38, 39, 40
UMG Recordings, Inc. v. Augusto, 628 F.3d 1175, 97 U.S.P.Q.2d 1244, 11 Cal. Daily Op. Serv. 135, 2011 Daily Journal D.A.R. 235, C.A.9 (Cal.), January 04, 2011 (NO. 08- 55998) ...... 63
UMG Recordings, Inc. v. Shelter Capital Partners LLC, 718 F.3d 1006 (9th Cir. 2013)...... 54
Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015) ...... 16
Viacom Intern. Inc. v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012) ...... 55
Viacom Intern. Inc. v. YouTube, Inc., 940 F. Supp. 2d 110 (S.D.N.Y. 2013)...... 55
VMG Salsoul, LLC v. Ciccone, Nos. 13-57104 & 14-55837, 2016 WL 3090780 (9th Cir. June 2, 2016)...... 75, 76, 77
White v. West Publ'g Corp., 29 F. Supp. 3d 396 (S.D.N.Y. 2014) ...... 64
Williams v. Bridgeport Music, Inc., Case No. CV13-06004 (C.D. Cal. July 14, 2015) ...... 43, 75, 76, 77
Willis v. Scorpio Music (Black Scorpio), No. 15cv1078 BTM (RBB), 2016 WL 231313 (S.D. Cal. Jan. 19, 2016)...... 21
Zalewski v. Cicero Builder Dev. Inc., 754 F.3d 95 (2d Cir. 2014)...... 37
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Chapter 3—Copyright Law Review 2017
Copyright Current Developments
Kate Spelman February 2017 — Portland, Oregon
©2017 Lane Powell PC
Copyrightability — “Useful Articles”
• 17 U.S.C. § 102(a)(5) includes “pictorial, graphic and sculptural works” in list of works of authorship
• Useful Articles protected “only if, and only to the extent that, such design incorporates pictorial, graphic or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101
2/17/2017 ©2017 Lane Powell PC 2
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Copyrightability
Varsity Brands v. Star Athletica, 2014 WL 819422 (6th Cir, 2015); cert granted May 6, 2016; oral arguments held Oct 31, 2016
• Varsity creates design drawings of cheerleading uniforms. • Varsity argued that Star Athletica copied the designs and placed them onto uniforms for photographs in its retail catalog • Question for court: conceptual separability of design from utilitarian functions? • Court identified 9 possible approaches
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Copyrightability
• Sixth Circuit held Varsity's graphic designs did not enhance uniform's functionality qua clothing
• Each of graphic design elements found to be copyrightable subject matter
• Cert Granted by Supremes; oral arguments this fall
• Amicus briefs worth a read — CosPlay community opposes finding copyright as a ‘monopoly excluding their play forum’
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Copyrightability
Home Legend, LLC v. Mannington Mills, Inc., 784 F.3d 1404 (11th Cir. 2015) (cert. denied)
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VARA
Cheffins v. Stewart, No. 12-16913 (9th Cir. 2016)
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Copyrightability
Oracle America v. Google (N.D. CA, 2016)
Evaluated the issue of whether Java API packages are entitled to protection under Copyright Act:
• Expressive? (Or have idea/expression merged?)
• Unprotected short phrases?
• Method of operation?
• Is interoperability a consideration in determining copyrightability?
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Copyrightability
Oracle America v. Google (Fed. Cir. 2014)
Federal Circuit held:
• Code, structure, sequence and organization of Oracle’s Java packages entitled to copyright protection
• Copyrightability versus interoperability
• Abstraction, filtration, comparison
• Remand for fair use determination
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API Packages
Package
Class .. Class
Method… Method… Method Method… Method
Method: the code for a specific operation (function). Declaring code (also called Contains both declaring code and implementing code. declaration, or header).
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Oracle v. Google: The Journey Through the Courts
FIRST JURY TRIAL — JURY FOUND FEDERAL CIRCUIT REVERSED AND REMANDED GOOGLE INFRINGED THE 37 API — BOTH DECLARING CODE AND SSO OF THE 37 PACKAGES, BUT: API PACKAGES ARE PROTECTED
• Jury hung on defense of fair use • On remand: Reinstate jury’s infringement findings, • Parties agreed Court would decide and copyrightability • New jury trial on defense of “fair use” • Google’s petition to U.S. Supreme Court for review denied
2012 2014 May 2016
DISTRICT COURT (N.D. Cal.) — THE API SECOND JURY TRIAL — JURY FOUND FOR GOOGLE PACKAGES ARE NOT COPYRIGHTABLE ON FAIR USE DEFENSE
• The API declaring code was a method of • Oracle had sought damages of $8.8B (profits it operation claimed Google made from Android) • The SSO was a command structure • Judgment for Google • Oracle announced its intent to appeal
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Copyrightability — Current Status
Oracle America v. Google, 750 F.3d 1339 (Fed. Cir. 2014)
Supreme Court denied certiorari on June 29, 2015; remand trial concluded in 2016
• May 2016: Jury trial, ‘Fair Use’ found;
• July 20, 2016: Oracle wants new trial; and Google seeks sanctions against Annette Hurst personally
• August 23, 2016: Both parties file cert petitions, again
• October 26, 2016: Both Oracle and Google file appeals
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PhantomALERT, Inc. v. Google, Inc. (N.D. Cal. Mar. 8, 2016) settled 2/17
Claims • PhantomALERT alleged that Waze copied its “Points of Interest” database. It detected this by seeding fictitious points of interest for the purpose of uncovering copying
Holding • Google prevailed for a second time on a motion to dismiss. • First order: Plaintiff had not sufficiently pled a claim for copyright infringement — its database was merely a list of facts • Second order: Plaintiff pled that it hard not just created a database of where points of interests were (e.g., potholes), but had also exercised creativity in deciding to include in its database points meant only to notify users of an impending point of interest (e.g., a point of interest meant to alert a user of an upcoming pothole) • This factual distinction was sufficient to show that the database was copyrightable • Case disposition: Dismissed with leave to amend. Google answered the amended complaint and the case was in discovery when it settled 2/6/17 2/17/2017 ©2017 Lane Powell PC 12
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DaVinci Editrice S.R.L. v. ZiKo Games LLC (S.D. Tex. Apr. 27, 2016)
Background:
• DaVinci makes award-winning commercially successful card game Bang!, a Wild West-themed card game
• Yoka makes the card game Legend of Three Kingdoms (LOTK). LOTK essentially takes the structure and rules of Bang! but transports the roles, characters, weapons and actions to an ancient Chinese setting in terms of names, visuals and thematic elements
• The underlying gameplay is identical
• ZiKo is Yoka’s Texas-based distributor
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Game Comparison
Legend of the Three Bang! Kingdoms Sherriff Monarch Deputies Minister Outlaws Rebels Renegade Turncoat
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DaVinci Editrice S.R.L. v. ZiKo Games LLC (S.D. Tex. Apr. 27, 2016)
Holding • Court held defendants did not infringe DaVinci’s copyright
• Issue at summary judgment: whether the interactions of the characters and roles in Bang! were copyrightable expression or unprotected gameplay rules
• The Court distinguished between: • Games that have progressions of events or rosters of characters that make the games more expressive (e.g., Legend of Zelda); and • Games that have roles and structures for play but no expressive character interactions or plot progressions (e.g., basketball)
• Ultimately, the court found the rules were not expressive and the expressive aspects were not substantially similar
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But cf. Tetris Holding, LLC v. Xio Interactive, Inc., 863 F. Supp. 2d 394 (D.N.J. 2012)
Background • Defendants made an iPhone game with the same rules as Tetris
• Defendants’ game had the same pieces and the same game- play mechanics but different colors, textures and music
Holding • The court held that Defendants’ game was infringing
• The court found the unprotectable “idea” of Tetris to be ‘fitting different shaped pieces together’ to form complete lines”
• The court found that “[t]he style, design, shape and movement of the pieces are expression; they are not part of the ideas, rules or functions of the game nor are they essential or inseparable from the ideas, rules or functions of the game”
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Cisco Systems, Inc. v. Arista Networks, Inc. (N.D. Cal. Aug. 23, 2016) Cisco CLI (command-line interface) is the interface that directs command-line expressions, hierarchies, modes and prompts. For example:
• aaa group server radius • aaa group server tacacs+ • bgp client-to-client reflectin • clear ip igmp group • clear ip nat translation • ip as-path access-list • ip dhcp snooping
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Cisco Systems, Inc. v. Arista Networks, Inc. (N.D. Cal. Aug. 23, 2016) Issues • Are those commands copyrightable? • If so, is using them fair use?
Held • Both parties’ summary judgment motions were denied because disputed issues about ownership and originality remained
• The court noted frustration with Cisco’s “dual-track” approach of arguing for copyrightability of both the overarching Cisco CLI structure and its constituent parts
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Cisco Systems, Inc. v. Arista Networks, Inc. December 16th, 2016 Jury Verdict
1. Rejected Cisco’s demand for a $335 million damage award; 2. Reviewed the 500-word verbatim copying of the Cisco Command- Line-Interface; 3. Found Fair Use defense applied as Command-Line-Interface amounted to a ‘scenes a faire’ making need for hardware technical compatibility in industry standard
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New Trade Secret Act Does Not Preempt Copyright
GlobeRanger Corp. v. Software AG U.S., Inc., 2016 BL 291414, 5th Cir., No. 15-10121, 9/7/16
Trade secret misappropriation claim requires establishing an additional element than what is required to make out a copyright violation: that the protected information was taken via improper means or breach of a confidential relationship
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Copyrights Arising in Post-Alice Patent World
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Most Recent Statistics on the Percentage of Patents Found Invalid Since Alice
(As of March 30, 2016) Total Invalid Total Under §101 % Invalid
Federal Court Decisions 248 175 70.6%
Federal Circuit 31 30 96.8%
District Courts 217 145 66.8%
Patents 488 165 33.8%
Motions on Pleadings 120 87 72.5%
PTAB CBM Institutions 113 95 84.1%
PTAB CBM Final 50 49 98%
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Synopsys v. ATopTech March 10, 2016 (N.D. CA)
• Technology = Static timing analysis (STA)
• Simulation method of computing the expected timing of a digital circuit without requiring a simulation of the full circuit
• Plaintiff had patents but did not assert; relied exclusively on copyright
• Jury award of >$30 million for copyright infringement
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Fair Use
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“[T]he fair use of a copyrighted work, . . . for purposes such as criticism, comment, news reporting, teaching, . . . scholarship or research, is not an infringement of copyright.”
17 U.S.C. § 107
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“In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:
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 copyright work as a whole; and 4. The effect of the use upon the potential market for or value of the copyrighted work.”
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Fair Use? Authors Guild Filed Suit in 2005
• 2011: Settlement rejected by District Court
• 2012: Google moved for summary judgment on fair use defense
• Nov. 2013: District Court granted summary judgment, authors appealed
• Oct. 16, 2015: Second Circuit affirmed
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Fox News Network LLC v. TVEyes, Inc. (S.D.N.Y. Nov. 6, 2015)
TVEyes records and indexes TV news programming to create word searchable database
• Transformative use • TVEyes copied all of the work but it was no more than necessary • No market harm re database
Certain uses went beyond fair use and were enjoined
• Download of clips • Searches by time or network (as distinct from keyword)
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Viral Videos — Commentary?
Equals Three, LLC v. Jukin Media, Inc., 14-09041 (C.D. Cal. Oct. 13, 2015)
Jukin Media finds and acquires rights to “viral videos” • 1 million subscribers on YouTube and over 17,000 videos available for licensing
Equals Three produces short humor programs for YouTube • Host introduces and discusses a series of video clips • Often uses the clips in their entirety but adds commentary and other content, text and graphics • Jukin Media video were the subject of Equals Three programs • Jukin complained to Equals and sent takedown notices to YouTube • Equals filed a declaratory judgment action
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Equals Three v. Jukin Media
Court weighs fair use factors and concludes that on balance they all favor fair use (with exception of one video)
• Purpose and character — most segments criticize and comment on Jukin’s clip and are transformative
• Nature of the work — creative
• Amount used — no more than necessary
• Market harm — hypothetical only
• Jukin’s motion for summary judgment denied
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VTH v. Zillow 2/10/17 $8.3 million W.D. WA
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Case to Watch?
Tipsy Elves LLC v. Macy’s 2:17-cv-01058 Central CA
Exhibit 1: Santa Breaks the Internet Sweater Exhibit 3: ACCUSED COPY with Plaintiff’s SUBJECT ARTWORK 2/17/2017 ©2017 Lane Powell PC 32
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Derivative Works
“A ‘derivative work’ is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation or any other form in which a work may be recast, transformed or adapted.” 17 U.S.C. § 101
The owner of the original work has the exclusive right to create derivatives. 17 U.S.C. § 106(2)
An unauthorized derivative work is an infringement
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Keeling v. Hars (2d Cir. 2015)
• Point Break LIVE stage production was unauthorized parody of 1991 Point Break film but qualified as a fair use
• Jaime Keeling, as author of parody, had valid copyright interest and could prevent taking of her work (but could claim no right in underlying work)
• No right for others to copy script of PBL parody
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ABS Entertainment, Inc. v. CBS Corporation
(June, 2016 C.D. Cal; on appeal to 9th Circuit)
A remastered sound recording is a derivative work that is entitled to its own copyright; CBS had the right perform the remastered recordings
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DMCA
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DMCA
Safe harbors for online service providers: • § 512(a) — transitory digital network communications (conduits) • § 512(b) — system caching • § 512(c) — storing material at direction of user • § 512(d) — information location tools (referring or linking)
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Section 512: Sections 512(c) and (d) No safe harbor if: • Service does not remove material expeditiously upon receipt of proper notice • Service has actual or “red flag” knowledge of infringement and does not remove material • “Red flag” knowledge is “awareness of facts or circumstances from which infringing activity is apparent” • Service receives financial benefit directly attributable to infringing activity and has right and ability to control
User who disagrees can send counter notification (512(g)) • Service has to repost material in 10 to 14 business days unless copyright owner files federal lawsuit
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Section 512: Other Provisions
All activities subject to certain conditions (512(i)): • Policy to terminate “repeat infringers” • Accommodation of “standard technical measures” to protect copyrighted works that are developed by consensus
But, no duty to monitor for infringement (512(m))
512(f) provides cause of action and damages if sender of notice or counter notice ‘‘knowingly materially misrepresents’’ that material is/is not infringing
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DMCA 512(c) Process Overview See 512(c)(3), (f) and (g) for detailed requirements
Takedown notice to Designated Agent that includes Service provider inter alia: notifies Complainant - Specific identification of infringement - Statement of good faith belief that use is that it will reinstate unauthorized by owner, its agent or the law material
Service provider must take down identified material and provide Yes Is Notice notice to party that uploaded DMCA material Compliant? Complainant files for court order to block Service provider has No Uploading party can reinstatement obligation to contact and send counter-notice to within 10 days? assist Complainant with service provider if it Notice believes takedown was mistake Yes Is Notice Compliant No Substantially Yes Counter-Notice Compliant? received?
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Lenz v. Universal Music (9th Cir. Sep. 14, 2015)
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Lenz v. Universal Music
• Lenz uploads 29” video Feb. 2007 • “Let’s Go Crazy” plays in background
• Universal (Prince’s publisher) sends DMCA takedown to YouTube
• YouTube removes video; Lenz sends YT a DMCA “counter notification” and YT reinstates video
• Lenz files suit July 2007; amended April 2008, alleges misrepresentation under 17 USC sec. 512(f) // (Counsel = EFF)
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Lenz v. Universal Music
17 USC 512(f):
“Any person who knowingly materially misrepresents under this section -- (1) that material or activity is infringing . . . shall be liable for any damages . . . .”
Sept. 14, 2015 — 9th Cir. affirms denial of dueling SJ motions
• Grants Lenz’s claim that Universal violated Section 512(f) because Universal materially misrepresented that her video was infringing when it was, instead, a fair use.
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Lenz v. Universal Music — 9th Cir.
Fair use of a work is NOT an infringement. • Therefore “a copyright holder must consider the existence of a fair use before sending a takedown notification”
Fair use is different from traditional affirmative defenses and does not amount to infringement at all
If copyright owner fails to consider fair use, it could be liable for nominal damages. Subjective review is enough, not an objective standard
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DMCA Copyright Agent Registration — 17 USC §512(c)
Oct. 31, 2016 — New rule issued requiring electronic system designation of copyright agents for DMCA safe harbor
Dec. 1, 2016 — Takes effect for all service providers • No new paper registrations accepted • Previously designated agents via paper system must submit new electronic designation by Dec. 31, 2017
Failure to designate electronically will negate safe harbor
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DMCA Registration Renewal — 17 USC§512(c) New Regulation Differences: • PO Box may be used for service provider's agent • Agent’s name does not need be individual’s name (department or entity acceptable) • All “alternative names” must be listed (URLs, software application names, commonly used names)
Single U.S. Copyright Office account may register and manage designations for separate legal entities
BUT — Each legal entity requires a separate copyright agent registration
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New DMCA Challenge: Section 1201 Anti-Circumvention
Green v. Dept. of Justice — filed July 21, 2016 S.D.N.Y.
• Green is a professor — represented by the Electronic Frontier Foundation
• Challenges DMCA Section 1201 as unconstitutional for chilling access to the Public Domain and violates First Amendment
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BMG Rights Mgmt. v. Cox Comm. (E.D. Va. Dec. 1, 2015)
• Cox not entitled to use DMCA safe harbor provisions
• BMG sent 2.5 million notices to Cox regarding material its users were downloading
• Cox failed to forward or respond to these notices and eventually blocked the third-party from sending further notices.
• Cox sought to use § 512(a), which limits liability for service providers
• Court ruled Cox failed to reasonably implement policy to terminate accounts of repeat offenders, as required under § 512(i); jury found Cox liable for $25 million in damages for contributory infringement
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BWP Media USA v. Hollywood Fan Sites (S.D.N.Y. June 30, 2015)
• Subsidiary argued that it was covered by parent’s (or affiliate’s) designation of agent
• Court said plain language of 1998 Copyright Office rule-making precluded that argument
• Takeaway: each entity must file an agent designation in order to receive the benefit of the DMCA safe harbor
• PRACTICE POINTER: No DMCA copyright agent = no safe harbor
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The Lumen database collects and analyzes legal complaints and requests for removal of online materials, helping Internet users to know their rights and understand the law. These data enable us to study the prevalence of legal threats and let Internet users see the source of content removals.
Lumen is a project of the Berkman Klein Center for Internet & Society at Harvard University.
https://www.lumendatabase.org
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“Finding the Public Domain”
By Melissa Levine, University of Michigan
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“Happy Birthday” Class Action
Good Morning to You Productions (Rupa Marya) v. Warner/Chappell Music Inc.
• Class action complaint seeking DJ to place “Happy Birthday” in public domain — filed 2013
• $2 million in revenue each year
• Was work first published in 1890 or 1935?
• Was melody/lyrics or piano arrangement protected in 1935?
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“Happy Birthday” Class Action
Sept. 22, 2015 — Court ruled WCMI copyright in “Happy Birthday” not valid
• Warner’s predecessors (Summy Co.) never acquired rights to HB lyrics
• Warner owned limited rights in piano arrangement
• HB Melody in public domain • Melody came from “Good Morning to All”
• HB Lyrics not necessarily in public domain (but …) • Orphan work?
Confidential settlement announced Dec. 9, 2015, forestalling award of millions in damages
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What’s Next for Public Domain?
“We Shall Overcome” “This Land Is Your Land” -18th Century Hymn/Pete Seeger -Woody Guthrie
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Termination Rights
Larson v. Warner Bros. Ent’mt, Inc. (9th Cir. 2016)
• Prior grant sufficiently contained present assignment of rights in Superman characters
Brumley v. Albert E. Brumley & Sons, Inc. (6th Cir. 2016)
• Four of six children could terminate; 1979 agreement was not a “novation” of 1975 agreement under state law
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Thank you!
Further questions?
Kate Spelman [email protected] 206.223.7271
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Intellectual Property Review—Updates and Changes from 2016 3–136 Chapter 4 A Name Worth Fighting For: How Naming a Band Called The Slants Got Me to the Supreme Court
Simon Tam The Slants Portland, Oregon
Contents Excerpt from Lee v. Tam Petition for Writ of Certiorari—Question Presented, Table of Contents, Table of Authorities ...... 4–1 Lee v. Tam Brief for Respondent 4–7 Lee v. Tam Brief of Amicus Curiae San Francisco Dykes on Bikes Women’s Motorcycle Contingent, Inc...... 4–49 Expert Report of Ronald R. Butters, Ph.D...... 4–79 Excerpt from Expert Report of Charlton D. McIlwain, Ph.D., and Stephen Maynard Caliendo, Ph.D...... 4–95 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
Intellectual Property Review—Updates and Changes from 2016 4–ii Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
No. In the Supreme Court of the United States
MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, PETITIONER v. SIMON SHIAO TAM
ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
PETITION FOR A WRIT OF CERTIORARI
DONALD B. VERRILLI, JR. Solicitor General Counsel of Record BENJAMIN C. MIZER Principal Deputy Assistant Attorney General MALCOLM L. STEWART Deputy Solicitor General NICOLE A. SAHARSKY Assistant to the Solicitor SARAH HARRIS General General Counsel DOUGLAS N. LETTER THOMAS W. KRAUSE MARK R. FREEMAN Acting Solicitor DANIEL TENNY CHRISTINA J. HIEBER JOSHUA M. SALZMAN THOMAS L. CASAGRANDE MOLLY R. SILFEN MARY BETH WALKER Attorneys Associate Solicitors Department of Justice U.S. Patent and Trademark Washington, D.C. 20530-0001 Office [email protected] Alexandria, Va. 22313 (202) 514-2217
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Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
QUESTION PRESENTED Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides that no trademark shall be refused registra- tion on account of its nature unless, inter alia, it “[c]onsists of * * * matter which may disparage * * * persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The question presented is as follows: Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.
(I)
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TABLE OF CONTENTS Page Opinions below ...... 1 Jurisdiction ...... 1 Statutory and regulatory provisions involved ...... 2 Statement ...... 2 Reasons for granting the petition ...... 8 I. The court of appeals’ invalidation of an Act of Congress warrants this Court’s review ...... 9 II. The court of appeals erred in holding that Section 1052(a) is unconstitutional ...... 10 A. Section 1052(a) does not restrict speech ...... 10 B. Section 1052(a) establishes lawful eligibility criteria for federal trademark registration ...... 14 III. The question presented is important ...... 22 Conclusion ...... 25 Appendix A — En banc court of appeals opinion (Dec. 22, 2015) ...... 1a Appendix B — Court of appeals opinion (Apr. 20, 2015) ...... 123a Appendix C — Trademark Trial and Appeal Board opinion (Sept. 26, 2015) ...... 162a Appendix D — Statutory provision ...... 183a
TABLE OF AUTHORITIES
Cases: Ashcroft v. ACLU, 542 U.S. 656 (2004) ...... 10 B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015) ...... 3, 11 Bates v. State Bar, 433 U.S. 350 (1977) ...... 19 Blodgett v. Holden, 275 U.S. 142 (1927) ...... 9 Boulevard Entm’t, Inc., In re, 334 F.3d 1336 (Fed. Cir. 2003) ...... 12 Broadrick v. Oklahoma, 413 U.S. 601 (1973) ...... 9
(III)
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IV
Cases—Continued: Page Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n, 447 U.S. 557 (1980) ...... 20 Holder v. Humanitarian Law Project, 561 U.S. 1 (2010) ...... 9 McGinley, In re, 660 F.2d 481 (C.C.P.A. 1981) ...... 6, 12 National Endowment for the Arts v. Finley, 524 U.S. 569 (1998)...... 15, 18 Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985)...... 2 Pleasant Grove City v. Summum, 555 U.S. 460 (2009) ...... 18 R.A.V. v. City of St. Paul, 505 U.S. 377 (1992) ...... 13 Regan v. Taxation With Representation of Wash., 461 U.S. 540 (1983)...... 14, 15 Rosenberger v. Rector & Visitors of Univ. of Va., 515 U.S. 819 (1995)...... 13 Rostker v. Goldberg, 453 U.S. 57 (1981) ...... 9 Rust v. Sullivan, 500 U.S. 173 (1991) ...... 14, 15, 16, 18, 19 San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522 (1987) ...... 20 Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559 (5th Cir. 2005), cert. denied, 547 U.S. 1055 (2006) ...... 12 Trade-Mark Cases, In re, 100 U.S. 82 (1879) ...... 3, 11 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) ...... 3 United States v. Alvarez, 132 S. Ct. 2537 (2012) ...... 9 United States v. Stevens, 559 U.S. 460 (2010) ...... 9 United States v. Williams, 553 U.S. 285 (2008) ...... 9 Walker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015) ...... 14, 16, 17, 18 Wooley v. Maynard, 430 U.S. 705 (1977) ...... 17
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Constitution, treaty and statutes: Page U.S. Const. Amend. I ...... passim Paris Convention for the Protection of Industrial Property art. 6quinquies, July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305 ...... 22 Act of Feb. 20, 1905, ch. 592, § 5, 33 Stat. 725...... 22 Act of July 5, 1946, ch. 540, 60 Stat. 427 (15 U.S.C. 1051 et seq.) ...... 3 15 U.S.C. 1051(a) ...... 4 15 U.S.C. 1052 ...... 4, 10 15 U.S.C. 1052(a) (§ 2(a), 60 Stat. 428) ...... passim 15 U.S.C. 1052(b) ...... 4 15 U.S.C. 1052(c) ...... 4 15 U.S.C. 1052(d) ...... 4 15 U.S.C. 1052(e) ...... 4, 12 15 U.S.C. 1052(e)(5) ...... 4 15 U.S.C. 1057(a) ...... 15 15 U.S.C. 1057(b) ...... 3 15 U.S.C. 1065 ...... 3 15 U.S.C. 1071(a) ...... 23 15 U.S.C. 1072 ...... 3 15 U.S.C. 1091 ...... 16 15 U.S.C. 1115(a) ...... 3 15 U.S.C. 1115(b) ...... 3 15 U.S.C. 1117(a) ...... 12 15 U.S.C. 1125(a) ...... 4, 11 15 U.S.C. 1125(b) ...... 4, 11 15 U.S.C. 1125(d) ...... 4, 11 15 U.S.C. 1127 ...... 2, 11 15 U.S.C. 1141a ...... 22 15 U.S.C. 1141b ...... 22
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Statute—Continued: Page 28 U.S.C. 1295(a)(4)(B) ...... 23
Miscellaneous: 1 Anne Gilson LaLonde, Gilson on Trademarks, (2015) ...... 3 U.S. Patent and Trademark Office, Exam Guide 01- 16: Examination for Compliance with Section 2(a)’s Scandalousness and Disparagement Provi- sions While Constitutionality Remains in Ques- tion (Mar. 2016), http://www.uspto.gov/trademark/ guides-and-manuals/trademark-examination- guides ...... 23
The entire document may be downloaded here: http://tinyurl.com/IP17-4-A.
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In the Supreme Court of the United States ______
MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, Petitioner, V. SIMON SHIAO TAM, Respondent. ______
On Petition for a Writ of Certiorari to the United States Court of Appeals for the Federal Circuit ______
BRIEF FOR RESPONDENT ______STUART BANNER JOHN C. CONNELL EUGENE VOLOKH Counsel of Record UCLA School of Law RONALD D. COLEMAN Supreme Court Clinic JOEL G. MACMULL 405 Hilgard Ave. Archer & Greiner, P.C. Los Angeles, CA 90095 One Centennial Square P.O. Box 3000 Haddonfield, NJ 08033 (856) 795-2121 [email protected]
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QUESTIONS PRESENTED The disparagement clause in section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), prohibits the regis- tration of a trademark that “may disparage … per- sons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The Questions Presented are: 1. Whether the disparagement clause bars the registration of respondent’s trademark. 2. Whether the disparagement clause is contrary to the First Amendment. 3. Whether the disparagement clause is uncon- stitutionally vague under the First and Fifth Amendments.
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TABLE OF CONTENTS
QUESTIONS PRESENTED ...... i TABLE OF AUTHORITIES ...... iii STATEMENT ...... 1 ARGUMENT ...... 10 I. Certiorari should be granted...... 10 II. The judgment of the Court of Appeals should be affirmed...... 13 A. The Lanham Act’s disparagement clause does not bar the registration of respondent’s trademark...... 13 B. The Lanham Act’s disparagement clause is contrary to the First Amendment...... 21 C. The Lanham Act’s disparagement clause is unconstitutionally vague...... 30 CONCLUSION ...... 34
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TABLE OF AUTHORITIES CASES 14 Penn Plaza LLC v. Pyett, 556 U.S. 247 (2009) ...... 12 Agency for Int’l Dev. v. Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. 2321 (2013) ...... 8, 26, 27 B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015) ...... 22 Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60 (1983) ...... 24 Bond v. United States, 134 S. Ct. 2077 (2014) ...... 12 Brown v. Entertainment Merchants Ass’n, 564 U.S. 786 (2011) ...... 24 Carey v. Population Servs., Int’l, 431 U.S. 678 (1977) ...... 24 Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n, 447 U.S. 557 (1980) ...... 30 Coates v. City of Cincinnati, 402 U.S. 611 (1971) ...... 31 Davenport v. Washington Educ. Ass’n, 551 U.S. 177 (2007) ...... 26 FCC v. Fox Television Stations, Inc., 132 S. Ct. 2307 (2012) ...... 30 Forsyth Cty. v. Nationalist Movement, 505 U.S. 123 (1992) ...... 24 Friedman v. Rogers, 440 U.S. 1 (1979) ...... 28, 29 Grayned v. City of Rockford, 408 U.S. 104 (1972) ...... 33 Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 (1988) ...... 24 In re McGinley, 660 F.2d 481 (C.C.P.A. 1981) ...... 5
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KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) ...... 22 Leathers v. Medlock, 499 U.S. 439 (1991) ...... 25 Legal Servs. Corp. v. Velazquez, 531 U.S. 533 (2001) ...... 26 NEA v. Finley, 524 U.S. 569 (1998) ...... 26, 27 R.A.V. v. City of St. Paul, 505 U.S. 377 (1992) ...... 30 Reed v. Town of Gilbert, 135 S. Ct. 2218 (2015) ...... 23 Regan v. Taxation With Representation of Wash., 461 U.S. 540 (1983) ...... 26 Reno v. ACLU, 521 U.S. 844 (1997) ...... 33 Riley v. Nat’l Fed’n of the Blind, 487 U.S. 781 (1988) ...... 29 Rosenberger v. Rector and Visitors of the Univ. of Va., 515 U.S. 819 (1995) ...... 21 Rust v. Sullivan, 500 U.S. 173 (1991) ...... 26 Simon & Schuster, Inc. v. Members of the N.Y. Crime Victims Bd., 502 U.S. 105 (1991) ...... 25 Snyder v. Phelps, 562 U.S. 443 (2011) ...... 24 Sorrell v. IMS Health Inc., 564 U.S. 552 (2011) ...... 25, 29 Texas v. Johnson, 491 U.S. 397 (1989) ...... 24 Thompson v. Western States Med. Ctr., 535 U.S. 357 (2002) ...... 30 United States v. Playboy Entertainment Group, Inc., 529 U.S. 803 (2000) ...... 25 Village of Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455 U.S. 489 (1982) ...... 31 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) ...... 22
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Walker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015) ...... 27, 28 Ysursa v. Pocatello Educ. Ass’n, 555 U.S. 353 (2009) ...... 26
ADMINISTRATIVE DECISIONS Boswell v. Mavety Media Group Ltd., 52 U.S.P.Q.2d 1600, 1999 WL 1040108 (TTAB 1999) ...... 17 In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071, 2008 WL 5065114 (TTAB 2008) ...... 2, 32
STATUTES 15 U.S.C. § 1052(a) ...... passim 15 U.S.C. § 1057(b) ...... 22 15 U.S.C. § 1065 ...... 23 15 U.S.C. § 1072 ...... 22 15 U.S.C. § 1115(a) ...... 22 15 U.S.C. § 1115(b) ...... 23 15 U.S.C. § 1127 ...... 17
LEGISLATIVE MATERIAL 60 Stat. 427 (1946) ...... 20 H.R. 4744, 76th Cong., 1st Sess. (1939), § 2(a) ...... 19 H.R. Rep. No. 219, 79th Cong., 1st Sess. (1945) ...... 20 Inter-American Convention for Trade Mark and Commercial Protection. 46 Stat. 2907 (1931) ...... 20 S. Rep. No. 1333, 79th Cong., 2d Sess. 5 (1946) ...... 20
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Trade-Marks: Hearings on H.R. 4744 Before the Subcomm. on Trade-Marks of the H. Comm. on Patents, 76th Cong., 1st Sess. (1939) ...... 20
OTHER AUTHORITIES Randall Kennedy, Nigger: The Strange Career of a Troublesome Word (2002) ...... 2 McCarthy on Trademarks and Unfair Competition (4th ed. Westlaw) ...... 27 Donald S. Passman, All You Need to Know About the Music Business (8th ed. 2012) ...... 23 Pet. for Cert., Pro-Football, Inc. v. Blackhorse, No. 15-1311 (filed Apr. 25, 2016) ...... 11 Richard Stim, Music Law: How to Run Your Band’s Business (8th ed. 2015) ...... 23
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STATEMENT In the decision below, the en banc Court of Ap- peals correctly held that the disparagement clause of the Lanham Act is contrary to the First Amendment. This provision bars the registration of a trademark that “may disparage … persons, living or dead.” 15 U.S.C. § 1052(a). As the Court of Appeals found, the disparagement clause discriminates on the basis of viewpoint and content, by imposing a substantial burden on speech with a particular message. The government offers no justification for this discrimi- natory burden on speech other than its interest in preventing offense to listeners, but that is not a valid basis for restricting expression. Certiorari should nevertheless be granted. This issue is undeniably important. The Court is very likely to address it in the near future, in another case if not in this one. Meanwhile, respondent Simon Tam waits in limbo. His trademark rights will not be secure until the Court resolves this issue once and for all.
1. Simon Tam is an Asian-American musician, lec- turer, and political activist. He is the founder and leader of The Slants, a rock band based in Portland, Oregon. When Tam formed the band in 2006, his purpose was not just to play music. He also intended the band to be a vehicle for expressing his views on discrimination against Asian-Americans. To that end, he recruited Asian-American band members, and he called the band The Slants.
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In choosing that name, Tam was following in the long tradition of “reappropriation,” in which mem- bers of minority groups have reclaimed terms that were once directed at them as insults and turned them outward as badges of pride. In recent times, the most conspicuous examples have been words such as “queer,” “dyke,” and so on—formerly deroga- tory terms that have been so successfully adopted by members of the gay and lesbian community that they have now lost most, if not all, of their pejorative connotations. Members of several other groups have pursued the same strategy. As Randall Kennedy ob- serves: Many blacks also do with nigger what other members of marginalized groups have done with slurs aimed at shaming them. They have thrown the slur right back in their oppressors’ faces. They have added a positive meaning to nigger, just as women, gays, lesbians, poor whites, and children born out of wedlock have defiantly appropriated and revalued such words as bitch, cunt, queer, dyke, redneck, cracker, and bastard. Randall Kennedy, Nigger: The Strange Career of a Troublesome Word 48 (2002).1
1 Before the PTO, Tam did not characterize his use of the name as reappropriation, because TTAB precedent foreclosed the ar- gument that reappropriation of a term can render a mark non- disparaging. See In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071, 2008 WL 5065114 (TTAB 2008). The TTAB nevertheless recog- nized that Tam’s use of the name was “an attempt … to wrest ‘ownership’ of the term from those who might use it with the intent to disparage.” Pet. App. 175a. The Court of Appeals
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Tam aimed to do the same for Asian-Americans. “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them,” he explained. Fed. Cir. JA 4. He observed: “For our band, we’re not just Chinese, we’re not just Viet- namese, we’re kind of a pan-Asian band that cele- brates all the different Asian cultures out there …. Everyone in the band really loves the fact that we can try and empower Asian Americans and say, ‘You know what? We are slanted. Who cares? We’re proud of that.’” Fed. Cir. JA 45. In their music, as the Court of Appeals found, “Mr. Tam and his band weigh in on cultural and po- litical discussions about race and society.” Pet. App. 10a. Sometimes that takes the form of wry commen- tary. The Slants’ first album is called “Slanted Eyes, Slanted Hearts.” Their fourth is “The Yellow Al- bum,” a title that combines references to the Beatles’ 1968 “White Album” and Jay-Z’s 2003 “Black Album” with a reference to the once-common use of the color yellow to refer pejoratively to Asians, as in the phrase “Yellow Peril.” At other times, The Slants come closer to straight- forward advocacy. For example, the chorus of their song “Sakura, Sakura” is: We sing for the Japanese and the Chinese and all the dirty knees.
likewise recognized that Tam “seeks to shift the meaning of, and thereby reclaim, an emotionally charged word.” Pet. App. 24a.
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Can you see me? We sing in harmony for the babies in the alleys. The title of “Sakura, Sakura” refers to the well- known Japanese folk song of the same name (“sa- kura” is Japanese for “cherry blossom”). The Slants’ song incorporates part of the melody of the folk song. The first line of the chorus recalls a schoolyard taunt familiar to many Asian-Americans—“Chinese, Japa- nese, dirty knees, look at these.” As Tam has ex- plained, The Slants “feel strongly that Asians should be proud of their cultural heritage, and not be of- fended by stereotypical descriptions.” Pet. App. 10a (brackets omitted). In 2011, Tam sought to register THE SLANTS as a trademark. Pet. App. 10a. The examiner refused to register the mark, on the ground that it is disparag- ing to “persons of Asian descent.” Pet. App. 10a.
2. The Trademark Trial and Appeal Board af- firmed. Pet. App. 162a-182a. The Board acknowl- edged that Tam’s purpose in naming his band The Slants was “an attempt not to disparage, but rather to wrest ‘ownership’ of the term from those who might use it with the intent to disparage.” Pet. App. 175a. The Board nevertheless determined that “[t]he evidence of public perception of the meaning of THE SLANTS, as used in connection with applicant’s ser- vices, shows that meaning to be a derogatory refer- ence to people of Asian descent.” Pet. App. 174a. The Board concluded that “[t]he fact that applicant has good intentions underlying his use of the term does not obviate the fact that a substantial composite of
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the referenced group find the term objectionable.” Pet. App. 181a. Tam appealed to the Court of Appeals for the Fed- eral Circuit. He argued that the Board erred in find- ing his trademark unregistrable under section 2(a) of the Lanham Act, and that section 2(a)’s disparage- ment clause is contrary to the First Amendment and unconstitutionally vague.
3. A panel of the Court of Appeals affirmed. Pet. App. 123a-161a. The Court of Appeals found that “[t]he evidence here supports the Board’s finding that the mark THE SLANTS likely refers to people of Asian descent.” Pet. App. 128a. The court also found that “[s]ubstantial evidence supports the Board’s finding that the mark THE SLANTS is likely offensive to a substantial composite of people of Asian de- scent.” Pet. App. 130a. The Court of Appeals relied on the precedent of its predecessor court, the Court of Customs and Patent Appeals, to reject Tam’s con- stitutional arguments. Pet. App. 131a-132a (citing In re McGinley, 660 F.2d 481 (C.C.P.A. 1981)). Judge Moore wrote a separate opinion urging the Court of Appeals to reconsider the constitutionality of section 2(a)’s disparagement clause. Pet. App. 135a-161a (Moore, J., additional views).
4. The en banc Court of Appeals vacated the Board’s decision and remanded the case to the Board for further proceedings. Pet. App. 1a-122a. The court began by observing that “Mr. Simon Shiao Tam named his band THE SLANTS to make a statement about racial and cultural issues in this country. With
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his band name, Mr. Tam conveys more about our so- ciety than many volumes of undisputedly protected speech.” Pet. App. 2a. The en banc court reinstated the panel’s holding that the name is “disparaging” and is thus unregistrable under section 2(a). Pet. App. 12a n.3. But the en banc court held that section 2(a)’s disparagement clause is contrary to the First Amendment. The Court of Appeals concluded that the dispar- agement clause discriminates on the basis of view- point and content. As the court observed, “[t]he PTO rejects marks under § 2(a) when it finds the marks refer to a group in a negative way, but it permits the registration of marks that refer to a group in a posi- tive, non-disparaging manner.” Pet. App. 21a. The court concluded: “Section 2(a) is a viewpoint- discriminatory regulation of speech, created and ap- plied in order to stifle the use of certain disfavored messages. Strict scrutiny therefore governs its First Amendment assessment—and no argument has been made that the measure survives such scrutiny.” Pet. App. 23a-24a. The Court of Appeals further held that the dis- paragement clause could not be upheld as a regula- tion of commercial speech. The court noted that the disparagement clause regulates the expressive as- pects of a trademark, not the mark’s commercial function as the identifier of the source of a good or service. Pet. App. 24a. “Importantly,” the court not- ed, “every time the PTO refuses to register a mark under § 2(a), it does so because it believes the mark conveys an expressive message—a message that is disparaging to certain groups.” Pet. App. 25a. The
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court observed that the First Amendment does not permit content-based regulation of commercial speech where the discrimination is based on the speech’s expressive features. Pet. App. 25a-26a. The Court of Appeals rejected the government’s contention that section 2(a) restricts no speech and is thus immune from First Amendment scrutiny. Pet. App. 28a-40a. The court observed that the First Amendment prohibits content-based and viewpoint- based burdens on speech, just as it prohibits similar- ly discriminatory bans on speech. Pet. App. 28a-30a. The court recognized that the legal advantages of trademark registration are so significant that “the § 2(a) bar on registration creates a strong disincen- tive to choose a ‘disparaging’ mark.” Pet. App. 32a. The Court of Appeals also rejected the govern- ment’s suggestion that trademarks should receive no First Amendment protection on the theory that trademark registrations are government speech. Pet. App. 40a-47a. The court held that registration does not change the fact that trademarks are private speech, not government speech. Pet. App. 40a-41a. The court further held that the accoutrements of reg- istration, such as the registrant’s right to use the ® symbol, the placement of the mark on the Principal Register, and the PTO’s issuance of a registration certificate, “do not convert the underlying speech to government speech.” Pet. App. 41a. As the court not- ed, “the PTO routinely registers marks that no one can say the government endorses,” such as CAPITAL- ISM SUCKS DONKEY BALLS and MURDER 4 HIRE. Pet. App. 43a. The court observed, moreover, that “[c]opyright registration has identical accoutre-
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ments,” so the government’s theory would allow it to deny copyrights to works that disparaged others, an outcome that would clearly violate the First Amendment. Pet. App. 41a. The Court of Appeals likewise rejected, on two grounds, the government’s argument that section 2(a) is a government subsidy exempt from strict scrutiny. Pet. App. 47a-61a. First, the court noted that under the unconstitutional conditions doctrine, the government may not attach “‘conditions that seek to leverage funding to regulate speech outside the contours of the program itself.’” Pet. App. 51a (quoting Agency for Int’l Dev. v. Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. 2321, 2328 (2013)). Be- cause trademark registration “is not a program through which the government is seeking to get its message out through recipients of funding,” the court held, the government cannot condition trademark registration on the avoidance of a particular view- point. Pet. App. 52a. Second, the Court of Appeals determined that trademark registration is not a subsidy. Pet. App. 52a-61a. As the court noted, “the subsidy cases have all involved government funding or government property.” Pet. App. 53a. Trademark registration, by contrast, involves neither. “Unlike a subsidy consist- ing of, for example, HIV/AIDS funding, or tax ex- emptions, a trademark registration does not directly affect the public fisc,” the court concluded. “Instead, a registered trademark redefines the nature of the markholder’s rights as against the rights of other cit- izens.” Pet. App. 57a. Thus “the system of trademark
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registration is a regulatory regime, not a govern- ment subsidy program.” Pet. App. 57a. Finally, the Court of Appeals held that section 2(a)’s bar on disparaging trademarks would be con- trary to the First Amendment even if it were classi- fied as a regulation of commercial speech. Pet. App. 61a-67a. Under the intermediate scrutiny applicable to commercial speech, regulation must advance a substantial government interest, but the court found that “§ 2(a) immediately fails at this step,” because “[t]he entire interest of the government in § 2(a) de- pends on disapproval of the message.” Pet. App. 63a. Judge O’Malley, joined by Judge Wallach, filed a concurring opinion. Pet. App. 68a-80a. She agreed that section 2(a)’s disparagement clause is contrary to the First Amendment. She also concluded that the disparagement clause is unconstitutionally vague. Judge Dyk filed an opinion concurring in part and dissenting in part, which Judges Lourie and Reyna joined in part. Pet. App. 80a-104a. He concluded that section 2(a)’s disparagement clause is contrary to the First Amendment only as applied to marks, such as Simon Tam’s, that are “both political and commer- cial.” Pet. App. 102a. He would have upheld the clause as applied to “routine product identifiers,” Pet. App. 89a, which he characterized as trademarks that “lack the kind of ‘expressive character’ that would merit First Amendment protection for offen- sive content.” Pet. App. 90a. Judge Lourie dissented. Pet. App. 104a-108a. In his view, the PTO’s refusal to register a trademark “is not a denial of an applicant’s right of free speech,”
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because “Mr. Tam may use his trademark as he likes” even without federal registration. Pet. App. 105a. Judge Reyna also dissented. Pet. App. 108a-122a. He concluded that trademarks are commercial speech and that section 2(a)’s disparagement clause satisfies the intermediate scrutiny applicable to commercial speech, in light of the “the government’s substantial interest in the orderly flow of commerce.” Pet. App. 119a.
ARGUMENT The government’s petition for certiorari should be granted, but the Questions Presented should be re- formulated to reflect the issues in this case.
I. Certiorari should be granted. The decision below is correct. The Court should nevertheless grant the petition for certiorari, for three reasons. First, the issue is undeniably important. The Court of Appeals has invalidated a provision of the Lanham Act, a statute that plays a major role in regulating commerce. The constitutionality of section 2(a)’s disparagement clause is likely to return to the Court repeatedly in future cases until the Court puts the issue to rest. Second, although Simon Tam prevailed in the Court of Appeals, his trademark rights will not be secure until this Court decides the issue once and for all. If the Court denies certiorari in this case, even if the PTO registers Tam’s trademark, his registration
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will be precarious, because of the possibility that the decision below will be overruled by this Court in a future case. One such case has already reached the Court. The Washington Redskins have filed a petition for certio- rari before judgment in a case that raises the same First Amendment and vagueness issues as does this case. Pet. for Cert., Pro-Football, Inc. v. Blackhorse, No. 15-1311 (filed Apr. 25, 2016). If the Court wishes to hear the two cases together, we urge the Court to do so now rather than waiting until the Fourth Cir- cuit has decided the Redskins’ case. It has already been five years since Simon Tam filed his trademark application. The PTO has halted the processing of all trademark applications raising disparagement is- sues, including Tam’s, until the Court disposes of the government’s certiorari petition in this case. Pet. 23. The Fourth Circuit has not yet held oral argument, so there may be no resolution of the Redskins’ case for a year or more, particularly if the Fourth Circuit takes the case en banc. The Court should not hold this case for the Redskins’ case. Third, this case is an excellent vehicle. Simon Tam’s trademark undisputedly has an expressive component along with a commercial component, so the Court will be able to evaluate the First Amend- ment’s applicability to the full range of conceivable types of trademarks. Moreover, this case involves two other important issues that are not captured by the government’s unduly narrow Question Presented.
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The first of these issues is one of statutory inter- pretation. Under section 2(a) of the Lanham Act, does THE SLANTS “disparage … persons, living or dead”? At every stage of this litigation, Simon Tam has argued that section 2(a) does not bar the regis- tration of his trademark. He is thus entitled to de- fend the judgment below on this ground. 14 Penn Plaza LLC v. Pyett, 556 U.S. 247, 273 (2009). Even if that were not so, “it is a well-established principle governing the prudent exercise of this Court's juris- diction that normally the Court will not decide a constitutional question if there is some other ground upon which to dispose of the case.” Bond v. United States, 134 S. Ct. 2077, 2087 (2014) (citation and in- ternal quotation marks omitted). A proper interpre- tation of section 2(a) is such a ground. Section 2(a)’s disparagement clause has existed for 70 years, but the Court has never interpreted it. The PTO has been left to develop its own disparage- ment jurisprudence, which has wandered ever far- ther from the statute’s text and from any reasonable understanding of what Congress intended. This case provides an opportunity for the Court to guide the PTO back to the text of the statute. The second issue not captured by the govern- ment’s Question Presented is whether section 2(a)’s disparagement clause is unconstitutionally vague. Simon Tam raised this issue below as well, so he is entitled to defend the Court of Appeals’ judgment on this ground. This is another issue the Court has never consid- ered in the 70 years since the disparagement clause
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was enacted. The PTO, left to its own devices, has produced a bewildering array of decisions granting or denying registration seemingly at random. As the Court of Appeals found, “[t]he PTO’s record of trademark registrations and denials often appears arbitrary and is rife with inconsistency.… We see no rationale for the PTO’s seemingly arbitrary registra- tion decisions, let alone one that would give appli- cants much guidance.” Pet. App. 33a n.7. As the two concurring judges found, the disparagement clause is “so vague that [it is] unconstitutional, whether or not it could survive Appellant’s First Amendment chal- lenge.” Pet. App. 69a (O’Malley, J., concurring). It is time for this Court to intervene.
II. The judgment of the Court of Appeals should be affirmed. The judgment below should be affirmed, on any of three grounds. First, as a matter of statutory con- struction, respondent’s trademark does not “dispar- age … persons, living or dead” under section 2(a). Second, the disparagement clause is contrary to the First Amendment. Third, the disparagement clause is unconstitutionally vague under the First and Fifth Amendments.
A. The Lanham Act’s disparagement clause does not bar the registration of respondent’s trademark. Section 2(a)’s disparagement clause prohibits the registration of a trademark that “[c]onsists of or comprises … matter which may disparage … per- sons, living or dead, institutions, beliefs, or national
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symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a). This clause does not bar regis- tration of THE SLANTS, for two reasons. First, the mark is simply not disparaging. Second, the statuto- ry phrase “persons, living or dead” refers solely to natural and juristic persons, not to non-juristic col- lective entities like racial or ethnic groups.
1. THE SLANTS, as used by Simon Tam to refer to his band, is not disparaging. Whether a word is dis- paraging depends primarily on context. Even “nig- ger” and its variants are not disparaging when used with pride and understood that way. For example, one of the most well-known and influential musical groups of the 1980s and 1990s was N.W.A., which fans knew stood for “Niggaz Wit Attitudes.” (Anyone who did not know would have figured it out when the group released their second album, Niggaz4Life.) “Niggers” or “niggaz” can certainly be used in a dis- paraging way, but the members of N.W.A. did not use the word that way, and the group’s millions of fans did not interpret the name as disparaging. The same is true of The Slants. Simon Tam and his band members are not disparaging Asian- Americans. They are doing precisely the opposite; they are appropriating a slur and using it as a badge of pride. Simon Tam is not a bigot; he is fighting big- otry with the time-honored technique of seizing the bigots’ own language. “Slant” can certainly be used in a disparaging way, but Tam is not using it that way. Even the most cursory awareness of the Slants’ music and the way it is packaged makes that clear.
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Nor do the Slants’ fans think the band’s name is disparaging. The Slants’ fans are not racists eager to denigrate Asian-Americans. They are people who understand and appreciate what the Slants are do- ing. They get it. Only an uninformed philistine could find the band’s name disparaging. If the PTO interpreted the statute literally, with a dose of common sense, that would be enough to find that THE SLANTS does not “disparage” anyone. But rather than interpreting the statute literally, the PTO uses a two-part test that departs markedly from the text of the statute. To determine whether matter in a proposed trademark is disparaging, the PTO considers: 1) what is the likely meaning of the matter in question, taking into account not only diction- ary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the man- ner in which the mark is used in the market- place in connection with the goods or services; and 2) if that meaning is found to refer to identifi- able persons, institutions, beliefs or national symbols, whether that meaning may be dis- paraging to a substantial composite of the ref- erenced group. Pet. App. 171a-172a. This test has been endorsed by the Federal Circuit. Pet. App. 126a. Both parts of the PTO’s test contort the word “dis- parage” far beyond what the statute will bear. The
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first part of the test tells examiners to rely on dic- tionary definitions of a word used in a trademark, but not to consider any of the contextual considera- tions that make up the ordinary meaning of the word “disparage,” such as whether the applicant intends any disparagement, whether the applicant’s custom- ers perceive any disparagement, or whether an ob- jective observer knowing the full context would find any disparagement. But the statute does not say “disparage, with reference solely to dictionary defini- tions and not context.” The statute just says “dispar- age.” The second part of the test tells examiners to de- termine whether the mark “may be disparaging to a substantial composite of the referenced group.” The PTO interprets “substantial composite” to mean “not necessarily a majority,” but with no limit on how small a percentage of the referenced group is offend- ed. Pet. App. 172a. Examiners are thus instructed to determine whether a mark disparages a vocal minor- ity of a group, not whether the mark disparages the affected group generally. In this case the PTO duly applied its test. Rather than considering the full context surrounding Simon Tam’s use of THE SLANTS, the PTO simply looked up the word “slant” in several dictionaries. Pet. App. 163a-165a. Rather than asking whether THE SLANTS disparages Asian-Americans generally, the PTO quoted the views of a blogger and a few self-styled spokespeople for Asian-Americans, Pet. App. 167a- 168a, to conclude that “a substantial composite of the referenced group find the term objectionable.” Pet. App. 181a. Had the PTO followed the statute
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rather than its two-part test, the result would have been different.
2. The PTO also erred in construing section 2(a)’s bar on the registration of marks that may disparage “persons, living or dead” to include marks that dis- parage non-juristic collective entities like racial and ethnic groups. In fact, the quoted phrase includes only natural and juristic persons. “Person” is a defined term in the Lanham Act. Under section 45, “[t]he term ‘person’ … includes a juristic person as well as a natural person. The term ‘juristic person’ includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.” 15 U.S.C. § 1127. Non-juristic collective entities incapable of suing and being sued, such as racial and ethnic groups, are not “persons” under this definition. Yet the PTO treats such groups as “persons” under the disparagement clause. See, e.g., Boswell v. Mavety Media Group Ltd., 52 U.S.P.Q.2d 1600, 1999 WL 1040108, *5 (TTAB 1999). The PTO is misinterpreting the statute. Section 2(a)’s disparagement clause bars the registration of marks—such as JOHN SMITH IS EVIL—that disparage natural persons. It also bars the registration of marks—such as MICROSOFT IS EVIL—that disparage juristic persons. But the disparagement clause ex- plicitly does not bar the registration of marks that disparage collective entities that are not juristic per- sons. Thus one can register LEFTHANDERS ARE EVIL or REDHEADS ARE EVIL or even ASIAN-AMERICANS ARE
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EVIL without running afoul of section 2(a)’s dispar- agement clause. To be sure, each individual Asian-American is a natural person. But the statute cannot be read to bar marks that disparage Asian-Americans for this rea- son, because all collective entities are made up of natural persons, including lefthanders, redheads, and all manner of associations and organizations that are not “juristic person[s]” because they are not capable of suing and being sued. To read section 2(a) to bar marks that disparage racial or ethnic groups would be to read the definition of “person” right out of the Lanham Act. This conclusion is doubly reinforced by the text of the sentence in which the disparagement clause is located. First, this sentence bars the registration of marks consisting of “matter which may disparage or falsely suggest a connection with persons, living or dead.” 15 U.S.C. § 1052(a) (emphasis added). The italicized phrase makes perfect sense as applied to natural persons. It prohibits the registration of BARACK OBAMA aftershave, along the lines of the right of publicity, which was still in embryonic form when the Lanham Act was enacted. The italicized phrase also makes perfect sense as applied to juristic persons. It prohibits the registration of ROLLS-ROYCE aftershave, along the lines of the anti-dilution provi- sions that would later be added to the Lanham Act. But the italicized phrase makes no sense at all as applied to collective entities such as racial or ethnic groups that are not juristic persons. What would it even mean to “falsely suggest a connection with” Asian-Americans?
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Second, the clause refers to “persons, living or dead.” Id. Natural persons can be dead, and juristic persons can be dead when they cease to be juristic persons, as when a corporation is dissolved. But non- juristic collective entities cannot die in the ordinary meaning of the word. What would it mean for the en- tity called Asian-Americans to be “dead”? The addition of the disparagement clause to fed- eral trademark law was not intended to be an early step in the civil rights movement. The clause was added in 1939 to one of the bills that eventually be- came the Lanham Act in 1946. H.R. 4744, 76th Cong., 1st Sess. (1939), § 2(a). It is very unlikely that members of Congress were concerned about trade- marks that were disparaging to racial or ethnic groups, either in 1939 or in 1946. At the time, it was not unusual for registered trademarks to include pe- jorative racial epithets. Trademarks with registra- tions in effect during this period included NIGGER HEAD golf equipment (No. 221,097, registered in 1926 for a 20-year term), NIGGER PRIZE HEAD ice cream (No. 301,747, registered in 1933 for a 20-year term), NIGGER IN DE CANE PATCH syrup (No. 186,950, registered in 1924 for a 20-year term and renewed in 1944 for another 20-year term), and NIGGER BABY oranges and grapefruit (No. 217,067, registered in 1926 for a 20-year term and renewed in 1946 for an- other 20-year term).2 There is no evidence that the disparagement clause was intended to halt the regis- tration of such trademarks. Rather, when the clause
2 These trademarks are exhibits 7 through 10 in the appendix to the brief filed below in the Federal Circuit by amici Amanda Blackhorse et al.
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was discussed in Congress, the only examples of dis- paragement anyone mentioned concerned natural persons (such as Abraham Lincoln and George Washington) and juristic persons (including the New York Athletic Club and Harvard University). Trade- Marks: Hearings on H.R. 4744 Before the Subcomm. on Trade-Marks of the H. Comm. on Patents, 76th Cong., 1st Sess. 19-21 (1939). The purpose of the disparagement clause was not to protect the civil rights of racial and ethnic minori- ties. Rather, the purpose appears to have been to bring American trademark law into conformity with the language of a recent treaty. In 1931, the United States ratified the Inter-American Convention for Trade Mark and Commercial Protection. 46 Stat. 2907 (1931). Article 3.4 of the Convention provided for the denial of registration to trademarks “[w]hich tend to expose persons, institutions, beliefs, national symbols or those of associations of public interest, to ridicule or contempt.” One of the primary purposes of the Lanham Act was, as the House and Senate re- ports both explained, “[t]o carry out by statute our international commitments.” H.R. Rep. No. 219, 79th Cong., 1st Sess. 4 (1945); S. Rep. No. 1333, 79th Cong., 2d Sess. 5 (1946). Indeed, the full title of the Lanham Act was “An Act to provide for the registra- tion and protection of trade-marks used in com- merce, to carry out the provisions of certain interna- tional conventions, and for other purposes.” 60 Stat. 427 (1946). Section 2(a) slightly reworded the Inter- American Convention provision without any loss in meaning. It barred the registration of marks that “disparage” or “bring … into contempt, or disrepute”
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(rather than “expose … to ridicule or contempt”) the same list of plural nouns as in the Convention— persons, institutions, beliefs, and national symbols. Congress would not turn its attention to protect- ing the rights of racial and ethnic minorities for many years to come. When it did, beginning with the Civil Rights Act of 1957, Congress would refer to race and ethnicity explicitly, unlike in the Lanham Act. Section 2(a) thus protects natural and juristic persons against disparagement; it does not protect racial and ethnic groups.
B. The Lanham Act’s disparagement clause is contrary to the First Amendment. The Court of Appeals correctly held that section 2(a)’s disparagement clause is contrary to the First Amendment. The clause imposes a significant con- tent-based and viewpoint-based burden on speech for which the government can offer no lawful justifica- tion. The government proposes a variety of defenses of the disparagement clause, but none has any valid- ity.
1. The disparagement clause discriminates on the basis of content, by singling out disparaging marks for disfavored treatment. The clause also discrimi- nates on the basis of viewpoint, which is an “all the more blatant” and “egregious form of content dis- crimination.” Rosenberger v. Rector and Visitors of the Univ. of Va., 515 U.S. 819, 829 (1995). The dis- paragement clause permits the registration of marks that express a positive or neutral view of a person or
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group, but bars the registration of marks that ex- press a negative view. Applying the disparagement clause, the PTO has registered THINK ISLAM, but it has denied registration to STOP THE ISLAMISATION OF AMERICA. Pet. App. 21a-22a. The PTO has registered NATIONAL REPUBLICAN SENATORIAL COMMITTEE, but it has denied registration to REPUBLICANS SHOULDN’T BREED. Pet. App. 8a. The PTO has regis- tered CELEBRASIANS and ASIAN EFFICIENCY, Pet. App. 21a, but—because it erroneously concluded that the mark expresses a negative view of Asian- Americans—the PTO denied registration to THE SLANTS. The denial of registration is a significant blow, be- cause a registered trademark is much more valuable than an unregistered trademark. As the Court has repeatedly recognized, “[r]egistration is significant. The Lanham Act confers important legal rights and benefits on trademark owners who register their marks.” B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1300 (2015) (citation and internal quotation marks omitted); see also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004); Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000). For example, registration serves as nationwide constructive notice of the registrant’s claim of ownership, which elimi- nates any possible defense of good faith adoption af- ter the date of registration. 15 U.S.C. § 1072. Regis- tration constitutes prima facie evidence of the mark’s validity and the registrant’s exclusive right to use the mark. Id. §§ 1057(b), 1115(a). After five
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years, a registered mark can become “incontestable.” Id. §§ 1065, 1115(b). The advantages of registration are as great in the music industry as in any other business. If another band were also to call themselves The Slants, regis- tration would equip Tam with powerful tools in the event of litigation. These tools would likely be enough to deter other bands from calling themselves The Slants in the first place. For this reason, bands from ABBA to ZZ TOP routinely register their names as trademarks, and guides for musicians advise up- and-coming bands to do the same. See, e.g., Richard Stim, Music Law: How to Run Your Band’s Business 249, 259 (8th ed. 2015); Donald S. Passman, All You Need to Know About the Music Business 359-60 (8th ed. 2012). Section 2(a)’s disparagement clause imposes a significant burden on speech with a particular con- tent and viewpoint. It is thus “presumptively uncon- stitutional and may be justified only if the govern- ment can prove that [it is] narrowly tailored to serve compelling state interests.” Reed v. Town of Gilbert, 135 S. Ct. 2218, 2226 (2015). The only interest the government asserts, and the only interest the disparagement clause advances, is that of protecting people from being offended by dis- paraging trademarks. See, e.g., Pet. 21 (quoting Judge Dyk’s characterization of the government’s in- terest as “protect[ing] underrepresented groups in our society from being bombarded with demeaning messages in commercial advertising”). But the First Amendment does not allow the government to im-
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pose burdens on speech for the purpose of protecting listeners against offense. Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 55 (1988). “[S]peech cannot be restricted simply because it is upsetting.” Snyder v. Phelps, 562 U.S. 443, 458 (2011). “Speech cannot be financially burdened, any more than it can be pun- ished or banned, simply because it might offend.” Forsyth Cty. v. Nationalist Movement, 505 U.S. 123, 134-35 (1992). Nor does the First Amendment permit the gov- ernment to burden speech to protect society as a whole from being offended. Disparaging trademarks understandably arouse disgust, “but disgust is not a valid basis for restricting expression.” Brown v. En- tertainment Merchants Ass’n, 564 U.S. 786, 798 (2011). “If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because so- ciety finds the idea itself offensive or disagreeable.” Texas v. Johnson, 491 U.S. 397, 414 (1989). Com- mercial speech is no more restrictable based on its offensive message than is noncommercial speech, Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 71- 72 (1983); Carey v. Population Servs., Int’l, 431 U.S. 678, 701 (1977), so the government’s asserted inter- est would be impermissible even if trademarks were purely commercial speech.
2. The government offers four theories in defense of the disparagement clause, but none has any valid- ity. First, the government insists that the disparage- ment clause does not restrict any speech, because
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Simon Tam may still call his band The Slants with- out a registered trademark. Pet. 10-12. But the First Amendment does not prohibit merely content-based bans on speech. It also prohibits the imposition of “a financial burden on speakers because of the content of their speech.” Simon & Schuster, Inc. v. Members of the N.Y. Crime Victims Bd., 502 U.S. 105, 115 (1991). As the Court has explained on several occa- sions, “the government’s ability to impose content- based burdens on speech raises the specter that the government may effectively drive certain ideas or viewpoints from the marketplace.” Id. at 116 (citing Leathers v. Medlock, 499 U.S. 439, 448-49 (1991)). “The Court has recognized that the ‘distinction be- tween laws burdening and laws banning speech is but a matter of degree’ and that the ‘Government’s content-based burdens must satisfy the same rigor- ous scrutiny as its content-based bans.’” Sorrell v. IMS Health Inc., 564 U.S. 552, 565-66 (2011) (quot- ing United States v. Playboy Entertainment Group, Inc., 529 U.S. 803, 812 (2000)). The disparagement clause is a significant content- based burden. The advantages of trademark regis- tration are so important in the marketplace that no rational person would use a trademark that cannot be registered rather than one that can. The dispar- agement clause effectively discourages the adoption of certain trademarks, just as surely as would a tax levied on businesses with disparaging names. Second, the government characterizes trademark registration as a subsidy to trademark owners which the government may spend as it sees fit. Pet. 14-17. But trademark registration is not a subsidy. Money
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flows from applicants to the government, not the other way around. In contrast, the Court’s subsidy cases all involve actual disbursements of funds from the government to speakers (or the equivalent in the form of tax exemptions or payroll deductions). See, e.g., Agency for Int’l Dev. v. Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. 2321 (2013); Ysursa v. Pocatello Educ. Ass’n, 555 U.S. 353 (2009); Davenport v. Wash- ington Educ. Ass’n, 551 U.S. 177 (2007); Legal Servs. Corp. v. Velazquez, 531 U.S. 533 (2001); NEA v. Fin- ley, 524 U.S. 569 (1998); Rust v. Sullivan, 500 U.S. 173 (1991); Regan v. Taxation With Representation of Wash., 461 U.S. 540 (1983). Where the government is paying others to speak, it may choose whom to pay. But trademark registration does not involve any government payments to speakers. Rather, trademark registration is a recording sys- tem, analogous to the federal registration systems for copyrights and patents, and like the title record- ing systems state governments operate for real prop- erty. In each of these systems, applicants who meet certain requirements may register their property, and registration gives the registrant certain legal rights that are unavailable to non-registrants. The government is acting as a regulator, not as a subsi- dizer. Just as the federal government does not sub- sidize copyright or patent holders, and just as state governments do not subsidize landowners who regis- ter their titles, the PTO does not subsidize trade- mark registrants. Classifying these recording sys- tems as subsidies for First Amendment purposes would yield the bizarre result of allowing the gov-
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ernment to deny copyrights to works with messages the government does not like. In any event, the disparagement clause would be unconstitutional even if trademark registration were a subsidy. The government may not “leverage its power to award subsidies … into a penalty on disfa- vored viewpoints.” Finley, 524 U.S. at 587. When the government places speech-related conditions on the recipients of government funds, those conditions must “define the limits of the government spending program”—i.e., the conditions must advance “the ac- tivities Congress wants to subsidize.” AID, 133 S. Ct. at 2328. Were the government to begin subsidizing trademark registrants, the First Amendment would thus allow the government to deny subsidies to reg- istrants whose marks do a poor job of identifying the sources of goods or services. But the government could not deny these subsidies to registrants whose marks express disfavored viewpoints. Third, the government suggests that a registered trademark is government speech rather than private speech. Pet. 17-20. But registration of a trademark does not convert the trademark into government speech. Registration does not connote government approval of the mark or the product to which the mark refers. 3 McCarthy on Trademarks and Unfair Competition § 19:3.50 (4th ed. Westlaw). Unlike li- cense plates, Walker v. Texas Div., Sons of Confeder- ate Veterans, Inc., 135 S. Ct. 2239, 2248 (2015), trademarks do not communicate messages from the government. They communicate messages from pro- viders of goods and services. Unlike license plates, id. at 2248-49, trademarks are not a form of govern-
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ment ID the public thinks of as government speech. Unlike license plates, id. at 2249, the government does not control the design or the content of trade- marks. Trademarks are private speech. As the Court of Appeals correctly noted, “the PTO routinely registers marks that no one can say the government endorses,” such as RADICALLY FOLLOW- ING CHRIST IN MISSION TOGETHER, THINK ISLAM, GANJA UNIVERSITY, CAPITALISM SUCKS DONKEY BALLS, TAKE YO PANTIES OFF, and MURDER 4 HIRE. Pet. App. 43a. Moreover, if the issuance of a trade- mark registration were enough to convert a trade- mark to government speech, the issuance of a copy- right would do the same for copyrighted works, which would allow the government to deny copy- rights to works with content it disfavors. Fourth, the government contends that trademarks are purely commercial speech. Pet. 20-21. But trademarks are not purely commercial speech, and the disparagement clause would be unconstitutional even if they were. Trademarks have both commercial and expressive functions. They identify the sources of goods and services and they also express points of view. In some trademarks, perhaps, the expressive compo- nent may be so minimal that it can be disregarded. Friedman v. Rogers, 440 U.S. 1 (1979), for instance, involved a bare-bones trade name (“Texas State Op- tical”) that did not “editorialize on any subject, cul- tural, philosophical, or political,” or “make general- ized observations even about commercial matters.” Id. at 11. The Court accordingly treated this trade
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name as commercial speech. Id. In other trade- marks, such as THE SLANTS, THINK ISLAM, or DYKES ON BIKES, the expressive component is the dominant feature of the mark. Such marks do editorialize on cultural and political subjects. They do more than merely facilitate commercial transactions. In such cases, where speech’s commercial and expressive functions “are inextricably intertwined, we cannot parcel out the speech, applying one test to one phrase and another test to another phrase. ... There- fore, we apply our test for fully protected expres- sion.” Riley v. Nat’l Fed’n of the Blind, 487 U.S. 781, 796 (1988). Equally important, the disparagement clause reg- ulates only the expressive component of trademarks, never the commercial component. When the PTO re- fuses registration under the disparagement clause, the PTO’s decision is based on the point of view that the mark expresses. As the Court of Appeals correct- ly concluded, “every time the PTO refuses to register a mark under § 2(a), it does so because it believes the mark conveys an expressive message—a mes- sage that is disparaging to certain groups.” Pet. App. 25a. The Court has made clear that “[c]ommercial speech is no exception” to the rule that “[t]he First Amendment requires heightened scrutiny whenever the government creates a regulation of speech be- cause of disagreement with the message it conveys.” Sorrell, 564 U.S. at 566 (internal quotation marks omitted). While the government may limit commer- cial advertising to prevent fraud, the government “may not prohibit only that commercial advertising
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that depicts men in a demeaning fashion.” R.A.V. v. City of St. Paul, 505 U.S. 377, 389 (1992). In any event, even if trademarks were pure com- mercial speech, and even if the disparagement clause regulated trademarks’ commercial compo- nents rather than their expressive components, the disparagement clause would still be contrary to the First Amendment. Under the Central Hudson test, the government would have to show that the dispar- agement clause directly advances a substantial state interest. Thompson v. Western States Med. Ctr., 535 U.S. 357, 367 (2002); Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n, 447 U.S. 557, 566 (1980). Again, however, the government can advance no interest other than that of preventing offense, an interest the First Amendment renders off-limits.
C. The Lanham Act’s disparagement clause is unconstitutionally vague. The Due Process Clause “requires the invalidation of laws that are impermissibly vague.” FCC v. Fox Television Stations, Inc., 132 S. Ct. 2307, 2317 (2012). The prohibition of vague laws serves two purposes: “first, that regulated parties should know what is required of them so they may act according- ly; second, precision and guidance are necessary so that those enforcing the law do not act in an arbi- trary or discriminatory way.” Id. “When speech is involved, rigorous adherence to these requirements is necessary to ensure that ambiguity does not chill protected speech.” Id. For this reason, where a law burdens speech, “a more stringent vagueness test
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should apply.” Village of Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455 U.S. 489, 499 (1982). The disparagement clause fails any vagueness test, stringent or not. The PTO’s record speaks for itself. The Court of Appeals catalogued some of the highlights, in finding that “[t]he PTO’s record of trademark registrations and denials often appears arbitrary and is rife with inconsistency.” Pet. App. 33a n.7. The PTO denied registration to HAVE YOU HEARD SATAN IS A REPUBLICAN, because it disparaged the Republican Party, but did not find THE DEVIL IS A DEMOCRAT disparaging. The PTO has registered FAGDOG on some occasions, and on other occasions has found FAGDOG disparaging. After citing these examples and others, the Court of Appeals appropri- ately concluded: “We see no rationale for the PTO’s seemingly arbitrary registration decisions, let alone one that would give applicants much guidance.” Pet. App. 33a n.7. Part of the problem is the subjectivity inherent in deciding whether a word is disparaging. Different examiners in the PTO come to different conclusions about indistinguishable marks, because each has his or her own idea of what is disparaging. Just as the term “annoying” is an unconstitutionally vague basis for legal consequences because different people find different things annoying, Coates v. City of Cincin- nati, 402 U.S. 611, 614 (1971), and just as “indecent” and “patently offensive” are unconstitutionally vague grounds for limiting speech because of “uncertainty among speakers about … just what they mean,” Re- no v. ACLU, 521 U.S. 844, 871 (1997), the term “dis- parage” is too vague a basis for burdening speech.
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But the PTO has made the vagueness problem even worse by construing the statute non-literally to bar the registration of marks that disparage amor- phous groups as well as natural and juristic persons. It can be hard enough to tell whether a mark dispar- ages an individual or a company, but it is often far more ambiguous whether a mark disparages a race, or a gender, or any of the infinite number of groups to which we all belong. It is no accident that the PTO’s sorry record of inconsistency is made up of de- cisions involving the disparagement of amorphous groups rather than natural and juristic persons. The PTO has compounded the problem by refus- ing to say how many members of the referenced group must perceive disparagement. All the PTO will say is that it must be “a substantial composite,” which is “not necessarily a majority,” Pet. App. 172a, but is presumably more than a single person. If a quarter or a third of the members of a group find a mark disparaging, is that a substantial composite? No one knows, not even the PTO’s own examiners. The PTO might as well be tossing a coin. The PTO granted registration to HEEB in 2004 as the name of a magazine, but denied registration to the same ap- plicant for HEEB in 2008 as the name of a clothing line on the ground that the word is “a highly dispar- aging reference to Jewish people.” In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071, 2008 WL 5065114, *1 (TTAB 2008). The PTO denied registration in 2008 to MARRIAGE IS FOR FAGS on the ground that “fag” is “an offensive term for a gay man” (serial no. 77477549, office action 11/19/2008), but granted reg- istration in 2005 to F.A.G. FABULOUS AND GAY. Pet.
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App. 33a n.7. Applicants have no way to predict what the PTO will do. The vagueness of the disparagement clause is al- most certainly causing business owners to shy away from names the PTO might conceivably find dispar- aging, because it can be extraordinarily disruptive and costly to change the name of a product that is already in the market. The vagueness of a content- based speech regulation “raises special First Amendment concerns because of its obvious chilling effect on free speech.” Reno v. ACLU, 521 U.S. at 871-72. The disparagement clause is a perfect exam- ple. Vague speech restrictions do not just chill speech; they also facilitate “discriminatory enforcement,” be- cause a “vague law impermissibly delegates basic policy matters” to low-level decision-makers “for res- olution on an ad hoc and subjective basis, with the attendant dangers of arbitrary and discriminatory application.” Grayned v. City of Rockford, 408 U.S. 104, 108-09 (1972). The PTO’s consideration and re- jection of MARRIAGE IS FOR FAGS took place right in the midst of the controversy over California’s Propo- sition 8, which prohibited same-sex marriage. The applicant lived in California. We will never know whether the PTO’s examiner was discriminating against the view expressed in the trademark, and that is precisely why vague speech restrictions like the disparagement clause are so pernicious.
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CONCLUSION The petition for a writ of certiorari, with the Questions Presented reformulated as in this re- sponse, should be granted. Respectfully submitted, STUART BANNER JOHN C. CONNELL EUGENE VOLOKH Counsel of Record UCLA School of Law RONALD D. COLEMAN Supreme Court Clinic JOEL G. MACMULL 405 Hilgard Ave. Archer & Greiner, P.C. Los Angeles, CA 90095 One Centennial Square P.O. Box 3000 Haddonfield, NJ 08033 (856) 795-2121 [email protected]
Intellectual Property Review—Updates and Changes from 2016 4–47 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
Intellectual Property Review—Updates and Changes from 2016 4–48 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
No. 15-1293
IN THE Supreme Court of the United States
MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, Petitioner, v. SIMON SHIAO TAM, Respondent.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
BRIEF OF AMICUS CURIAE SAN FRANCISCO DYKES ON BIKES WOMEN’S MOTORCYCLE CONTINGENT, INC.
BROOKE OLIVER MARK A. LEMLEY 50 BALMY LAW P.C. Counsel of Record 50 Balmy Alley MICHAEL A. FELDMAN San Francisco, CA 94110 DURIE TANGRI LLP 217 Leidesdorff Street San Francisco, CA 94111 TOBIAS BARRINGTON WOLFF UNIVERSITY OF PENNSYLVANIA [email protected] 3501 Sansom Street Philadelphia, PA 19104 (215) 898-7483 Counsel for Amicus Curiae A
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TABLE OF CONTENTS Page TABLE OF CONTENTS...... i
TABLE OF CITED AUTHORITIES ...... ii
INTEREST OF THE AMICUS CURIAE ...... 1
SUMMARY OF ARGUMENT...... 2
ARGUMENT...... 7
A. DYKES ON BIKES AND THE TRADEMARK REGISTRATION ODYSSEY ...... 7
B. DYKES ON BIKES’ TRADEMARKS ARE POLITICAL SPEECH, NOT COMMERCIAL SPEECH ...... 10
C. THE STANDARDLESS DISCRETION IN SECTION 1052(A)’S SPEECH LICENSING REQUIREMENT LEADS TO ARBITRARY APPLICATIONS ...... 13
D. THE IMPORTANCE OF TRADEMARK REGISTRATION...... 19
CONCLUSION ...... 24
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TABLE OF CITED AUTHORITIES Page CASES
Board of Trustees of State University of New York v. Fox, 86 ...... 12
Carey v. Population Services Int’l, 86 ...... 12
City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410 (1993)...... 13, 17
City of Ladue v. Gilleo, 512 U.S. 43 (1994)...... 10
City of Lakewood v. Plain Dealer Publishing Co., 86 ...... 13
Forsyth County v. Nationalist Movement, 505 U.S. 123 (1992)......
Grayned v. City of Rockford, 408 U.S. 104 (1972)...... 18
In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) ...... 4, 17
Lee v. Tam, 6&W 6HSW ...... 4, 10
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Cited Authorities Page Nat’l Endowment for the Arts v. Finley, 86 ...... 18
Perry v. Sindermann, 408 U.S. 593 (1972)...... 19, 23
Reed v. Town of Gilbert, 135 S. Ct. 2218 (2015)...... 22
Roberts v. United States Jaycees, 86 ...... 11
Shuttlesworth v. Birmingham, 86 ...... 13, 14
Sorrell v. IMS Health Inc., 86 ...... 22, 23
Speiser v. Randall, 357 U.S. 513 (1958)...... 19, 23
Staub v. City of Baxley, 355 U.S. 313 (1958)...... 13
Texas v. Johnson, 491 U.S. 397 (1989)...... 11
Village of Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455 U.S. 489 (1982)...... 18
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Cited Authorities Page STATUTES
15 U.S.C. § 1052...... passim
86& ......
The Lanham Act ...... 20, 22
OTHER AUTHORITIES
TMEP § 1203.03 ...... 14, 15
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INTEREST OF THE AMICUS CURIAE1
Amicus Curiae San Francisco Dykes on Bikes Women’s Motorcycle Contingent, Inc. (“Dykes on Bikes”) LVDQRQSURÀWRUJDQL]DWLRQFRPSRVHGRIOHVELDQPRWRUF\FOH ULGHUVDQGWKHLUDOOLHV7KH'\NHVRQ%LNHVÀUVWDSSHDUHG LQWKH 6DQ)UDQFLVFR3ULGHSDUDGHDQGKDYHOHGWKH San Francisco Pride parade and many other cities’ Pride SDUDGHVHYHUVLQFHDVUHSUHVHQWDWLYHVRIWKHPRYHPHQWIRU OHVELDQJD\ELVH[XDOWUDQVJHQGHUDQGTXHHU ´/*%74µ HTXDOLW\DQGHPSRZHUPHQW
The Patent and Trademark Office (“PTO”) has E\WXUQVERWKDFFHSWHGDQGUHMHFWHG'\NHVRQ%LNHV· trademark applications, depending on the time and the SDUWLFXODUH[DPLQHUDVVLJQHGWRWKHFDVH7KLVLQFOXGHV YDULRXV UHMHFWLRQV RQ WKH JURXQG WKDW WKH WHUP ´G\NHµ LVDGLVSDUDJLQJWHUPIRUOHVELDQVDQGFRQYHUVHO\DQ DFFHSWDQFHEDVHGRQH[WHQVLYHHYLGHQFHIURP'\NHVRQ Bikes that the term “dyke” is not a disparaging term, LQFOXGLQJDOPRVWWZRGR]HQH[SHUWGHFODUDWLRQVIURP distinguished linguists, historians, and authors.
Dykes on Bikes has no direct interest in the outcome RIWKLVFDVHEXWGRHVKDYHDQLQWHUHVWLQEHLQJDEOHWR UHJLVWHUDQGFRQWUROWKHXVHRILWVWUDGHPDUNVZKLFKWKH 372KDVLQWHUIHUHGZLWKE\UHMHFWLQJ'\NHVRQ%LNHV· 'HVLJQ0DUNWUDGHPDUNDSSOLFDWLRQDQGE\DSSO\LQJ
1. 1RFRXQVHOIRUDSDUW\DXWKRUHGWKLVEULHILQZKROHRULQSDUW DQGQRVXFKFRXQVHORUSDUW\PDGHDPRQHWDU\FRQWULEXWLRQLQWHQGHG WRIXQGWKHSUHSDUDWLRQRUVXEPLVVLRQRIWKLVEULHI1RSHUVRQRWKHU than the amicus curiaeRULWVFRXQVHOPDGHDPRQHWDU\FRQWULEXWLRQ WRLWVSUHSDUDWLRQRUVXEPLVVLRQ7KHSDUWLHVKDYHFRQVHQWHGWRWKH ÀOLQJRIDOOEULHILQWKLVPDWWHU
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LWVUHJLVWUDWLRQFULWHULDDUELWUDULO\DQGLQFRQVLVWHQWO\ '\NHVRQ%LNHVKDVDWUDGHPDUNDSSOLFDWLRQWKDWKDVEHHQ suspended pending the result of this case.
SUMMARY OF ARGUMENT
$PLFXV'\NHVRQ%LNHVLVDQRQSURÀWRUJDQL]DWLRQ FRPSRVHGRIOHVELDQPRWRUF\FOHULGHUVDQGWKHLUDOOLHV '\NHVRQ%LNHVXVHVLWVWUDGHPDUNWRFXOWLYDWHDEUDQG RISROLWLFDODFWLYLVPDQGDZDUHQHVVVXSSRUWLQJWKHFLYLO ULJKWVRIOHVELDQVDQGZRUNLQJWRÀJKWKDUPIXOVWHUHRW\SHV DERXWOHVELDQVDQGWKHHQWLUH/*%74FRPPXQLW\7KH SXUSRVHRIWKHEUDQGLVQRWWRVHOOFRPPHUFLDOJRRGVRU VHUYLFHV5DWKHU'\NHVRQ%LNHVUHTXLUHVDOOLWV&KDSWHUV DURXQGWKHZRUOGWRXVHWKHEUDQGIRUFKDULWDEOHDQG SROLWLFDOH[SUHVVLRQLQVXSSRUWRILWVFLYLOULJKWVPLVVLRQ Amicus purposefully and intentionally adopted the term “dykes” as part of its trademark in order to highlight and FRQIURQWWKHFRQWURYHUVLDOKLVWRU\RIWKDWWHUPDQGGLVSHO the notion that it is disparaging. It uses its trademark to SUHYHQWWKHFRPPHUFLDOH[SORLWDWLRQRILWVQDPHRUORJR ZKLFK'\NHVRQ%LNHVEHOLHYHVZRXOGFRUUXSWDQGGLOXWH LWVDELOLW\WRXVHLWVPDUNWRDGYDQFHLWVSROLWLFDODQGVRFLDO message.
7KHSURFHVVRIREWDLQLQJWUDGHPDUNUHJLVWUDWLRQVIURP WKH372KDVEHHQFRVWO\WLPHFRQVXPLQJDQGXOWLPDWHO\ RQO\SDUWLDOO\VXFFHVVIXOEHFDXVHHDFKDSSOLFDWLRQLV VXEMHFWWRWKHZKLPRIWKHSDUWLFXODUWUDGHPDUNH[DPLQHU DVVLJQHGDQGKLVRUKHUSDUWLFXODUELDVHVLQDSSO\LQJ 86& D 'LIIHUHQW372H[DPLQHUVKDYHDW YDULRXVWLPHVERWKDFFHSWHGDQGUHMHFWHG'\NHVRQ%LNHV· trademark applications, depending on the particular H[DPLQHUDVVLJQHGWRWKHFDVHDQGWKHLUFKDQJHVLQPLQG
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,WKDVDWYDULRXVSRLQWVIRXQGERWKWKDWWKHWHUP´G\NHµ LVDGLVSDUDJLQJWHUPIRUOHVELDQVDQGFRQYHUVHO\WKDW the term “dyke” is not a disparaging term.
7KLVGLIÀFXOW\LQUHJLVWHULQJLWVWUDGHPDUNVKDVPDGH LWQHDUO\LPSRVVLEOHWRNHHSWKH'\NHVRQ%LNHVEUDQG focused on political speech. Dykes on Bikes has struggled WRSUHYHQWRWKHUXVHUVIURPDWWHPSWLQJWRFRPPHUFLDOL]H WKHPDUN:HEVLWHVOLNHH%D\)DFHERRNDQG=D]]OHFRP UHTXLUHWUDGHPDUNUHJLVWUDWLRQQXPEHUVIRUWDNHGRZQ QRWLFHVDQGVRPHVLWHVUHIXVHWRKRQRUWDNHGRZQQRWLFHV ZLWKRXWSURRIRIDIHGHUDOWUDGHPDUNUHJLVWUDWLRQ7KLV OHDYHVWKH'\NHVRQ%LNHVORJRYXOQHUDEOHDQGWKUHDWHQVWR GHSULYHWKH'\NHVRQ%LNHVQDPHRISURWHFWLRQDVWKH372 FRQWHPSODWHVUHYHUVLQJLWVHDUOLHUUXOLQJDQGLQYDOLGDWLQJ WKHRUJDQL]DWLRQ·VH[LVWLQJPDUN7KHUHDOLW\LVWKDW IHGHUDOWUDGHPDUNUHJLVWUDWLRQLVRIWHQDSUHUHTXLVLWHWR HIIHFWLYHHQIRUFHPHQW:LWKRXWWKHSRZHURIDUHJLVWHUHG WUDGHPDUNWKHSXEOLFLVOHIWFRQIXVHGDQGXQDEOHWR distinguish Dykes on Bikes’ political speech from the VSHHFKRIXQUHODWHGXQDIÀOLDWHGHQWLWLHVORRNLQJWRPDNH PRQH\RIIWKH'\NHVRQ%LNHVEUDQG
'\NHVRQ%LNHV·H[SHULHQFHZLWK6HFWLRQ D RIIHUV WKUHHOHVVRQVWKDWPD\KHOSWKH&RXUWLQUHVROYLQJWKLV case:
1. Trademark registration is not useful only for FRPPHUFLDOVSHHFK,WFDQDOVREHFULWLFDOIRUHQWLWLHV engaged in political speech. Dykes on Bikes is a non- SURÀWRUJDQL]DWLRQIRFXVHGRQSROLWLFDOVSHHFKDQGVRFLDO DFWLRQQRWFRPPHUFLDOL]DWLRQ'\NHVRQ%LNHVXVHVLWV WUDGHPDUNVIRUWKUHHUHDVRQV WRLGHQWLI\LWVHOIZKHQLW LVHQJDJHGLQLWVRZQSROLWLFDOVSHHFK IRUPHPEHUVWR
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SXEOLFO\VHOILGHQWLI\DVSURXGO\RXWRIWKHFORVHWOHVELDQV SXEOLFO\DSSURSULDWLQJWKHYHU\ZRUGVSUHYLRXVO\XVHGWR VKDPHWKHPLQWRVLOHQFHDQGVXEPLVVLRQDVZHOODVFODLPLQJ WKRVHZRUGVDVDVRXUFHRISULGHDQGDVDUDOO\LQJFU\IRU ZLQQLQJHTXDOULJKWVXQGHUWKHODZ DQG WRSUHYHQW IRUSURÀWFRPSDQLHVIURPWU\LQJWRSURÀWIURPWKHZHOO NQRZQ'\NHVRQ%LNHVWUDGHPDUNE\VHOOLQJSURGXFWVRI WKHLURZQZLWKQREHQHÀWRYHUVLJKWRUDSSURYDOIURPWKH DFWXDO'\NHVRQ%LNHVRUJDQL]DWLRQ6HFWLRQ D GRHV QRWVLPSO\EXUGHQVSHHFKWKDWSURSRVHVDFRPPHUFLDO transaction. As applied to Dykes on Bikes, it directly DIIHFWVRXUDELOLW\WRHQJDJHLQFRUHSROLWLFDOVSHHFK XQGLOXWHGE\PLVOHDGLQJFRPPHUFLDOPHVVDJHV
2. The PTO’s application of Section 1052(a)’s SURKLELWLRQRQ´GLVSDUDJLQJµWUDGHPDUNVLVDUELWUDU\ DQGLQFRQVLVWHQWGHSHQGLQJRQWKHRSLQLRQVELDVHVDQG VWDQGDUGOHVVGLVFUHWLRQRIWKHSDUWLFXODU372H[DPLQHU DVVLJQHGWRWKHFDVH7KH)HGHUDO&LUFXLWGHFLVLRQQRZRQ appeal lamented the inconsistent application of Section 1052(a), pointing out that the PTO denied trademark registration for HAVE YOU HEARD SATAN IS A 5(38%/,&$1EXWJUDQWHGWKHWUDGHPDUNDSSOLFDWLRQ for THE DEVIL IS A DEMOCRAT. See In re Tam, 808 F.3d 1321, 1342 n.7 (Fed. Cir. 2015), as corrected )HE cert. granted sub nom., Lee v. Tam, 137 S. Ct. 30 6HSW %XWLWLVZRUVHWKDQWKDW7KH372KDV ERWKDFFHSWHGDQGUHMHFWHGPDUNVXVLQJH[DFWO\WKHVDPH ZRUGV,QWKH372LVVXHGDFHUWLÀFDWHRIUHJLVWUDWLRQ IRUWKHZRUGPDUN´'\NHVRQ%LNHVµDOEHLWRQO\DIWHUWKH H[DPLQHU·VUHIXVDOWRUHJLVWHUWKHPDUNZDVUHYHUVHG on appeal. DYKES ON BIKES, Reg. No. 3,323,803 File +LVWRU\ ´·)+µ 5HJLVWUDWLRQ&HUWLÀFDWH 2FW '\NHVRQ%LNHVWKHQÀOHGLWVGHFODUDWLRQRIXVHDQG
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LQFRQWHVWDELOLW\LQId.,'HFORI8VH ,QFRQWHVWDELOLW\ 2FW %XWLQZKHQ'\NHVRQ%LNHVDSSOLHGWR UHJLVWHULWVORJRZKLFKDOVRLQFOXGHVWKHZRUGV´'\NHVRQ %LNHVµWKH372UHMHFWHGWKHDSSOLFDWLRQRQWKHEDVLVWKDW WKHZRUG´G\NHµZDVGLVSDUDJLQJGHVSLWHWKHÀQGLQJ WRWKHFRQWUDU\DQGGHVSLWHLVVXLQJDFHUWLÀFDWHRIXVHDQG LQFRQWHVWDELOLW\IRUWKHVDPHZRUGVRQO\WZR\HDUVHDUOLHU DYKES ON BIKES W M C, U.S. Trademark Serial No. )LOH+LVWRU\ ´·)+µ 6XVSHQVLRQ1RWLFH 2FW 7KH372DUJXHVWKDWLWLVQRWERXQGE\LWV SULRUGHFLVLRQRQWKHVDPHZRUGVLQVLVWLQJXSRQLWVULJKW to render inconsistent rulings.
7KHORQJFRVWO\DQGXQFHUWDLQSURFHVVRIREWDLQLQJ WUDGHPDUNUHJLVWUDWLRQKDVLPSRVHGDVXEVWDQWLDOEXUGHQ RQ'\NHVRQ%LNHV7UDGHPDUNH[DPLQHUVGHPDQGHGDQ H[WUDRUGLQDU\DPRXQWRIHYLGHQFHIDUEH\RQGZKDWLV UHTXLUHGRIRWKHUWUDGHPDUNDSSOLFDQWVEHIRUHUHJLVWHULQJ WKH'\NHVRQ%LNHVZRUGPDUN$QGVRPHH[DPLQHUV DFFHSWWKDWHYLGHQFHZKLOHRWKHUVUHMHFWLWDSSO\LQJD VXEMHFWLYHVWDQGDUGIRULGHQWLI\LQJ´GLVSDUDJLQJµZRUGV The inconsistency of the PTO in registering other marks WKDWXVHZRUGVZLWKDKLVWRU\RIGLVSDUDJLQJPHDQLQJ OLNH48((5$6)2/.DQG%,7&+ZKLOHUHIXVLQJ to register the Dykes on Bikes design mark, further GHPRQVWUDWHVWKHDUELWUDULQHVVRIWKHVWDQGDUG'\NHV RQ%LNHV·H[SHULHQFHLVDFDXWLRQDU\WDOHDERXWGHOHJDWLQJ hundreds or thousands of discretionary free speech GHFLVLRQVWRLQGLYLGXDOFLYLOVHUYDQWVZRUNLQJZLWKQR FOHDURUREMHFWLYHVWDQGDUG,WLVDOVRDKHDOWK\UHPLQGHU ZK\WKH)LUVW$PHQGPHQWVWURQJO\GLVIDYRUVWKLVNLQGRI FRQWHQWEDVHGSULRUOLFHQVLQJUHVWUDLQWRQVSHHFK
Intellectual Property Review—Updates and Changes from 2016 4–58 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
3. Federal trademark registration matters. Without UHJLVWUDWLRQLWPD\EHSUDFWLFDOO\DQGILQDQFLDOO\ LPSRVVLEOHIRU'\NHVRQ%LNHV³RUDQ\VPDOOSROLWLFDO DFWLYLVWRUJDQL]DWLRQ³WRHIIHFWLYHO\HQVXUHWKDWWKHSXEOLF XQGHUVWDQGVWKHGLIIHUHQFHEHWZHHQ'\NHVRQ%LNHV·RZQ SROLWLFDOVSHHFKDQGVSHHFKIURPRWKHUVZKLFKPLJKWEH commercial or contain anti-gay political messages falsely claiming to come from Dykes on Bikes.
6RPHFRXUWV³DQGSHWLWLRQHUV³VXJJHVWWKDWHYHQLI WKH372UHMHFWVDPDUNDVGLVSDUDJLQJWKHWUDGHPDUN RZQHUFDQLQYRNHFRPPRQODZULJKWV%XWFRPPRQ ODZULJKWVDUHQRWDGHTXDWH7UDGHPDUNUHJLVWUDWLRQ FRQIHUVDQXPEHURIOHJDODGYDQWDJHVWKDWDFRPPRQ ODZULJKWWREULQJDODZVXLWGRHVQRWLQFOXGLQJWKH VWDWXWRU\ SUHVXPSWLRQ RI YDOLGLW\ QDWLRQZLGH SULRULW\ LQFRQWHVWDELOLW\SURRIWKDWWKHPDUNKDVVHFRQGDU\ PHDQLQJDQGFRQVWUXFWLYHQRWLFHWRZRXOGEHLQIULQJHUV 5HJLVWUDWLRQDOVRFRQIHUVVLJQLÀFDQWSUDFWLFDODGYDQWDJHV not mentioned in the statute, particularly for small FRPSDQLHVRUQRQSURÀWRUJDQL]DWLRQVVXFKDV'\NHVRQ %LNHV(IIHFWLYHHQIRUFHPHQWLVSUDFWLFDOO\LPSRVVLEOH ZLWKRXWDWUDGHPDUNUHJLVWUDWLRQRUWKHPRQH\WRÀOH FRXQWOHVVFRPPRQODZWUDGHPDUNODZVXLWV
7UDGHPDUNUHJLVWUDWLRQWKHQLVQRWVLPSO\DEHQHÀW FRQIHUUHGE\WKHJRYHUQPHQWWKDWFDQEHUHSODFHGE\WKH FRQVRODWLRQSUL]HRIFRPPRQODZULJKWVIRUWKRVHZKRVH VSHHFKWKHJRYHUQPHQWGLVIDYRUV5HJLVWUDWLRQLVDQ integral part of the federal trademark scheme and an LQWHJUDOSDUWRIDQRUJDQL]DWLRQ·VDELOLW\WRHIIHFWLYHO\ QDPHDQGEUDQGLWVHOI
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ARGUMENT
A. DYKES ON BIKES AND THE TRADEMARK REGISTRATION ODYSSEY
'\NHVRQ%LNHVLVDQRQSURILWRUJDQL]DWLRQ GHGLFDWHGWRKHOSLQJ/*%74SHRSOHKDYHSULGHDQGGLJQLW\ LQWKHLUVH[XDORULHQWDWLRQDQGWRHQJDJHLQSKLODQWKURSLF HIIRUWVLQWKH/*%74DQGZRPHQ·VFRPPXQLWLHV,WLV EDVHGLQ6DQ)UDQFLVFRDQGKDVDERXWRIÀFLDOFKDSWHUV WKURXJKRXWWKH86DQGWKHZRUOG7KH6DQ)UDQFLVFR FKDSWHURYHUVHHVWKHRIÀFLDOFKDSWHUVDQGHQVXUHVWKDW WKHRUJDQL]DWLRQDVDZKROHPDLQWDLQVDXQLWHGYLVLRQIRU DGYDQFLQJ/*%74DQGZRPHQ·VULJKWV
7KHRUJDQL]DWLRQÀUVWIRUPHGLQ ZKHQDVPDOO FRQWLQJHQWRIZRPHQPRWRUF\FOLVWVJDWKHUHGDWWKHKHDG RIWKH6DQ)UDQFLVFR3ULGHSDUDGH7KDWÀUVW\HDUWKH\ coined the informal name “Dykes on Bikes.” Consistent ZLWKWKH´SULGHµWKHPHWKH\FKRVHWRXVHWKHQDPH ´G\NHVµSUHFLVHO\EHFDXVHRILWVKLVWRU\DVDVOXU7KH PHVVDJHLWFRQYH\HGZDVLQSDUWWKDWEHLQJDG\NHZDV QRWVRPHWKLQJWREHDVKDPHGRI5DWKHUWKDQUHPDLQLQJ KLGGHQLQSULYDWHKRPHVDQGFOXEVOHVELDQVFRXOGEH RXWDQGSURXGULGLQJSRZHUIXOPDFKLQHVDWWKHIURQWRI SDUDGHVFHOHEUDWLQJWKHFLYLOULJKWVRI/*%74SHRSOH The societal and personal impact of the Dykes on Bikes trademark has helped transform “dyke” from an epithet to DZRUGFRPPRQO\XVHGE\OHVELDQVWRUHIHUWRWKHPVHOYHV ZLWKSULGH
,QWKHRUJDQL]DWLRQRIÀFLDOO\FKDQJHGLWVQDPH to the San Francisco Dykes on Bikes Women’s Motorcycle &RQWLQJHQW'\NHVRQ%LNHVÀOHGLWVDSSOLFDWLRQWRUHJLVWHU
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the phrase DYKES ON BIKES as a trademark on July 31, EHJLQQLQJDVDJDWKDWFRQWLQXHVWRWKLVGD\ZLWKRXW DÀQDOUHVROXWLRQ
7UDGHPDUNH[DPLQHUVLQLWLDOO\UHIXVHGWRUHJLVWHUWKH PDUN·)+2IÀFH$FWLRQ )HE 2YHUFRPLQJ WKDWUHVLVWDQFHUHTXLUHG'\NHVRQ%LNHVWRVXEPLW HYLGHQFHIDUEH\RQGZKDWLVUHTXLUHGRIRWKHUWUDGHPDUN DSSOLFDQWVDQGWRZLQDQDSSHDO7KURXJKRXWWKHSURFHVV '\NHVRQ%LNHVPHWZLWKKRVWLOLW\DQGUHVLVWDQFHIURP the PTO.
'\NHVRQ%LNHVÀUVWSURYLGHGHYLGHQFHWRWKH372 WKDWWKHWHUP´G\NHµLVQRWGLVSDUDJLQJEXWWKH372 UHMHFWHGWKHDSSOLFDWLRQId.5HTXHVWIRU5HFRQVLGHUDWLRQ $SULO '\NHVRQ%LNHVDSSHDOHG77$%$SSHDO RI$SSOLFWLRQ6HULDO1R ´$SSHDOµ $SULO :HRIIHUHGGHFODUDWLRQVIURPH[SHUWZLWQHVVHV LQFOXGLQJ/*%74VFKRODUVKLVWRULDQVDQGOH[LFRORJLVWV WRVKRZWKDWWKHWHUPLVQRWGHURJDWRU\Id. Rather than FLWHVLPLODUO\FRPSHWHQWHYLGHQFHGXULQJWKHDSSHDOWKH 372DWWHPSWHGWRVXSSRUWLWVSRVLWLRQZLWKDSULQWRXWRI DQXQLGHQWLÀHGLQGLYLGXDO·VZHESDJHSXUSRUWLQJWRSURYLGH SHUVRQDOWUDQVODWLRQVRI´YXOJDUµZRUGVIURP(QJOLVKLQWR Spanish. Id.,5HFRQVLGHUDWLRQ'HQLDO 0D\ ,W ZDVQRWDOLVWRI´GLVSDUDJLQJµZRUGVEXWDOLVWRI´YXOJDUµ ZRUGVLQFOXGLQJ´G\NHµ´EUHDVWVµ´WHVWLFOHVµ´FOLWRULVµ ´FRQGRPµDQGPDQ\RWKHUZRUGVZKLFKFRXOGQRWEH considered “disparaging” under Section 2(a). The PTO DOVRRIIHUHGDSULQWRXWRIDQRQOLQHGLFWLRQDU\FRPELQLQJ UHIHUHQFHVIURPDQRXWRISULQW :HEVWHU·VGLFWLRQDU\ DQGSHUVRQDOQRWDWLRQVE\WKHLQGLYLGXDOZKRKRVWHGWKH ZHEVLWHZKHUHWKHRQO\UHIHUHQFHWR´G\NHµDV´YXOJDU deprecatory” appears in a personal notation.
Intellectual Property Review—Updates and Changes from 2016 4–61 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
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2Q1RYHPEHUWKH7UDGHPDUN7ULDODQG $SSHDOV%RDUGUHPDQGHGWKHFDVHWRWKH372ZKLFK SXEOLVKHGWKH'<.(621%,.(6PDUNIRURSSRVLWLRQ RQ-DQXDU\. Id.5HPDQG 1RY ·)+ 1RWLFHRI3XEOLFDWLRQ -DQ
7KH372ÀQDOO\UHJLVWHUHGWKH'\NHVRQ%LNHVPDUN LQ2FWREHUDQGLQDFFHSWHGWKHFHUWLÀFDWHRI XVHDQGLQFRQWHVWDELOLW\·)+5HJLVWUDWLRQ&HUWLÀFDWH 2FW id.1RWLFHRI$FFHSWDQFH 1RY
+RZHYHU RQO\ WZR \HDUV DIWHU DFFHSWLQJ WKH LQFRQWHVWDELOLW\FHUWLÀFDWHIRUWKHWUDGHPDUNRQWKHZRUGV '\NHVRQ%LNHVWKH372UHMHFWHG'\NHVRQ%LNHV·QHZ application to register a trademark in its logo on the EDVLVRIWKRVHVDPHZRUGV·)+2IÀFH$FWLRQ $XJ 7KDWVKRXOGQRWKDYHEHHQDFRQWURYHUVLDORU GLIÀFXOWUHTXHVWVLQFHDPDUNOLPLWHGWRZRUGVSOXVD GHVLJQLVQDUURZHUWKDQWKHDOUHDG\UHJLVWHUHGZRUG mark. Yet despite the PTO’s determination after remand IURPWKH77$%LQWKHSULRUFDVHWKDWWKHZRUGV´'\NHVRQ %LNHVµDUHQRWGLVSDUDJLQJDQGDUHHOLJLEOHIRUWUDGHPDUN UHJLVWUDWLRQDQHZWUDGHPDUNH[DPLQHUGHFLGHGWR UHYHUVH FRXUVH DQG UHMHFW WKH GHVLJQ PDUN DSSOLFDWLRQ VHWWLQJ'\NHVRQ%LNHV·ZRUNEDFNWZHOYH\HDUV7KH372 H[DPLQHUKDVVWRRGE\WKLVUHMHFWLRQHYHQDIWHU'\NHVRQ %LNHVLQFRUSRUDWHGDOOWKHHYLGHQFHIURPWKHSULRUZRUG PDUNDSSOLFDWLRQLQWRWKHUHFRUGDORQJZLWKQHZHYLGHQFH WKDWWKHPDUNLVQRWGLVSDUDJLQJ7KHH[DPLQHUKDVVWRRG E\WKLVUHMHFWLRQGHVSLWHWKHIDFWWKDWQRWRQHOHVELDQ KDVHYHUUDLVHGDQ\REMHFWLRQWRUHJLVWUDWLRQRI´'\NHV on Bikes” during this entire thirteen year trademark UHJLVWUDWLRQHIIRUW7KHH[DPLQHUKDVVXVSHQGHG'\NHV on Bikes’ design mark application pending the outcome
Intellectual Property Review—Updates and Changes from 2016 4–62 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
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of this case, Lee v. Tam. It is a particularly frustrating UHVXOWIRU'\NHVRQ%LNHVZKLFKFRQWLQXHVWRVWUXJJOHWR FRQWUROLWVEUDQGZLWKRXWIHGHUDOWUDGHPDUNUHJLVWUDWLRQ
B. DYKES ON BIKES’ TRADEMARKS ARE POLITICAL SPEECH, NOT COMMERCIAL SPEECH
1. Dykes on Bikes adopted its trademarked name as DIRUPRISROLWLFDOVSHHFK'\NHVRQ%LNHVGRHVQRWH[LVW WRVHOOSURGXFWV,WLVDQRQSURÀWRUJDQL]DWLRQWKDWH[LVWV to communicate a political and social message. Indeed, WKHYDOXHRILWVWUDGHPDUNUHJLVWUDWLRQLVSUHFLVHO\WKDWLW HQDEOHV'\NHVRQ%LNHVWRNHHSWKHXVHRILWVPDUNSROLWLFDO UDWKHUWKDQDOORZLQJLWWREHGLOXWHGZLWKFRPPHUFLDO PHVVDJHV'\NHVRQ%LNHVXVHVLWVWUDGHPDUNVWRSUHYHQW RWKHUVIURPFRPPHUFLDOL]LQJWKHWHUP´'\NHVRQ%LNHVµ DQGWRSUHYHQWRWKHUVIURPDWWULEXWLQJRWKHUV·VSHHFKWR WKH'\NHVRQ%LNHVRUJDQL]DWLRQ
7KLVXVHRIDWUDGHPDUNIRUVHOILGHQWLÀFDWLRQIXUWKHUV a core purpose of the First Amendment. The First $PHQGPHQWGRHVQRWPHUHO\SURWHFWWKHDYDLODELOLW\RI PHVVDJHVIURPYDULRXVYLHZSRLQWV,WDOVRSURWHFWVWKH ULJKWRILQGLYLGXDOVWRDVVRFLDWHWKHLULGHQWLWLHVZLWKWKH PHVVDJHVWKH\VHHNWRFRQYH\$VWKLV&RXUWH[SODLQHGLQ City of Ladue v. Gilleo, 512 U.S. 43 (1994), in the course RIVWULNLQJGRZQDQRUGLQDQFHWKDWSURKLELWHGVLJQVRQ UHVLGHQWLDOSURSHUW\´>S@UHFLVHO\EHFDXVHRIWKHLUORFDWLRQ VXFKVLJQVSURYLGHLQIRUPDWLRQDERXWWKHLGHQWLW\RI the ‘speaker.’ [And] . . . the identity of the speaker is an important component of many attempts to persuade.” Id. DW$WUDGHPDUNDOORZV'\NHVRQ%LNHVWRLGHQWLI\DVD JURXSE\XVLQJODQJXDJHWKDWLQYRNHVWKHPHPEHUV·RZQ
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LGHQWLWLHV7KDWDELOLW\WRDVVRFLDWHLQGLYLGXDOLGHQWLW\ ZLWKJURXSLGHQWLW\DQGFRPPXQLFDWHDPHVVDJHXQLTXH to that group is central to the First Amendment. See Roberts v. United States Jaycees86 ´>7@KH&RXUWKDVUHFRJQL]HGDULJKWWRDVVRFLDWHIRU WKHSXUSRVHRIHQJDJLQJLQWKRVHDFWLYLWLHVSURWHFWHGE\ WKH)LUVW$PHQGPHQW³VSHHFKDVVHPEO\SHWLWLRQIRU WKHUHGUHVVRIJULHYDQFHVDQGWKHH[HUFLVHRIUHOLJLRQ The Constitution guarantees freedom of association of WKLVNLQGDVDQLQGLVSHQVDEOHPHDQVRISUHVHUYLQJRWKHU LQGLYLGXDOOLEHUWLHVµ
6HFWLRQ D UHVWULFWV'\NHVRQ%LNHV·DELOLW\WR VHOILGHQWLI\LQWKHLURZQSROLWLFDOVSHHFKZKLOHSUHYHQWLQJ FRPPHUFLDOH[SORLWDWLRQRIWKHLUEUDQGHGQDPHE\RWKHUV ,WGRHVVRE\SHQDOL]LQJWKHLUPDUNEDVHGRQLWVFRQWHQW DQGOLPLWLQJWKHRUJDQL]DWLRQ·VH[SUHVVLYHDFWLYLW\EDVHG RQWKHRIIHQVHWKDWH[DPLQHUVLPDJLQHDQDXGLHQFH PLJKWH[SHULHQFHIURPWKHLUFKRLFHRIZRUGV7KLVLVDQ LPSHUPLVVLEOHFRQWHQWDQGYLHZSRLQWEDVHGUHVWULFWLRQ on speech. The First Amendment does not permit JRYHUQPHQWWRUHJXODWHRUSXQLVKVSHHFKVROHO\EHFDXVH LWPD\JLYH´VHULRXVRIIHQVHµ7RWKHFRQWUDU\´DSULQFLSDO IXQFWLRQRIIUHHVSHHFKXQGHURXUV\VWHPRIJRYHUQPHQWLV WRLQYLWHGLVSXWHµTexas v. Johnson, 491 U.S. 397, 408–409 (1989). In Forsyth County v. Nationalist Movement, 505 U.S. 123, 134–35 (1992), this Court reiterated that “[l]isteners’ reaction to speech is not a content-neutral EDVLVIRUUHJXODWLRQµDQGH[SODLQHGWKDW´>V@SHHFKFDQQRW EHÀQDQFLDOO\EXUGHQHGDQ\PRUHWKDQLWFDQEHSXQLVKHG RUEDQQHGVLPSO\EHFDXVHLWPLJKWRIIHQGDKRVWLOHPREµ 6HFWLRQ D SODFHVÀQDQFLDOO\EXUGHQVRPHOLPLWDWLRQV RQWKHDELOLW\RI'\NHVRQ%LNHVWRFRQWUROWKHXVHRILWV PDUNDQGSUHVHUYHLWVEUDQGDQGLWVQDPHIRUSROLWLFDO
Intellectual Property Review—Updates and Changes from 2016 4–64 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
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DQGVRFLDOSXUSRVHVZLWKRXWWKHGLOXWLRQWKDWFRPHVIURP XQDXWKRUL]HG FRPPHUFLDO H[SORLWDWLRQ '\NHV RQ %LNHV VHHNVWRXVHLWVPDUNWRHQJDJHLQDYLWDOSXEOLFGHEDWHRYHU WKHYHU\PHDQLQJRIWKHZRUG´G\NHµWROHVELDQVWRGD\
7KH&RXUWVKRXOGQRWDOORZWKHJRYHUQPHQWWR MXVWLI\ VXFK YLHZSRLQW DQG FRQWHQWEDVHG UHVWULFWLRQV RQWKHIDOVHSUHPLVHWKDWDOOWUDGHPDUNXVHLVH[FOXVLYHO\ FRPPHUFLDOLQQDWXUH:HUHFRJQL]HWKDWRWKHUWUDGHPDUN RZQHUVVXFKDVWKH:DVKLQJWRQ5HGVNLQVPD\XVH FRQWURYHUVLDOWUDGHPDUNVWKDWDUHQRWVHOIUHIHUHQWLDOIRU WKHPRUHWUDGLWLRQDOJRDORIEUDQGLQJDQGVHOOLQJJRRGV DQGVHUYLFHVIRUSURÀWUDWKHUWKDQHQJDJLQJLQSROLWLFDO VSHHFKDQGVRFLDODFWLYLVP:HH[SUHVVQRRSLQLRQRQ the constitutionality of regulating purely commercial speech, compare Carey v. Population Services Int’l, 86 ´$WOHDVWZKHUHREVFHQLW\LV QRWLQYROYHGZHKDYHFRQVLVWHQWO\KHOGWKDWWKHIDFWWKDW SURWHFWHG>FRPPHUFLDO@VSHHFKPD\EHRIIHQVLYHWRVRPH GRHVQRWMXVWLI\LWVVXSSUHVVLRQµ with Board of Trustees of State University of New York v. Fox 86 XSKROGLQJUXOHDWVWDWHXQLYHUVLW\WKDWSURKLELWV ´7XSSHUZDUHSDUWLHVµLQRUGHUWRSURPRWH´DQHGXFDWLRQDO rather than commercial, atmosphere on SUNY’s FDPSXVHVµ RUZKHWKHUWKHPDQQHULQZKLFKWKH5HGVNLQV use their mark constitutes commercial speech.2 But
2. 1RUGRZHHQGRUVHWKHXVHRIWKHWHUP´UHGVNLQVµIRUD IRRWEDOOWHDP8QOLNH7KH6ODQWVDQG'\NHVRQ%LNHVERWKRIZKRP KDYHFKRVHQWRUHFODLPVHOIUHIHUHQWLDOWHUPVDVWUDGHPDUNVIRUWKH EHQHÀWRIWKHJURXSVWKRVHWHUPVUHIHUWRWKH:DVKLQJWRQ5HGVNLQV KDYHFKRVHQDWHUPWKDWLVXQUHODWHGWRWKHSHRSOHZKRLGHQWLI\DV PHPEHUVRIWKHIRRWEDOOWHDPDQGLVFRPPRQO\XQGHUVWRRGWREH DVOXUZKLFKPHPEHUVRIWKHLGHQWLÀHGJURXSKDYHQRWUHFODLPHG :KDWHYHUWKHFRQVWLWXWLRQDOLW\RIWKH372·VWUHDWPHQWRIWKH Redskins mark, the team’s use of that name is immoral and Dykes RQ%LNHVHQFRXUDJHVWKH:DVKLQJWRQ5HGVNLQVWRJLYHXSWKHLU trademarked name as a matter of respect and decency.
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Section 1052(a) restrains more than commercial speech. $VDSSOLHGWR'\NHVRQ%LNHVDQGVLPLODURUJDQL]DWLRQV WKHODZEXUGHQVSROLWLFDOVSHHFKDQGFDQQRWEHMXVWLÀHG under the lesser scrutiny this Court has sometimes applied in a commercial setting.
$Q\UXOHJRYHUQLQJZKDWWKH372FDQRUFDQQRW UHJLVWHUDVDWUDGHPDUNPXVWDFFRXQWIRUWKRVHZKRXVH their trademarks for political speech. The fact that some WUDGHPDUNRZQHUVPD\XVHWKHLUPDUNVIRUH[FOXVLYHO\ commercial purposes cannot change the fact that Section D UHVWULFWVDQGEXUGHQVWKRVHHQJDJHGLQSROLWLFDO VSHHFKDVZHOO
C. THE STANDARDLESS DISCRETION IN SECTION 1052(A)’S SPEECH LICENSING REQUIREMENT LEADS TO ARBITRARY APPLICATIONS
:KHQRQH372H[DPLQHUDSSURYHVDWUDGHPDUN DSSOLFDWLRQIRUDSKUDVHDQGDQRWKHUH[DPLQHUUHMHFWV DQDSSOLFDWLRQIRUXVLQJWKHH[DFWVDPHSKUDVHLWLV FOHDUWKDW´WKHSHDFHIXOHQMR\PHQWRIIUHHGRPVZKLFK the Constitution guarantees [is] contingent upon the XQFRQWUROOHGZLOORID>JRYHUQPHQW@RIÀFLDOµDVWKLV&RXUW KDVSURKLELWHGRQQXPHURXVRFFDVLRQVShuttlesworth v. Birmingham 86 TXRWLQJStaub v. City of Baxley86 see e.g., City of Lakewood v. Plain Dealer Publishing Co.86 ´>7KHJRYHUQPHQW@PD\QRWFRQGLWLRQWKDW VSHHFKRQREWDLQLQJDOLFHQVHRUSHUPLWIURPDJRYHUQPHQW RIÀFLDOLQWKDWRIÀFLDO·VERXQGOHVVGLVFUHWLRQµ City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410, 423 n.19 (1993).
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2QLWVIDFH6HFWLRQ D GRHVQRWSURYLGHWKH ´QDUURZREMHFWLYHDQGGHÀQLWHVWDQGDUGVWRJXLGHWKH OLFHQVLQJµWKDWWKH&RQVWLWXWLRQUHTXLUHVIRUDVSHHFK licensing scheme. Shuttlesworth, 394 U.S. at 151. It SURKLELWV´GLVSDUDJLQJµWUDGHPDUNVEXWZKHWKHUD ZRUGLVGLVSDUDJLQJGHSHQGVKHDYLO\RQWKHVSHDNHUWKH OLVWHQHUDQGWKHFRQWH[W7KHGLIIHUHQFHFRXOGHYHQEHDV VXEWOHDVDGLIIHUHQFHLQWRQHRIYRLFH´'LVSDUDJHPHQWµ E\LWVYHU\QDWXUHLVEDVHGRQWKHVSHDNHU·VVXEMHFWLYH LQWHQW'HSHQGLQJRQWKHFRQWH[WDQGWKHVSHDNHUWKH XVHRIWKHWHUP´G\NHµFDQEHHLWKHUDQDFWRIVHOI LGHQWLÀFDWLRQDQGDFODLPRISULGHLQJURXSPHPEHUVKLS or a slur intended to hurt or silence a minority. To tell WKHGLIIHUHQFHDJRYHUQPHQWEXUHDXFUDWPXVWHQJDJHLQ YLHZSRLQWGLVFULPLQDWLRQGHFLGLQJZKDWWKHWHUPPHDQV WRWKHSHUVRQGRLQJWKHVSHDNLQJDQGWKHLUH[SUHVVLYH purpose. This is precisely the kind of uncertain standard WKLV&RXUWKDVUHMHFWHGLQWKHSDVW)RULQVWDQFHLQ ShuttlesworthWKLV&RXUWVWUXFNGRZQDQRUGLQDQFHJLYLQJ WKH&LW\&RPPLVVLRQWKHSRZHUWROLFHQVHSDUDGHVRU GHPRQVWUDWLRQVJXLGHGE\DPRQJRWKHUIDFWRUV´GHFHQF\ good order, [and] morals.” Id. at 150. The situation is no GLIIHUHQWKHUH7KHJRYHUQPHQWFDQQRWJLYHLQGLYLGXDO FLYLOVHUYDQWV D&LW\&RPPLVVLRQRUWKH372 QHDUO\ XQIHWWHUHGGLVFUHWLRQWRZLWKKROGDJRYHUQPHQWEHQHÀW D SDUDGHOLFHQVHRUWUDGHPDUNUHJLVWUDWLRQ EDVHGRQYDJXH moral standards (“decency, good order, [and] morals” or ´LPPRUDOVFDQGDORXVPDWWHU RUPDWWHUZKLFKPD\ disparage”). Compare id. with 35 U.S.C. § 1052(a) and 70(3 E L 2FW
7KHDSSOLFDWLRQRI6HFWLRQ D LQSUDFWLFHFRQÀUPV that delegating hundreds or thousands of discretionary IUHHVSHHFKGHFLVLRQVWRLQGLYLGXDOFLYLOVHUYDQWVZRUNLQJ
Intellectual Property Review—Updates and Changes from 2016 4–67 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court
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ZLWKQRFOHDURUREMHFWLYHVWDQGDUGLQHYLWDEO\OHDGVWR DUELWUDU\ DSSOLFDWLRQ DQG LUUHFRQFLODEO\ LQFRQVLVWHQW UHVXOWV7KH372DQDO\]HGWZRDSSOLFDWLRQVIURP'\NHV RQ%LNHVXVLQJWKHH[DFWVDPHSKUDVHDQGIRXQGWKDW phrase disparaging in one application and not in another, HYHQDIWHUWKHVDPHHYLGHQFHZDVSXWEHIRUHLWLQERWK applications.
,QDIWHUIRXU\HDUVRIH[SODQDWLRQVHYLGHQFH DSSHDOVDQGPRWLRQSUDFWLFHWKH372ÀQDOO\DJUHHG that the phrase “Dykes on Bikes” is not disparaging and LVVXHGDIHGHUDOWUDGHPDUNUHJLVWUDWLRQFHUWLÀFDWHIRUWKH '\NHVRQ%LNHV·QDPH,QLWDFFHSWHGDFHUWLÀFDWH RIFRQWLQXLQJXVHDQGLQFRQWHVWDELOLW\·)+1RWLFHRI $FFHSWDQFH 1RY 7KLVZDVDQRWDGLIIHUHQFHLQHYLGHQFHQRURI FKDQJLQJDWWLWXGHVRYHUWLPH5DWKHUWKHGLIIHUHQFH LVDWWULEXWDEOHPHUHO\WRWKHFDSULFHRIWKHGLIIHUHQW H[DPLQHUVFRQVLGHULQJWKHDSSOLFDWLRQV 7KLVDORQHVKRXOGEHVXIILFLHQWHYLGHQFHWKDW Section 1052(a) confers unconstitutionally standardless GLVFUHWLRQRQ372H[DPLQHUV%XWLWJHWVZRUVHLQOLJKW RIWKH7UDGHPDUN0DQXDORI([DPLQLQJ3URFHGXUH ZKLFKGHÀQHVDGLVSDUDJLQJPDUNDVRQHWKDW´PD\µEH FRQVLGHUHGGLVSDUDJLQJWR´DVXEVWDQWLDOFRPSRVLWHµRID ´UHIHUHQFHGJURXSµ70(3 E L 2FW :KLOHWKLVVKLIWIURPWKHSHUVSHFWLYHRIWKHVSHDNHUWR Intellectual Property Review—Updates and Changes from 2016 4–68 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court WKHSHUVSHFWLYHRIWKHDXGLHQFHSXUSRUWVWRRIIHUDPRUH QHXWUDOSHUVSHFWLYHLQIDFWLWGRHVQRVXFKWKLQJ7R EHJLQMXGJLQJVSHHFKE\WKHUHDFWLRQRIWKHDXGLHQFHLV LWVHOIDFRQWHQWEDVHGDFWLYLW\Forsyth County, 505 U.S. DW²)XUWKHUWKHODZ·VGHFLVLRQWRFKRRVHRQO\D VXEVHWRIWKHDXGLHQFH³WKHJURXSPHPEHUVWKHWHUP GHVFULEHV³DGGVDGGLWLRQDODPELJXLW\,WLVDPELJXRXVDV WRZKDWJURXSLVWREHFRQVLGHUHG³DOOZRPHQDOOOHVELDQV RUDOOOHVELDQPRWRUF\FOHHQWKXVLDVWV":KDWFRQVWLWXWHV ´DVXEVWDQWLDOFRPSRVLWHµRIDJURXSLVDOVRDPELJXRXV 0RUHLPSRUWDQWO\KRZLVDQLQGLYLGXDOWUDGHPDUN H[DPLQHUWRGHWHUPLQHZKHWKHUPRVWOHVELDQPRWRUF\FOH HQWKXVLDVWVZRXOGWDNHSULGHLQWKHSKUDVH´'\NHV RQ%LNHVµRUEHRIIHQGHGE\LW"+RZLVDQLQGLYLGXDO WUDGHPDUNH[DPLQHUWRGHWHUPLQHZKHWKHUDQ\RIIHQGHG OHVELDQPRWRUF\FOHHQWKXVLDVWVFRQVWLWXWHD´VXEVWDQWLDOµ RU´LQVXEVWDQWLDOµFRPSRVLWH"'\NHVRQ%LNHVVXEPLWWHG GR]HQVRIGHFODUDWLRQVRQWKLVSRLQWEXWWKHUHVROXWLRQRI its applications still depended on the personal reaction of DQH[DPLQHUZKRDXGLEO\JDVSHGLQVKRFNZKHQ'\NHVRQ %LNHV·ODZ\HUWROGKHUWKDWFRXQVHOLVKHUVHOI´DG\NHµ7KDW H[DPLQHU·VVXSHUYLVRUMXVWLÀHGWKHH[DPLQHU·VGHFLVLRQE\ VWDWLQJWKDWDVHDUFKIRU´YXOJDUµDQG´G\NHµRQ*RRJOH yields many results. The same is true for a search of ´YXOJDUµDQGSUDFWLFDOO\DQ\RWKHUZRUGVXFKDV´VKRHµ\HW that does not transmute “shoe” into something generally YXOJDU RUGLVSDUDJLQJ The open-ended discretion of Section 1052(a) and WKH70(3JXLGHOLQHVGRHVQRWVWRSZLWKWKH372·V UHJLVWUDWLRQGHFLVLRQ7KHXQFHUWDLQW\H[WHQGVLQGHÀQLWHO\ EHFDXVHDQ\SHUVRQFDQDWWHPSWWRFDQFHODWUDGHPDUN³ HYHQDQLQFRQWHVWDEOHPDUN³DWDQ\WLPHE\FODLPLQJLW is disparaging or scandalous. See 86& Intellectual Property Review—Updates and Changes from 2016 4–69 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court 17 6HFWLRQ D LVDQH[FHSWLRQWRWKHQRUPDOUXOHWKDW DWUDGHPDUNFDQQRWEHFKDOOHQJHGDIWHUÀYH\HDUVRI registration and continuous use. Id. Dykes on Bikes thus operates under the constant specter of some person asking WRFDQFHOLWVPDUNVEHFDXVHKHRUVKHEHOLHYHVWKHPWR EHGLVSDUDJLQJ$QGLQGHHGLWKDVDOUHDG\IDFHGVXFK FKDOOHQJHV$OWKRXJK'\NHVRQ%LNHVKDVLQYHVWHGLQDQG FXOWLYDWHGLWVWUDGHPDUNHGQDPHIRUPRUHWKDQ\HDUV LWKDVQRLGHDKRZWKH372ZLOOUXOHLIVRPHRQHGHFLGHV to challenge its mark in the PTO, particularly in light of the inconsistent rulings that the PTO has already issued RQWKHPDUN7KHVXUYLYDORI'\NHVRQ%LNHV·WUDGHPDUN GHSHQGVHQWLUHO\RQWKHSHUVRQDOZKLPRQZKLFKHYHU372 H[DPLQHULVDVVLJQHGWRWKHFDVHLIVRPHRQHGHFLGHVWR challenge the trademark. 7KH)HGHUDO&LUFXLWGHFLVLRQQRZRQDSSHDOKHOG that the PTO’s inconsistent application of Section 1052(a) FKLOOVVSHHFKEHFDXVHSHRSOHDUHOHVVOLNHO\WRFKRRVHD WUDGHPDUNLILWLVXQFHUWDLQZKHWKHUWKHJRYHUQPHQWZLOO EHZLOOLQJWRSURWHFWLWSee In re Tam, 808 F.3d at 1342 n.7. In particular, it points out that the PTO denied trademark registration for HAVE YOU HEARD SATAN IS A 5(38%/,&$1EXWJUDQWHGWKHWUDGHPDUNDSSOLFDWLRQ IRU7+('(9,/,6$'(02&5$7VWDWLQJ´DOOZH QHHGVD\DERXWWKHXQFHUWDLQW\KHUHKRZHYHULVWKDWLW FRQWULEXWHVVLJQLÀFDQWO\WRWKHFKLOOLQJHIIHFWRQVSHHFKµ IdDW7KDWSDUWLFXODUH[DPSOHDOVRXQGHUVFRUHV WKHGDQJHURIWKH´SRWHQWLDOIRULQYLGLRXVGLVFULPLQDWLRQ RIGLVIDYRUHGVXEMHFWVµZKHUHDQLQGLYLGXDOEXUHDXFUDW PDNHVGHFLVLRQVDERXWZKRVHVSHHFKWKHJRYHUQPHQW IDYRUVDQGZKRVHVSHHFKLWGRHVQRWCity of Cincinnati, 507 U.S. at 423 n.19. Intellectual Property Review—Updates and Changes from 2016 4–70 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court 18 Judge O’Malley and Judge Wallach’s concurrence in In re Tam HFKRHVWKHPDMRULW\·VFRQFHUQEXW H[SOLFLWO\VWDWHVWKDW6HFWLRQ D VKRXOGEHKHOG XQFRQVWLWXWLRQDOO\YDJXHIn re Tam)GDW ² 7KLV&RXUW·VDGPRQLVKPHQWVUHJDUGLQJYDJXHO\GUDIWHG VSHHFKUHVWULFWLRQVXQGHUVFRUHWKHGDQJHUVRIDOORZLQJ LQGLYLGXDO372H[DPLQHUVVWDQGDUGOHVVGLVFUHWLRQ7KH 372·VDUELWUDU\DSSOLFDWLRQRI6HFWLRQ D GRHVQRW ´JLYHWKHSHUVRQRIRUGLQDU\LQWHOOLJHQFHDUHDVRQDEOH RSSRUWXQLW\WRNQRZZKDWLVSURKLELWHGVRWKDWKHPD\ act accordingly.” Grayned v. City of Rockford, 408 U.S. 9DJXHQHVVLQJRYHUQPHQWUHJXODWLRQ FDQVWDQGLQJDORQHEHDFRQVWLWXWLRQDOSUREOHPNat’l Endowment for the Arts v. Finley, 86 (“Under the First and Fifth Amendments, speakers are SURWHFWHGIURPDUELWUDU\DQGGLVFULPLQDWRU\HQIRUFHPHQW RIYDJXHVWDQGDUGVµ 7KH&RQVWLWXWLRQWROHUDWHVHYHQOHVV YDJXHQHVVZKHUHDVKHUH´WKHODZLQWHUIHUHVZLWKWKH right of free speech.” See Village of Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455 U.S. 489, 498 (1982). 1RUHDVRQDEOHSHUVRQFDQGHWHUPLQHRUSUHGLFWZKDW VSHHFK6HFWLRQ D ZLOODOORZDQGZKDWVSHHFKLWZLOO SURKLELWGrayned, 408 U.S. at 108. As a result, it is likely WKDWVSHDNHUVZLOOVHOIFHQVRUDQGDYRLGWUDGHPDUNVWKH\ ZRUU\WKH372PLJKWFDQFHOHYHQLIWKH\LQYHVWWLPHDQG JRRGZLOOIRUPDQ\\HDUVSee In re Tam, 808 F.3d 1341–43. This Court has held that the First and Fifth $PHQGPHQWVSURWHFWSHRSOHIURPWKLVNLQGRIYDJXH DQGLQFRQVLVWHQWODZZKHQLWUHVWULFWVVSHHFKSee Finley, 524 U.S. at 588 (“Under the First and Fifth $PHQGPHQWVVSHDNHUVDUHSURWHFWHGIURPDUELWUDU\ DQGGLVFULPLQDWRU\HQIRUFHPHQWRIYDJXHVWDQGDUGVµ $VGLVFXVVHGIXUWKHUEHORZWKHVDPHSURWHFWLRQVVKRXOG Intellectual Property Review—Updates and Changes from 2016 4–71 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court 19 DSSO\ZKHQVXFKDYDJXHDQGLQFRQVLVWHQWODZZLWKKROGVD JRYHUQPHQWEHQHÀWRQWKHEDVLVRIWKHFRQWHQWRIVSHHFK See Speiser v. Randall, 357 U.S. 513, 518 (1958) (“To deny DQH[HPSWLRQWRFODLPDQWVZKRHQJDJHLQFHUWDLQIRUPV RIVSHHFKLVLQHIIHFWWRSHQDOL]HWKHPIRUVXFKVSHHFKµ Perry v. Sindermann, 408 U.S. 593, 597 (1972) (“>(@YHQ WKRXJKDSHUVRQKDVQR¶ULJKW·WRDYDOXDEOHJRYHUQPHQWDO EHQHÀWDQGHYHQWKRXJKWKHJRYHUQPHQWPD\GHQ\KLP WKHEHQHÀWIRUDQ\QXPEHURIUHDVRQVWKHUHDUHVRPH UHDVRQVXSRQZKLFKWKHJRYHUQPHQWPD\QRWUHO\,WPD\ QRWGHQ\DEHQHÀWWRDSHUVRQRQDEDVLVWKDWLQIULQJHV KLVFRQVWLWXWLRQDOO\SURWHFWHGLQWHUHVWV³HVSHFLDOO\KLV LQWHUHVWLQIUHHGRPRIVSHHFK)RULIWKHJRYHUQPHQWFRXOG GHQ\DEHQHÀWWRDSHUVRQEHFDXVHRIKLVFRQVWLWXWLRQDOO\ SURWHFWHGVSHHFKRUDVVRFLDWLRQVKLVH[HUFLVHRIWKRVH IUHHGRPVZRXOGLQHIIHFWEHSHQDOL]HGDQGLQKLELWHG7KLV ZRXOGDOORZWKHJRYHUQPHQWWR¶SURGXFHDUHVXOWZKLFK LW could not command directly.’”). 7KHH[SHULHQFHRI'\NHVRQ%LNHVZLWK6HFWLRQ 1052(a) starkly illustrates the reasons for this Court’s ORQJVWDQGLQJVNHSWLFLVPRYHUSRRUO\GUDIWHGJRYHUQPHQW licensing schemes for speech, particularly those that WDUJHWGLVIDYRUHGRUXQSRSXODUPHVVDJHV:KHQD OLFHQVLQJVFKHPHXVHVWHUPVVRYDJXHWKDWDSSOLFDQWVZLOO EHXQDEOHWRSUHGLFWZKDWFRQWHQWZLOORUZLOOQRWSDVV PXVWHUWKHWKUHDWWR)LUVW$PHQGPHQWYDOXHVLVDFXWH D. THE IMPORTANCE OF TRADEMARK REGISTRATION )HGHUDOWUDGHPDUNUHJLVWUDWLRQSURYLGHVVXEVWDQWLDO EHQHILWVWKDWDUHSDUWLFXODUO\LPSRUWDQWWRDVPDOO SROLWLFDOO\IRFXVHGQRQSURÀWRUJDQL]DWLRQVXFKDV'\NHV Intellectual Property Review—Updates and Changes from 2016 4–72 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court 20 RQ%LNHVZKRVHUHVRXUFHVDUHOLPLWHGDQGWKHUHIRUHPXVW SLFNDQGFKRRVHWKHOHJDOEDWWOHVLWFDQDIIRUGWRÀJKW 6RPHRIWKHVHEHQHÀWVRIUHJLVWUDWLRQDUHGHÀQHGLQWKH VWDWXWH)RULQVWDQFHWKH/DQKDP$FWH[SUHVVO\SURYLGHV WKDWWUDGHPDUNUHJLVWUDWLRQFRPHVZLWKDSUHVXPSWLRQ RI YDOLGLW\ QDWLRQZLGH SULRULW\ LQFRQWHVWDELOLW\ SURRI WKDWWKHPDUNKDVVHFRQGDU\PHDQLQJDQGFRQVWUXFWLYH QRWLFHWRZRXOGEHLQIULQJHUV7KHVWDWXWHDOVRDOORZVD trademark holder to seek additional remedies against infringers. 2WKHUEHQHÀWVDUHPRUHSUDFWLFDOWKDQOHJDO3RWHQWLDO XVHUVZLOORIWHQFKHFNWKH3ULQFLSDO5HJLVWHUDWWKH372 DQGZLOODYRLGXVLQJDWUDGHPDUNHGWHUPZKHQWKH\VHH LW·VUHJLVWHUHGEXWWKH\DUHPXFKOHVVOLNHO\WRVHDUFKIRU RUGLVFRYHUZKRKDVFRPPRQODZWUDGHPDUNULJKWVLQ SDUWEHFDXVHLWLVLPSRVVLEOHWRNQRZIURPDVHDUFKZKDW SDUWLHVPLJKWKDYHRUFODLPWRKDYHFRPPRQODZULJKWV in a particular trademark. 2XUH[SHULHQFHLQVHHNLQJWRHQIRUFHRXUPDUNEHDUV WKLVRXW,WKDVRIWHQSURYHGVXIÀFLHQWIRU'\NHVRQ%LNHV WRSRLQWWRLWVIHGHUDOUHJLVWUDWLRQIRULWVZRUGPDUNWR SHUVXDGHREYLRXVLQIULQJHUVWRFHDVHWKHLUXQODZIXO DFWLYLW\%XWPHUHO\DVVHUWLQJWKHULJKWWRFRPPRQODZ SURWHFWLRQRIWHQGRHVQRWKDYHWKHVDPHHIIHFWDV'\NHV RQ%LNHVOHDUQHGZKHQWKH372UHIXVHGWRUHJLVWHULWV logo trademark. In fact, many online companies like =D]]OHFRPZKLFKVHOOVXVHUGHVLJQHGWVKLUWVDQGRWKHU SURGXFWVRQOLQHUHIXVHWRKRQRUWDNHGRZQQRWLFHVDW DOOZLWKRXWSURRIRIDIHGHUDOWUDGHPDUNUHJLVWUDWLRQ 9LUWXDOO\DOOZHEVLWHVVXFKDV=D]]OHFRPH%D\(WV\ &DIH3UHVVDQG)DFHERRNUHTXHVWWKDWDWUDGHPDUN Intellectual Property Review—Updates and Changes from 2016 4–73 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court 21 RZQHULQFOXGHDWUDGHPDUNUHJLVWUDWLRQQXPEHUZKHQ UHTXHVWLQJWDNHGRZQRILQIULQJLQJLWHPVDQGZLWKRXW RQHWKHWDNHGRZQPD\UHTXLUHPRUHWLPHDQGPD\ QRWEHVXFFHVVIXODWDOO2WKHURQOLQHVLWHVVXFKDV 5HYHUE1DWLRQFRPUHTXLUHDWUDGHPDUNUHJLVWUDWLRQLQ RUGHUWRDFFHSWDWDNHGRZQQRWLFH7UDGHPDUNUHJLVWUDWLRQ LVDOVRUHTXLUHGWRFRPEDWF\EHUVTXDWWLQJDQGWRSURWHFW WKHPDUNIURPUHJLVWUDWLRQXQGHUQHZO\LVVXHGGRPDLQ H[WHQVLRQV)RUH[DPSOH*R'DGG\RQHRIWKHPDLQ GRPDLQQDPHUHJLVWUDUVLQWKH86UHTXLUHVWKDWD WUDGHPDUNRZQHUKDYHDYDOLGIHGHUDOUHJLVWUDWLRQRQWKH SULQFLSDOUHJLVWHULQRUGHUWRSUHYHQWDQRWKHUGRPDLQ QDPHUHJLVWUDQWIURPXVLQJWKHRZQHU·VWUDGHPDUNLQD GRPDLQQDPH:KHQ,&05HJLVWU\ZRUNLQJZLWK,&$11 ZKLFKRYHUVHHVWKHV\VWHPRIGRPDLQQDPHH[WHQVLRQV VXFKDVFRPQHWDQGJRY RIIHUHGDFRQWURYHUVLDOQHZ LQWHUQHWGRPDLQH[WHQVLRQ[[[WKHRQO\ZD\'\NHVRQ %LNHVZDVDEOHWRSUHYHQWKDYLQJLWVWUDGHPDUNRIIHUHG WRWKHSXEOLFZLWKD[[[GRPDLQH[WHQVLRQZDVEHFDXVH they held a federal registration and could opt out during the “Sunrise B” period. Without the federal registration, WKHLUDSSOLFDWLRQWRRSWRXWZRXOGKDYHEHHQUHMHFWHG 5HJLVWUDWLRQE\RWKHUVRI'\NHVRQ%LNHVXVLQJD[[[ GRPDLQQDPHZRXOGKDYHVXEVWDQWLDOO\KDUPHGWKH SROLWLFDOVSHHFKDQGSXEOLFLPSUHVVLRQRI'\NHVRQ%LNHV DQGFRPPRQODZUHPHGLHVZRXOGKDYHEHHQWRROLWWOH WRRODWHWRSUHYHQWVXFKKDUP7KXVODFNRIWUDGHPDUN UHJLVWUDWLRQDFWXDOO\LPSHGHVDWUDGHPDUNRZQHU·VDELOLW\ to enforce its mark in the digital market place and limits LWVDELOLW\WRWDNHDGYDQWDJHRIWKHVLPSOHLQH[SHQVLYH WDNHGRZQQRWLFHPHWKRGVPRVWLQWHUQHWVHUYLFHSURYLGHUV KDYHPDGHDYDLODEOH Dykes on Bikes relies on trademark registration to Intellectual Property Review—Updates and Changes from 2016 4–74 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court 22 HQVXUHWKDWWKHSXEOLFDVVRFLDWHV'\NHVRQ%LNHVRQO\ZLWK LWVRZQVSHHFKDQGQRWZLWKRWKHUV·VSHHFKRUXQOLFHQVHG DWWHPSWVWRFRPPHUFLDOL]HWKHPDUN:LWKRXWWKHP '\NHVRQ%LNHVFDQQRWFRQWUROLWVRZQSXEOLFSUHVHQFH RUGLJQLW\7KHLQDELOLW\WRÀQDOO\UHVROYHLWV VRIDU thirteen-year effort to register its marks has imposed UHDOFRVWVDQGEXUGHQVRQ'\NHVRQ%LNHVWKDWWKHSRVVLEOH H[LVWHQFHRIDFRPPRQODZWUDGHPDUNFDXVHRIDFWLRQGRHV QRWUHGUHVV7KHGLIIHUHQFHEHWZHHQKDYLQJDIHGHUDO WUDGHPDUNUHJLVWUDWLRQDQGQRWKDYLQJRQHKDVKDGD VWULNLQJGLIIHUHQFHRQ'\NHVRQ%LNHV·DELOLW\WRFRQWURO ZKDWVSHHFKWKHSXEOLFDVVRFLDWHVZLWKWKHRIÀFLDO'\NHV RQ%LNHVRUJDQL]DWLRQ Trademark registration, then, is not merely a JRYHUQPHQWVXEVLG\ODUJHVVHWKDWWKHJRYHUQPHQWFDQ JUDQWRUZLWKKROGRQDZKLP5HJLVWUDWLRQLVDVDSUDFWLFDO matter, an integral part of the Lanham Act scheme for protecting trademarks. Denying registration imposes a VXEVWDQWLDOEXUGHQRQVPDOORUJDQL]DWLRQVOLNH'\NHVRQ %LNHV&RQJUHVVFDQQRWLPSRVHWKDWEXUGHQEHFDXVHLW GLVDJUHHVZLWK'\NHVRQ%LNHV·FKRLFHRIQDPHSorrell v. IMS Health Inc.86 ´7KH)LUVW $PHQGPHQWUHTXLUHVKHLJKWHQHGVFUXWLQ\ZKHQHYHUWKH JRYHUQPHQWFUHDWHV¶DUHJXODWLRQRIVSHHFKEHFDXVHRI GLVDJUHHPHQWZLWKWKHPHVVDJHLWFRQYH\V·µ FLWDWLRQ RPLWWHG Reed v. Town of Gilbert, 135 S. Ct. 2218, 2227 ´*RYHUQPHQWUHJXODWLRQRIVSHHFKLVFRQWHQWEDVHG LIDODZDSSOLHVWRSDUWLFXODUVSHHFKEHFDXVHRIWKHWRSLF GLVFXVVHGRUWKHLGHDRUPHVVDJHH[SUHVVHGµ ,WLVQRDQVZHUWKDWWKH/DQKDP$FWZLWKKROGVEHQHÀWV UDWKHUWKDQLPSRVHVUHVWULFWLRQV7KDWZRXOGHOHYDWH IRUPRYHUVXEVWDQFH,WZRXOGPDNHWKHFRQVWLWXWLRQDOLW\ Intellectual Property Review—Updates and Changes from 2016 4–75 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court 23 of the statute turn on Congress’ chosen phrasing rather than the statute’s effect on speech. There is no difference EHWZHHQ´GHQ\>LQJ@DEHQHILWWRDSHUVRQEHFDXVHRI his constitutionally protected speech or associations” DQG´SHQDOL]>LQJ@DQGLQKLELW>LQJ@µWKHH[HUFLVHRIIUHH speech. Perry86DW 7KLV&RXUWKDVUHMHFWHG WKLVDUJXPHQWKROGLQJWKDW´HYHQWKRXJKDSHUVRQKDV QR¶ULJKW·WRDYDOXDEOHJRYHUQPHQWDOEHQHÀWDQGHYHQ WKRXJKWKHJRYHUQPHQWPD\GHQ\KLPWKHEHQHÀWIRUDQ\ QXPEHURIUHDVRQVWKHUHDUHVRPHUHDVRQVXSRQZKLFK WKHJRYHUQPHQWPD\QRWUHO\,WPD\QRWGHQ\DEHQHÀW WRDSHUVRQRQDEDVLVWKDWLQIULQJHVKLVFRQVWLWXWLRQDOO\ SURWHFWHGLQWHUHVWV³HVSHFLDOO\KLVLQWHUHVWLQIUHHGRP of speech.” Id. DW see also Speiser, 357 U.S. at ´7RGHQ\DQH[HPSWLRQWRFODLPDQWVZKRHQJDJHLQ FHUWDLQIRUPVRIVSHHFKLVLQHIIHFWWRSHQDOL]HWKHPIRU VXFKVSHHFKµ Sorrell86DW ´/DZPDNHUV PD\QRPRUHVLOHQFHXQZDQWHGVSHHFKE\EXUGHQLQJ LWVXWWHUDQFHWKDQE\FHQVRULQJLWVFRQWHQWµ id. at 580 KROGLQJLPSHUPLVVLEOHDVWDWHODZWKDW´EXUGHQHGDIRUP RISURWHFWHGH[SUHVVLRQµZKLOHOHDYLQJ´XQEXUGHQHG WKRVHVSHDNHUVZKRVHPHVVDJHVDUHLQDFFRUGZLWKLWV RZQYLHZVµ &RQJUHVVKDYLQJSURYLGHGLPSRUWDQWULJKWVWRDOO trademark applicants through the registration process, WKLV&RXUWVKRXOGQRWDOORZ&RQJUHVVDQGWKH372WRGHQ\ WKRVHEHQHÀWVWRVHOHFWHGLQGLYLGXDODSSOLFDQWVEHFDXVH RIYLHZSRLQWEDVHGGLVDJUHHPHQWVZLWKWKHLUSDUWLFXODU choice of trademark. Intellectual Property Review—Updates and Changes from 2016 4–76 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court 24 CONCLUSION 7KLV&RXUWVKRXOGÀQGWKDW86& D LV XQFRQVWLWXWLRQDOO\YDJXHDQLPSHUPLVVLEOHYLHZSRLQW DQGFRQWHQWEDVHGUHVWULFWLRQRQVSHHFKDQGFRQIHUV XQFRQVWLWXWLRQDOO\VWDQGDUGOHVVGLVFUHWLRQRQLQGLYLGXDO 372H[DPLQHUV 5HVSHFWIXOO\VXEPLWWHG BROOKE OLIVER MARK A. LEMLEY 50 BALMY LAW P.C. Counsel of Record 50 Balmy Alley MICHAEL A. FELDMAN San Francisco, CA 94110 DURIE TANGRI LLP 217 Leidesdorff Street San Francisco, CA 94111 TOBIAS BARRINGTON WOLFF UNIVERSITY OF PENNSYLVANIA [email protected] 3501 Sansom Street Philadelphia, PA 19104 (215) 898-7483 Counsel for Amicus Curiae Intellectual Property Review—Updates and Changes from 2016 4–77 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court Intellectual Property Review—Updates and Changes from 2016 4–78 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Mark: THE SLANTS Goods and Services: Entertainment, namely, live performances by a musical band. U.S. Application Serial Number 77952263 EXPERT REPORT OF RONALD R. BUTTERS, Ph.D. 1. This report is submitted on behalf of the Applicant, Simon Shiao Tam, in support of his application for trademark registration as noted above. I. Assignment 2. I have been asked to analyze the meaning (i.e., the DENOTATIONS and CONNOTATIONS) of the noun phrase, THE SLANTS, in the English language as spoken in the United States today, with particular reference to its possible use as a trademark that names a performing musical band. Of especial interest to the Applicant is the nature of any putative contemporary disparaging meanings and objectionable connotations of THE SLANTS as the term might be applied to some persons of Asian descent. I. Summary of Conclusions 3. The noun slant (said to be a shortening or CLIPPED FORM of the descriptive compound slant-eyed or slanted-eyed) has a history of use a derogatory racial or ethnic epithet referring to those persons of Asian descent whose normal eyes have a genetically determined shape sometimes described by physiologists as a PALPEBRAL SLANT accompanied with a fold of skin known as an EPICANTHAL FOLD. Linguists and rhetoricians call such a use of a word SYNECDOCHE, defined as the use of the name of a part of something to refer to the whole (cf. the SYNECDOCHES all hands on deck and the Intellectual Property Review—Updates and Changes from 2016 4–79 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court power behind the throne). It is a truism that persons against whom a term is by itself applied disparagingly generally find that term offensive. 4. It is arguably the case that slant was never as robust as many such pejorative epithets. However, in any case, the synecdochical use of slant as an abusive term, together with the offensive connotations of the word as understood by Asian Americans, has continued to diminish in the past decade, to the point where slant is at best archaic as a form of disparagement. Indeed, evidence points to the conclusion that persons of Asian descent (even those who exhibit the palpebral/epicanthal feature themselves) today increasingly view slant as a proud informal term of self-reference. I. Qualifications 5. I am a resident of Durham, North Carolina, and Professor Emeritus, Duke University, where I have served since 1967 as a member of the faculty in the Department of English and the Department of Cultural Anthropology. At various times, I have chaired both the English Department and the Linguistics Program. I earned my doctorate in English with a concentration in linguistics from the University of Iowa, Iowa City, where I received advanced training in the study of both linguistics and literature. My professional society memberships include the American Dialect Society, American Name Society, Dictionary Society of North America, Asociación de Lingüística y Filología de América Latina, Linguistic Society of America, Southeastern Conference on Linguistics, International Language and Law Association, and International Association of Forensic Linguists (of which I am currently president). Of particular importance to the current inquiry, I have been a member of the Advisory Board of the New Oxford American Dictionary, published by the Oxford University Press, now in its third edition, and I was Intellectual Property Review—Updates and Changes from 2016 4–80 2 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court a Specialist Subject Consultant in Language (“Vulgar Slang/Homosexual Terms”) for the 2001 and 2005 editions of that work, advising in particular with respect to the usage labels for terms of abuse. A copy of my curriculum vitae, detailing my educational background, professional experience, teaching areas, publications, and testimony record for the past four years is attached hereto as “Exhibit 1.” 6. This report is made based on my professional knowledge and expertise, and on my research using established and accepted scientific linguistic knowledge and methodology. The information that I considered in forming the professional opinions expressed here is referenced as relevant throughout the report (see also the attached “Exhibit 2”). If sworn as a witness, I could testify competently to the matters stated herein. Insofar as I may continue to review additional information, I will be able to supplement, revise, or further explain the opinions set forth in this report. I understand that my duty in providing written reports and giving evidence is to assist the Trademark Board. I am in this case waiving my usual compensation of an hourly rate of $400. In compiling reports such as this one, my compensation is in any case not contingent on the outcome of the proceedings in which it has been solicited. 7. Within linguistics, the greatest portion of my scholarly work and teaching has focused upon contemporary American English and its antecedents, and languages influencing, or influenced by, English in the modern world. As “Exhibit 1” reflects, for more than 40 years I have been active in research and teaching in the field of contemporary English linguistics. I have written many scientific studies that have appeared in respected peer-reviewed linguistics journals and books, and I have given numerous oral presentations of the results of my work, frequently by invitation, before Intellectual Property Review—Updates and Changes from 2016 4–81 3 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court learned societies both in the United States and abroad. I was also the editor of peer- reviewed scientific publications of the American Dialect Society for 25 years, and I have just completed a three-year term as a co-editor of the International Journal of Speech, Language, and Law (staying on, however, as a member of the Editorial Board). 8. In addition to my ongoing academic research interests, I am also self-employed as a consultant and expert in the field of linguistics. In this capacity, I have testified and/or served as an expert witness in cases filed in state and federal trial courts and boards in California, Delaware, the District of Columbia, Florida, Georgia, Illinois, Kansas, Louisiana, Maryland, Massachusetts, Missouri, New York, North Carolina, Ohio, Texas, Virginia, and West Virginia, as well as in proceedings of the United States Patent and Trademark Office’s Trademark Trial and Appeal Board. A list of all cases in which I have testified in court or by deposition in the past four years is appended hereto in “Exhibit 1.” III. Theory and Methodology 9. Linguistics is the scientific study of human language in all its various aspects— historical, cultural, social, and psychological—as exhibited in the spoken and written forms of the languages and dialects of the world. It encompasses a number of (often intersecting) scientific subfields, including phonology, the study of the sound structure of languages graphemics, the study of writing systems (including alphabetic spelling) morphology, the study of word structure syntax, the study of the rules for organizing words into phrases and sentences lexicology, the study of word meaning Intellectual Property Review—Updates and Changes from 2016 4–82 4 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court lexicography, the science of dictionary making semantics, the study of word and sentence meanings discourse analysis, the study of linguistic units larger than the sentence, with particular reference to the importance of such units in the construction of meaning for speaker and hearer, writer and reader. pragmatics, the study of how such meaning is affected by nonlinguistic contexts semiotics, the study of extralinguistic and paralinguistic meaning systems that members of a culture assign to signs (gestures, colors, shapes, visual patterns, and icons) psycholinguistics, the psychology of language, that is, the study of language that focuses on the linguistic abilities of the individual sociolinguistics, the sociology of language, that is, the study of language that focuses on the linguistic behavior of groups (sometimes further subdivided into social and regional dialectology) historical linguistics, the study of the data and mechanisms of language change. In short, linguists study the facts and principles that underlie human languages and their communicative functions. 10. The science of the linguist and lexicographer is largely inductive rather than experimental. Linguists assemble the relevant data and, based upon an understanding of fundamental linguistic principles, form conclusions about the structure and meaning of the data (which may then be subject to verification by comparing the results to the results found for parallel linguistic data). In forming my conclusions in the present inquiry, I have drawn in particular upon my knowledge of historical linguistics, lexicography, lexicology, semantics, pragmatics, and discourse analysis. In methodology, I began with Intellectual Property Review—Updates and Changes from 2016 4–83 5 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court an examination of the work of previous scholars as represented in dictionaries and academic writings. I then examined data of actual use of the epithet slant in American English today, with particular reference to how the term is used among Americans of Asian ancestry. IV. The Meaning of SLANT as Indicted by Scientifically Compiled Dictionaries and Other Works of Lexicographical Scholarship 11. The entry for slant in the first edition (2001) of the New Oxford American Dictionary (NOAD1), reads as follows in its entirety (pronunciations and etymology have been deleted; underlining was added to highlight the most relevant portions): slant ▶v. [no obj., with adverbial of direction] slope or lean in a particular direction; diverge from a vertical or horizontal line: a plowed field slanted up to the skyline | [as adj.] (slanting) the slanting beams of the roof. ❚ (esp. of light or shadow) fall in an oblique direction: the early sun slanted across the mountains. ❚ [trans.] cause (something) to lean or slope in such a way: slant your skis as you turn to send up a curtain of water. ❚ [trans.] [often as adj.] (slanted) present or view (information) from a particular angle, esp. in a biased or unfair way: slanted news coverage. ▶n. 1 [in sing.] a sloping position: the hedge grew at a slant | cut flower stems on the slant. 2 a particular point of view from which something is seen or presented: a new slant on science. 3 DEROGATORY a contemptuous term for an East Asian or Southeast Asian person. ▶adj. [attrib.] sloping: slant pockets. The second (2005) edition of the New Oxford American Dictionary (NOAD2) reads almost exactly the same, except for the lead-in to part 3 of the ▶n. definition, which was revised as follows: 3 informal, offensive a contemptuous term for an East Asian or Southeast Asian person. Intellectual Property Review—Updates and Changes from 2016 4–84 6 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court The editors of the third (2010) edition of the New Oxford American Dictionary (NOAD3) have further revised the definition of slant, so that it now reads in its entirety as follows: ▶v. slope or lean in a particular direction; diverge or cause to diverge from the vertical or horizontal: [no obj.] a plowed field slanted up the skyline | [with obj.] slant your skis as you turn to send up a curtain of water. ■ (esp. of light or shadow) fall in an oblique direction: the early sun slanted across the mountains. ■[with obj.] (often as adj. slanted) present or view (information) from a particular angle, esp. in a biased or unfair way: slanted news coverage. ▶n. 1. [in sing.] a sloping position: the hedge grew at a slant | cut flower stems on the slant. 2. a particular point of view from which something is seen or presented: a new slant on science. ▶adj. [attrib.] sloping: slant pockets. Note that the usage label found in definition 3 of NOAD1 became somewhat ameliorated in the usage label of NOAD2, “DEROGATORY” and “contemptuous” becoming “informal, offensive” and “contemptuous.” Even more significantly, the entire epithetic definition and its pejorative usage labels were completely dropped from the dictionary. 12. The series of changes in the NOAD definition cannot be explained as an alteration in policy; NOAD3 still continues to generate usage labels bearing on the issue of ethnic slurs. See, for example, the NOAD3 entry for wop: wop ▶n informal offensive a contemptuous term for an Italian or other southern European. Rather, such changes in the definition of slant indicate that, in the opinion of the editors of NOAD3, the usage labels indicated in the 2005 edition no longer accurately portrayed the status of slant in 2010. Rather, it appears that the NOAD editors judged slant to have Intellectual Property Review—Updates and Changes from 2016 4–85 7 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court been ameliorated to the extent that it has fallen into disuse as a pejorative racial epithet and is no longer considered particularly offensive to Asian-Americans themselves. 13. One might legitimately ask if a term could fall into disuse and/or change its connotations in only a decade. In fact, it appears that the NOAD2 editors sensed some amelioration of slant when they softened the definition from what appeared in NOAD1. In addition, dictionary makers tend to depend heavily upon other scholarship in constructing usage labels for ethnic and racial epithets. As the eminent lexicographer Sidney I. Landau points out Unfortunately, there are no agreed-upon criteria for finding some usages offensive or contemptuous or abusive. There are few studies that shed any light on the degree of offensiveness of specified terms under specified conditions. … How … dictionary editors decide what to label offensive or disparaging … is based on the editor’s judgment of society’s norms for the limits of reputable public behavior. He consults slang dictionaries and other written sources, including other general dictionaries. [Dictionaries: The Art and Craft of Lexicography, 2d edition, 2001, p233] Although NOAD1 was constructed in great part based on original research, when the editorial team (of which I was a part) wrote the original usage labels we also depended upon received wisdom as expressed in earlier dictionaries and academic articles, from which it is clear that slant had been considered offensive and intrinsically derogatory in earlier decades.1 For example, the American lexicographer Hugh Rawson wrote in his book Wicked Words: A Treasury of Curses, Insults, Put-Downs and Other Formerly Unprintable Terms from Anglo-Saxon Times to the Present (1989, p358): 1The earliest reference to the epithetic sense of slant is found in Lester V. Berrey, Melvin Van den Bark’s 1942 dictionary, The American Thesaurus of Slang: A Complete Reference Book of Colloquial Speech, “§385/19 Oriental, slant.” See “slant, n.1,” the Oxford English Dictionary, Second edition, 1989; online version March 2011. Intellectual Property Review—Updates and Changes from 2016 4–86 8 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court slant. An Oriental, or any vaguely Oriental-looking person with slanted eyes. “To the G.I., the Vietnamese … is a ‘gook,’ ‘dink’, ‘slope’, or ‘slant’ (Time, 12/5/69). Slant, dating from the start of World War II, is short for slant-eye. (The O[xford]E[nglish]D[ictionary] traces the adjective slant-eyed to 1865 in its Oriental sense). And in Unkind Words: Ethnic Labeling from Redskin to Wasp, the University of Connecticut sociologist Irving Lewis Allen wrote (1990, p18): Nearly half of all interracial slurs (whites slurring blacks, Asians, and Native Americans—and these racial minorities slurring whites) refer to real or imagined racial differences. Whites have called Asian-American groups slant-eyes and Asians have begin calling whites round eyes as a comeback. As early as 1981, the Northwestern University lexicographer and linguist Richard A. Spears, in his dictionary, Slang and Euphemism (p57) defined both slant and slant-eye as A derogatory nickname for any Oriental. From the shape of the Oriental eyes. 14. As Landau noted in his book (op cit.), the period leading up to 2001 was an era in which lexicographers, responding to the pressures for what have come to be known as “politically correct” responses to language, were much quicker to assign pejorative labels to epithets than they had been in the middle decades of the twentieth century, and earlier: If, in the past, dictionaries were too slow to label terms of insult, they now seem too quick to do so. Many hundreds of terms now labeled as disparaging, contemptuous, of offensive in dictionaries, often on the strength of dubious evidence but out of fear that they will be taken as insensitive to some group. [p234] Dictionary labeling of insult is essentially political and moral. Every major English dictionary today takes a stand on the side of those who deplore racial and ethnic bigotry, oppose discrimination and abuse directed towards women and gays, and endorse diversity of opinion and life styles. Some take a stronger stand than others, using aggressive labels and adopting on occasion a tone of moral urgency, whereas some take a more detached approach. … [p232] Intellectual Property Review—Updates and Changes from 2016 4–87 9 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court Thus in decades up to the time of the writing of NOAD1, a consensus developed that offensive and derogatory implications of slant were generally significant enough that they should still be recognized in the dictionary. However, this conclusion appears to have been reconsidered as NOAD2 and then NOAD3 appeared. 15. This is not to say that one will not find current dictionaries that still list such usage labels for slant. Dictionary makers are by nature conservative, if only because changes are costly and time-consuming, and the process of revising definitions, while ongoing, cannot be immediate. Lexicographers are far more likely to make use of their finite energies in revising central denotations and adding new words than in fine-tuning relatively narrow usage labels for ethnic epithets, even those that may be in the final stages of becoming archaic. As Landau’s 2001 comments suggest, it has been safer to proscribe ethnic labels than to ignore them and risk being labeled insensitive. Usage labels take a back seat to more urgent matters: Making a dictionary is like painting a bridge: by the time that one coat of paint has been applied, the bridge is in need of another. … [After ten or fifteen years] the language has accumulated too many new meanings and new words; too many of the definitions of the dictionary have taken on new emphases or passed form slang to formal usage or from informal to standard; too much of the book is written with a vocabulary and style that seems odd or baffling to new readers. [Landau, op cit., p396; p 397] 16. It is also not to say that one could never today find slant used in a disparaging context. Indeed, any racial, national, or ethnic epithet can be used in a derogatory or offensive way if, in context, offensiveness is clearly conveyed. For example, so innocuous a term as baby boomers can be used disparagingly and with intent to offend (e.g., “the stinking baby boomers are going to bankrupting this country”). But such a use Intellectual Property Review—Updates and Changes from 2016 4–88 10 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court is not evidence that the word itself is intrinsically disparaging or derogatory, or that the word itself will be received as offensive by the persons it is intended to describe. 17. One further sociolinguistic fact that might explain why slant is a word that resists inferences of offensive connotations is that the English language offers no viable alternative for ordinary-language description of the genetically determined physiological feature of many Americans of Asian descent that occasioned the epithet in the first place. That is to say, even moreso than white, blonde or blue-eyed, slant-eyed (the full form from which epithetic slant is derived), in any circumstance in which one needs to refer to this particular anatomical feature, slant-eyed is virtually a necessary term—one without viable synonyms. The scientific alternative—PALPEBRAL SLANT (or, more precisely, PALPEBRAL SLANT with accompanying EPICANTHAL FOLD) is so rare that it does not even appear in dictionaries—and even it contains the word slant. And the scientific terminology is so rare and unsettled that even the authoritative, massively unabridged Oxford English Dictionary does not to this day contain PALPEBRAL SLANT or EPICANTHAL FOLD (indeed, EPICANTHAL does not appear at all, the OED listing only the alternative form, EPICANTHIC). Given that Americans of Asian origin have no term to describe a feature of their own bodies except slant, it is easy to understand that the term itself would not easily maintain robust connotations of offensiveness. IV. The Current Acceptability of SLANT as an Epithet of Positive Self-Reference Among Americans of Asian Descent. 18. As an inductive science, lexicography depends heavily on the assembling of empirical data of actual use. Landau cautions that, in deciding about the applicability of such usage labels as offensive or disparaging, such usual lexicographical sources as “citation files and corpora are not of much help” generally (op cit., p233). This is largely Intellectual Property Review—Updates and Changes from 2016 4–89 11 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court because it is difficult to disengage the sense of disparagement that is conveyed by the context of utterance from whatever putative sense of disparagement may be conveyed intrinsically by the word itself. Even so, such examples of actual usage as I examine in this section are linguistically probative in that they illustrate the non-pejorative self- referential use of slant in the public domain by the very persons who would have to be offended by it if it were to be adjudged offensive. 19. In Chicago, television station KBC-TV produced a sixteen-episode “entertainment and news series” about “the Asian-American experience right in the middle mecca of the U.S. (ion 2009)” which is titled The Slant.2 Some of the 16 episodes broadcast today are also available on YouTube.3 No apparent explicit connection is drawn in the website material between the racial epithet slant and the Asian-American community in Chicago that the series is intended to serve. While it seems unlikely that the producers of the series were completely unaware of the epithetic use of slant and its putatively disparaging connotations, the lack of extensive comment indicates that the name was chosen not as an ironic reclamation of an erstwhile synecdochical derogatory epithet but rather as an unobjectionable term of self-reference which also the basic meaning (as in the NOAD definitions shown in ¶11 above), “a particular point of view from which something is seen or presented.” 20. Since 2007, a blog at the address has continued to discuss issues involving Asian Americans in the United States from the point of view of the Asian American author. Jus as is the case with KBC-TV’s The Slant, program, the “slanteye” blog simply accepts the term slant as a racial epithet of self- 2See Intellectual Property Review—Updates and Changes from 2016 4–90 12 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court reference Here is the philosophy of the author, as announced in 2007 (underlining added):4 What is the goal of Slant Eye for the Round Eye? Did you have any specific intentions in starting the blog? Even though there're some great Asian American blogs and voices out there, I still wanted to add my own voice into the mix. I wanted to promote the community, talk about things that mainstream media didn't always touch upon or write about in-depth, as well as just blog about things that mattered to me, from my perspective. In some ways that's one of the main reasons why I blog - to kind of say that sure, I might be an Asian American who blogs, and I might talk about some of the same things that other Asian American bloggers, or Asian American media outlets do, but I'm not the same either. While I'm a part of the community, I'm still an individual, and I think as far as the Asian American community goes, as well as just being a POC [person of color], there's power in that because of our history, because we’ve sometimes been seen as this homogeneous group who knows no separation from each other, when in reality, there is that separation. At the same time, I know that a big part of the reason I blog is simply because I love seeing all the great people from our community who do their thing—no matter what it is—I just can't help not talking about it because I do get excited when I see Asian Americans and Asian faces breaking new ground, pushing new boundaries, or just simply being comfortable in who they are and saying to everyone around them, “This is who I am.” On the author’s FaceBook page one even finds a coined word, slanatalicious, generated in the unselfconscious sense of self-reference:5 And he also uses the following subheading phrase, Getting To Know Your Slanty 4 Intellectual Property Review—Updates and Changes from 2016 4–91 13 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court which appears on every opening page of the blog. In short, the author of the “Slant Eye for the Round Eye” blog views slant as a basic term of self-reference. His use is certainly not disparaging, and the evidence is clear that he does not find it intrinsically offensive, or he would not use it so fundamentally and even playfully. 21. Houston, Texas, for the past ten years, has been the site of a film festival called Slant Film Festival and subtitled “Bold Asian American Images.”6 The mission statement of the festival is given as follows:7 Slant: Bold Asian American Images is an annual shorts film festival in Houston, Texas. Slant showcases an eclectic mix of the best short films made by aspiring, emerging and mid-career Asian American artists. Through our film festival, DVDs and performances, we provide a fresh perspective on the Asian American experience. The festival features all genres including narrative, experimental, documentary and animation. Works accepted into the festival often combat tired stereotypes of Asian Americans with quirky comedies and compelling visions. Slant was established in 2001 by Melissa Hung, the founding editor of Hyphen, a magazine about Asian American culture. One of the longest-running festivals in Texas devoted to Asian American film and video art, the festival has screened more than a hundred films, many of them showing in Texas for the first time. From the beginning, Slant has made its home at the Aurora Picture Show, a nonprofit microcinema. In presenting this festival, Aurora participates in exploring the power of moving images in crafting identity and community. There is nothing apparent on the Slant Film Festival website that suggests that the epithet slant is objectionable to any of the Asian Americans who are associated with the festival in any way. The term simply suggests informal self-reference, with the possible additional sense of slant as (again) the NOAD definitions shown in ¶11 above indicate, “a particular point of view from which something is seen or presented.” 6 Intellectual Property Review—Updates and Changes from 2016 4–92 14 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court 22. The Slanted Screen: Asian Men in Film and Television, is the name of a 2006 documentary film that “portrayals of Asian men in American cinema, chronicling the experiences of actors who have had to struggle against ethnic stereotyping and limiting roles.” While slant in the title is a play on words between slant as an informal epithet and slant in the meaning “present … from a particular angle, esp. in a biased or unfair way” (see ¶11 above), there is no sense that slant is seen as an objectionable term per se; at most, the film title reclaims slant from whatever pejorative past it may have had, and any sense of disparagement is lost in the use of the term as self-reference. As the website writes, the emphasis of the film is on the positive aspects of slant: The film presents a critical examination of Hollywood's image- making machine, through a fascinating parade of 50 film clips spanning a century. … Winner of the Best Short Documentary award at the NY International Independent Film & Video film festival, The Slanted Screen envisions a new, exciting future in the entertainment industry, where the diversity of our culture and society is fully recognized and represented. V. Conclusion 23. The contemporary musical band that calls itself The Slants has selected a name that corresponds to the twenty-first century usage of the term slant as a racial and/or ethnic term of positive self-reference. Like all ethnic and racial epithets, there may be contexts in which slant forms a part of a more general disparaging context of deprecation; one may, after all, say “filthy Swede,” “disgusting lesbian,” or “lying American dog.” But such uses do not make Swede or American intrinsically disparaging or objectionable to Swedes, lesbians, or Americans. While dictionaries may continue to label slant as a pejorative term, this is readily explained by the fact that dictionaries in general lag somewhat in updating entries with respect to linguistic change, and, particularly with the treatment of ethnic labels a desire to do nothing that could possibly Intellectual Property Review—Updates and Changes from 2016 4–93 15 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court provoke controversy. Moreover, the evidence of the history of entries in New Oxford American Dictionary supports the contention that the empirical data demonstrate: even if some Asian Americans in the last century may have felt slant to be an objectionable epithet, the term has been reclaimed by contemporary Asian Americans for use as an informal term representing racial and ethnic pride. I declare under penalty of perjury that the foregoing is true and correct. Ronald R. Butters, Ph.D. April 25, 2011 Durham, North Carolina Intellectual Property Review—Updates and Changes from 2016 4–94 16 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court In The United States Patent and Trademark Office Applicant: Simon Shiao Tam Mark: THE SLANTS Serial No.: 77952263 Filing Date: March 5, 2010 Commissioner of Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 Attn: Mark Shiner, Examining Attorney Law Office 102 EXPERT REPORT Charlton D. McIlwain, Ph.D. & Stephen Maynard Caliendo, Ph.D. This report is being submitted on behalf of the Applicant, Simon Shiao Tam, in support of his application for trademark registration as noted above. The undersigned, being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declare: 1 Intellectual Property Review—Updates and Changes from 2016 4–95 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court I. Assignment 1. We have been asked to design and field a survey among members of the Asian/Pacific Islander (API) community as to their opinions about whether the name THE SLANTS, or variations thereof, is salient to members of that community as a disparaging term. II. Summary of Conclusions 2. Few members of the API community view THE SLANTS as a disparaging term. III. Qualifications 3. Stephen Maynard Caliendo is a Professor of Political Science at North Central College, and Charlton D. McIlwain is an Associate Professor of Media, Culture & Communication at New York University. For more than a decade they have collaboratively produced scientific research on issues related to the construction and effects of racialized language and visual imagery in the context of political and commercial advertisements, popular culture artifacts (such as music, television, film, etc.) and interpersonal interaction. They are experts in survey/experiment design, statistical data analysis, and quantitative/qualitative content analysis. They have conducted survey/experiment research that has been accepted and sponsored by the National Science Foundation and the Time Sharing Experiments for the Social Sciences (TESS). Together, they have published three books related to these subjects and ten refereed journal articles and invited book chapters in publications such as the 2 Intellectual Property Review—Updates and Changes from 2016 4–96 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court American Behavioral Scientist, the Harvard International Journal of Press/Politics, the Journal of Black Studies and others. They also serve on the editorial boards of or serve as peer reviewers for some fifteen of the most prominent journals within the fields of media and communication studies, political science and cultural studies. They frequently give public lectures about these topics to university audiences across the country and are regularly sought out by national and international media outlets (such as CNN, The Washington Post, Associated Press, Reuters, National Public Radio, and many others) for their expertise in these matters. Additionally, McIlwain has been retained as an expert witness in two legal cases, involving issues related to the uses of racialized language and imagery, having testified in one of those cases.1 A copy of Dr. McIlwain’s curriculum vitae, detailing his educational background, professional experience, teaching areas, and publications is attached hereto as “Exhibit 1.” A copy of Dr. Caliendo’s curriculum vitae, detailing his educational background, professional experience, teaching areas, and publications is attached as “Exhibit 2.” 1 Retained as a an expert for the plaintiffs, but not testifying (due to case settlement) in Odessa Lewis,….Susie Cropper, et al., Plaintiffs, vs. Woodlawn Memorial Park, an unknown California business entity; Evergreen Memorial Care, Inc., et al., Defendants. Superior Court of California, County of Los Angeles. No. BC 227267. Retained and testified in Barkley, et al v. United Homes, et al. U.S. District Court, Eastern District of New York, 2008-2011 (deposition testimony September 23, 2009; trial testimony May 11-12, 2011). Dr. Caliendo has not testified in any cases. 3 Intellectual Property Review—Updates and Changes from 2016 4–97 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court IV. Methodology 4. Design. Surveys are scientific methods for assessing public opinion about a wide range of issues, including issues about the significance of and potential regard for various forms of language. In accordance with acceptable methodological protocols, we designed a survey questionnaire to assess how members of the API community in the United States think and feel about the term THE SLANTS, specifically whether they view the term as disparaging. Consistent with this primary goal, we designed a set of questions that addressed the issue of potential disparagement in different ways. Consistent with accepted scientific practice, we paid particular attention to both question wording and question order – the latter so as not to unnecessarily prime respondents to think about matters that might shape their responses in later questions. Similarly, we followed appropriate guidelines in the answer/selection choices provided for each question. The questions that were asked (and the corresponding answer/selection choices that were provided) are set forth on “Exhibit 3.” Participants viewed the survey one page at a time (in the order the survey pages are presented in Exhibit 3), and thus only viewed the particular question(s) that appears on each respective page as presented in Exhibit 3. Further, once participants answered the question(s) on each respective page, they were prohibited from returning to prior questions in the survey, thus ensuring no revision to their original answer choice. 5. Sampling Selection and Characteristics. This survey relied on a convenience sample. Using a well-known and well-regarded online survey platform, invitations to 4 Intellectual Property Review—Updates and Changes from 2016 4–98 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court complete the survey were sent to potential respondents via email. Invitations to participate were also distributed in the form of an Internet URL link posted on a variety of websites frequented by members of the Asian American community, such as AngryAsianMan.com and AARising.com. The link was also circulated via individuals’ personal networks on prominent social networking sites such as Facebook and Twitter. The advantage of convenience samples is that it is less financially burdensome than fielding a random, national sample survey (the cost of which is quite prohibitive – into the tens of thousands of dollars). Additionally, it is an efficient way to reach and recruit respondents. The primary disadvantage is that convenience samples are less likely to be representative of the population being sampled. In this survey, we did everything possible to compensate for this limitation by fielding the survey for a period of time that would allow enough people from various demographics to participate and by having the survey invitation links placed on websites that are not only frequented by members of the API community, but by a broad diversity of the members of that community. The following are characteristics of the sample: There were three hundred, ninety-six participants who completed all or some of the survey. Of those, twenty-one were excluded because they self-identified as some other race/ethnicity besides Asian/Pacific Islander. Three hundred seventy- five respondent surveys remained for analysis. Of this pool: 47% were male, 37% female. While the mean age of respondents was thirty, 39% of respondents ranged from ages thirty-one to seventy-one. Fifty-two percent of the respondents had four- year or postgraduate degrees, though an almost equal percentage of respondents were 5 Intellectual Property Review—Updates and Changes from 2016 4–99 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court less educated, ranging from 2-year degrees to only eight years of schooling. Seventy- five percent of respondents are clustered among the middle to low income brackets ($75,000 annually and below). Thus, while this convenience sample is less than ideal, we feel confident that there is more than enough diversity among the participants to allow us to extend our conclusions beyond this sample of API community members. V. Results 6. Few respondents agree that THE SLANTS is disparaging. We posed the following statement to participants: I find the name of the group THE SLANTS to be disparaging. Only 16% of participants agreed with that statement in some way. By contrast, 46% of participants disagreed with the statement. The remaining 38% participants were ambivalent, saying that they neither agreed nor disagreed. Thus, if there is any strong feeling, it is in the direction of viewing THE SLANTS as a term that is not disparaging to members of the API community. 7. Fewer agree that THE SLANTS is disparaging when learning that the group’s membership is entirely Asian. Once the statement is qualified in the following way – “If I learned that the group THE SLANTS is comprised entirely of Asian Americans, I would not think that the name is disparaging” – a majority of respondents indicate that they have strong leanings in the positive direction by agreeing or agreeing strongly with the preceding statement. Consistent with this trend, after learning that the group is comprised of all Asian Americans, 8% fewer 6 Intellectual Property Review—Updates and Changes from 2016 4–100 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court respondents – a statistically significant decline2 remain in the ambivalent category in their response to this statement. 8. Age is not a factor. Given that language usage and meanings change over time, it would be reasonable to expect that people of different age cohorts might have different opinions about a term like SLANTS. However, these results demonstrate that age is not a factor. Given that the mean age of the survey respondents was thirty, we compared those thirty and under with those over thirty. Doing so showed no statistically significant difference between the two age groups on the survey statements referenced above. Age was not a factor in participants’ opinions about whether they find THE SLANTS to be disparaging;3 or whether they find it less disparaging when knowing the group consists of all APIs.4 Even when the age comparison is adjusted to compare respondents under and above the age of forty, there still remains no significant difference between the two groups on each of these questions. 2 Chi-Square comparison between those ambivalent in the first question and those who remain so after learning the group is comprised of all Asian Americans yields a statistically significant p< value of .06. 3 The comparison on this question yielded a Chi-Square statistic of 3.67 and a non-significant p value of .45. 4 The comparison on this question yielded a Chi-Square statistic of 44.38 and a non-significant p value of .58. 7 Intellectual Property Review—Updates and Changes from 2016 4–101 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court VI. Conclusion 9. The abundant lack of recognition of SLANTS as a potentially disparaging term; the widespread disagreement that SLANTS is a disparaging term; the greater disagreement demonstrated once the members of THE SLANTS are known to be Asian American; and the lack of age distinction on these matters, taken together, convincingly demonstrates that, partially because it is an outdated as a racially disparaging term, THE SLANTS is not generally viewed as a disparaging term to members of the API community. And while any term has some potential to be disparaging depending on the intention of its user, the results here are consistent with the anecdotal evidence that suggests that SLANTS, and variations of the term, are recognized as a commonplace designation of positive self-reference among many in the API community. The undersigned declare under penalty of perjury that the foregoing is true and correct. All statements made herein of the undersigned’s own knowledge are true and all statements made on information and belief are believed to be true. Date: Charlton D. McIlwain, Ph.D. Associate Professor, New York University Date: Stephen Maynard Caliendo, Ph.D. Professor, North Central College Exhibits have been omitted. The entire document may be downloaded here: http://tinyurl.com/ IP17-04D. 8 Intellectual Property Review—Updates and Changes from 2016 4–102 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court Intellectual Property Review—Updates and Changes from 2016 4–103 Chapter 4—How Naming a Band Called The Slants Got Me to the Supreme Court Intellectual Property Review—Updates and Changes from 2016 4–104