In the never ending saga of the Bratz case, there is a new decision in the case. First, Mattel was able to in essence put MGA out of business until the Ninth Circuit reversed the decision for Mattel and ordered a new trial. At the new trial, MGA was successful and Mattel was order to pay hefty damages.
Now if Mattel wants to appeal to the Ninth Circuit, it will require a $315 million dollar bond. (Mattel’s damages totaled $310 million.) Mattel has until August 23, 2011 to post the bond.
Friday, August 26, 2011
Monday, August 22, 2011
8th Circuit Decides the 3rd Dimension Adds Character
Recently, the 8th Circuit decided an appeal in Warner Bros. v AVELA. AVELA makes memorabilia such as snow globes, puzzles, t-shirts and other products primarily from movies. Warner Bros. sued AVELA for copyright infringement for use of materials associated with Gone With The Wind, The Wizard of Oz and Tom & Jerry. Some of the images were based on posters and still photographs which AVELA alleged fell into the public domain. These promotional pieces were created before the motion pictures were published. These works were all subject to the 1909 Copyright Act. The Eighth Circuit agreed that several of the images were published even though there were restrictions on the use of the promotional works, the predecessors in interest to plaintiff intended the works to be provided to the public. Some of the works were published without any copyright notice. Prior to 1989, copyright notices were required. Several works fell into the public domain due to the failure to put a copyright notice on the works. In addition, some of the works fell into the public domain because the works were not renewed. (Under the 1909 Act, copyrighted works were required to be renewed every 28 years to maintain the registration.)
A copy of the decision is available here.
There are 2 troubling aspects of the decision. (Full disclosure: I previously worked on this brief before the district court.)
First, the Court decided that where the press photos such as Judy Garland as Dorothy in The Wizard of Oz which were created before the movie was complete were in the public domain. However, the Court found that the combination of the photo with the phrase, “There’s no place like home,” constituted copyright infringement of the Warner Bros. character. This does not make sense. Clearly, the phrase, “There’s no place like home” is not copyrightable in and of itself. (Short phrases are not copyrightable.) Further, a similar phrase “There is no place like home” was used in the Frank L. Baum novel from which the movie is based. (The Frank L. Baum book was published in 1908 – which places the book in the public domain since before AVELA started creating the memorabilia.)
Second, the Court decided that the 2-dimensional works such as puzzles and t-shirts that are based on the works that fell into the public domain were not infringing and thus AVELA should not be permanently enjoined. However, 3-dimensional works such as snow globes based on works that fell into the public domain were infringing and thus subject to a permanent injunction. The Court reasoned that the 3- dimensional works were based on the characters from the movies (owned by Warner Bros.).
This seems contradictory. Clearly, derivative works based on works in the public domain are subject to copyright protection. However, the Court finds that AVELA infringed Warner Bros. copyright for adding a third dimension to the posters and pictures in the public domain. The Court comments about the length of a nose unable to be determined in a 2-dimensional work. Even if true (which I have some doubt – there is such a thing as scale and proportion and multiple angles which may create some level of determination), why wouldn’t these considerations be considered scenes a faire or subject to an artist’s interpretation and thus, capable of its own separate copyright?
Given the recent Bratz decision limiting the infringement of derivative works for the different faces of the different generations of Bratz dolls because there were only a limited number of ways to create faces and facial expressions, the Eighth Circuit seems to disagree. Cf. Mattel, Inc. v. MGA Entm’t, Inc., 2010 U.S. App. LEXIS 26937, *22 - *32 (9th Cir. 2010). There is only so many ways which the back of a head or the dimensions of article of the characters’ clothing or costumes can be drawn.
What the Eighth Circuit has done is not only remove the works from the public domain (in the instance of the posters / pictures used in connection with short phrases) but also has effectively claimed that copyrights in characters can extend to prevent derivative works in the public domain if the derivative works are three-dimensional. Yet if both the original work in the public domain and the derivative work are both two-dimensional, then there is no infringement.
A finding that a copyright in a character extends to prevent the creation of three dimensional derivative works based on two-dimensional works in the public domain does not make sense. Such line-drawing fits no purpose. It creates not only a bad rule and precedent but an impossibility, limiting the creation of new works. Preventing derivative works from being made from works in the public domain was not the intended result of the Copyright Act.
A copy of the decision is available here.
There are 2 troubling aspects of the decision. (Full disclosure: I previously worked on this brief before the district court.)
First, the Court decided that where the press photos such as Judy Garland as Dorothy in The Wizard of Oz which were created before the movie was complete were in the public domain. However, the Court found that the combination of the photo with the phrase, “There’s no place like home,” constituted copyright infringement of the Warner Bros. character. This does not make sense. Clearly, the phrase, “There’s no place like home” is not copyrightable in and of itself. (Short phrases are not copyrightable.) Further, a similar phrase “There is no place like home” was used in the Frank L. Baum novel from which the movie is based. (The Frank L. Baum book was published in 1908 – which places the book in the public domain since before AVELA started creating the memorabilia.)
Second, the Court decided that the 2-dimensional works such as puzzles and t-shirts that are based on the works that fell into the public domain were not infringing and thus AVELA should not be permanently enjoined. However, 3-dimensional works such as snow globes based on works that fell into the public domain were infringing and thus subject to a permanent injunction. The Court reasoned that the 3- dimensional works were based on the characters from the movies (owned by Warner Bros.).
This seems contradictory. Clearly, derivative works based on works in the public domain are subject to copyright protection. However, the Court finds that AVELA infringed Warner Bros. copyright for adding a third dimension to the posters and pictures in the public domain. The Court comments about the length of a nose unable to be determined in a 2-dimensional work. Even if true (which I have some doubt – there is such a thing as scale and proportion and multiple angles which may create some level of determination), why wouldn’t these considerations be considered scenes a faire or subject to an artist’s interpretation and thus, capable of its own separate copyright?
Given the recent Bratz decision limiting the infringement of derivative works for the different faces of the different generations of Bratz dolls because there were only a limited number of ways to create faces and facial expressions, the Eighth Circuit seems to disagree. Cf. Mattel, Inc. v. MGA Entm’t, Inc., 2010 U.S. App. LEXIS 26937, *22 - *32 (9th Cir. 2010). There is only so many ways which the back of a head or the dimensions of article of the characters’ clothing or costumes can be drawn.
What the Eighth Circuit has done is not only remove the works from the public domain (in the instance of the posters / pictures used in connection with short phrases) but also has effectively claimed that copyrights in characters can extend to prevent derivative works in the public domain if the derivative works are three-dimensional. Yet if both the original work in the public domain and the derivative work are both two-dimensional, then there is no infringement.
A finding that a copyright in a character extends to prevent the creation of three dimensional derivative works based on two-dimensional works in the public domain does not make sense. Such line-drawing fits no purpose. It creates not only a bad rule and precedent but an impossibility, limiting the creation of new works. Preventing derivative works from being made from works in the public domain was not the intended result of the Copyright Act.
Friday, August 12, 2011
Follow-up on ICE Domain Name Seizure
As blogged previously, the U.S. Customs has seized domain names from those who post infringing works on their websites. One of the seizures was for rojadirecta.com and rojadirecta.org owned by Puerto 80 Projects S.L.U. (“Puerto”). It is alleged that the two referenced websites collected a list of third party links to live sporting events and pay-per-view events.
Puerto sought to obtain the domain names back seeking immediate release of the seized property. The U.S. government argued that Puerto could not show substantial hardship and giving back the domain names would only lead to further criminal acts.
Puerto claims harm because of a reduced number of visitors. (Puerto operates other websites such as rojadirecta.me that were not seized.) The Court rejected this as substantial harm. Puerto also raised the First Amendment; however, the court rejected this argument finding that the forums for comment are not the purpose of the websites seized. The court finds the purpose of the two seized websites is to catalog links to copyrighted materials. See the Court's August 4, 2011 order here.
The court did not reach the question of whether giving back the domain names would only foster criminal activity but may take up the question when Puerto’s motion to dismiss is heard next month.
Puerto sought to obtain the domain names back seeking immediate release of the seized property. The U.S. government argued that Puerto could not show substantial hardship and giving back the domain names would only lead to further criminal acts.
Puerto claims harm because of a reduced number of visitors. (Puerto operates other websites such as rojadirecta.me that were not seized.) The Court rejected this as substantial harm. Puerto also raised the First Amendment; however, the court rejected this argument finding that the forums for comment are not the purpose of the websites seized. The court finds the purpose of the two seized websites is to catalog links to copyrighted materials. See the Court's August 4, 2011 order here.
The court did not reach the question of whether giving back the domain names would only foster criminal activity but may take up the question when Puerto’s motion to dismiss is heard next month.
Thursday, August 4, 2011
Things to Know about Copyright and your Website
Copyright protects the expression in tangible form of original works of authorship. A website – like a brochure, an advertisement, a press kit, or a press release – is a valuable asset and marketing tool which merits protection.
- Create and use your own images. The best way to avoid infringement claims against your website is to create your own original images for display. If you are not creating your own images...
- Get permission before copying internet images. Copying images from the internet is controversial. If the owner of the image gives permission, you can use the image. Many times, however, the purported owner of the image is not the actual owner (i.e. the image was obtained falsely), which can lead to an infringement claim. The copying of images created by third parties without permission is infringement. See FragranceNet.com, Inc. v. FragranceX.com, Inc., 679 F. Supp. 2d 312 (E.D.N.Y. 2010) (where defendant used over 900 copyrighted images from Plaintiff's website).
- Follow the terms of the images’ license agreement. Taking images from purchased software (i.e. Microsoft Word Clip-Art) is not necessarily infringement. By purchasing the software, you have accepted the license agreement terms. It is imperative to review the license to find out how the images may be used. For example, sample language from the Microsoft Service Agreement states that Microsoft product users that have access to media images, clip art, and the like, “may copy and use the media elements in projects and documents.” They may not, however, “(i) sell, license, or distribute copies of the media elements by themselves or as a product if the primary value of the product is the media elements; (ii) grant your customers rights to further license or distribute the media elements; (iii) license or distribute for commercial purposes media elements that include the representation of identifiable individuals, governments, logos, trademarks, or emblems or use these types of images in ways that could imply an endorsement or association with your product, entity or activity; or (iv) create obscene works using the media elements.” The use of licensed images from the internet may not be infringement, as long as you follow the terms of the license. See Stockart.com v. Engle, 10-CV-00588-MSK-MEH (D. Col. Feb. 18, 2011) (where the use of a copyrighted photo on a website without a license was a violation of the plaintiff’s copyright).
- If possible, use only original text. When preparing text for a webpage, the text should be original, written specifically by the creator. The use of another’s written work without permission is copyright infringement. See Cvent v. Eventbrite, Inc., 96 USPQ2d 1798 (E.D. Va. 2010) (where the defendant’s online directory information was “scraped”, or copied, from plaintiff’s website)
- Avoid making source code available for public use. The source code of a website can also be registered for copyright protection. The copying of registered website source code is an infringement. See Hermeris v. Brandenburg, 10-2531-JAR (D. Kan. Jan. 23, 2011) (where the defendant’s copying of content and source code of the plaintiff’s online document preparation business was copyright infringement).
- Video and/or sound recordings should be copyrighted separate from the website. If a website contains video and or sound recordings (such as background music), they should be separately copyrighted (apart from the website itself) as these materials could be easily lifted separately and may have their own independent worth.
- Web designers should operate under a work-for-hire contract. To determine whether a work is made for hire, one must first establish whether the work was made by an employee or an independent contractor. See Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). If the work is made by the employee, then the work is generally considered to be a work made for hire, and the employer retains control of the work. If the work is created by an independent contractor, then the work is only a work made for hire if (1) it falls within one of the nine enumerated categories of works in Section 101 of the Copyright Act, and (2) the parties specifically agree in a written document that the work is one made for hire. If these provisions are not met, then the work is not a work made for hire, and the independent contractor is considered the “author” of the work. It is therefore essential to create a written agreement with an independent website designer to ensure that the designer assigns all copyright ownership to the website owner. Companies should also be advised that if their website is created by an independent contractor, there should be indemnification clauses in the assignment to ensure that the work, including the source code, is original.
- Register, register, register. U.S. companies are required to obtain copyright registrations in order to bring an infringement action in the United States. In registering copyrights, website owners should identify the portions of the site that are being copyrighted. In addition, if a copyright owner files for registration within three months of the work’s publication, he is entitled to several remedies in a case of infringement potentially including attorney’s fees.
- If a copyright owner decides to file a complaint for copyright infringement... Broad language, such as “all texts, photographs, selection, arrangement and compilation”, would be insufficient against a copyright infringement claim. See Salt Optics v. Jand, SACV 10-0828 (C.D. Cal. Nov. 2010) (where specific indication of the infringed portions of a website were necessary to bring an infringement claim).
Wednesday, July 27, 2011
Opting Out, Opting In - Google Books Settlement Update
Last week, a hearing was held in the Southern District of New York by Judge Chin for an update on progress on settlement in the Google Book Settlement.
However, there has been no progress. Previously, the judge had indicated that the settlement may clear antitrust hurdles if the default provision was that authors had to opt-in to the settlement to agree to make their works available through Google Books. This will also allow for snippets of the work available through a search mechanism on Google.
An attorney from Google indicated that there were business issues in addition to legal issues that were still being worked out.
Previously, the Court indicated that it was doubtful that a settlement would be reached. Id. Google does not have much interest in the opt-in provision. Id.
Without a settlement, the judge will likely have to decide whether the use of the snippets from books are a fair use for which Google can provide to users or whether these may be infringements of the literary works. Is it possible that this is what Google actually seeks?
Rather than pay a hefty settlement sum for an opt-in option that is not as attractive to Google, it may merely wait to see if its use of the published materials from authors is a fair use – for which Google may have to pay nothing at all.
The parties have until September 15, 2011 before the next report is due to the judge.
However, there has been no progress. Previously, the judge had indicated that the settlement may clear antitrust hurdles if the default provision was that authors had to opt-in to the settlement to agree to make their works available through Google Books. This will also allow for snippets of the work available through a search mechanism on Google.
An attorney from Google indicated that there were business issues in addition to legal issues that were still being worked out.
Previously, the Court indicated that it was doubtful that a settlement would be reached. Id. Google does not have much interest in the opt-in provision. Id.
Without a settlement, the judge will likely have to decide whether the use of the snippets from books are a fair use for which Google can provide to users or whether these may be infringements of the literary works. Is it possible that this is what Google actually seeks?
Rather than pay a hefty settlement sum for an opt-in option that is not as attractive to Google, it may merely wait to see if its use of the published materials from authors is a fair use – for which Google may have to pay nothing at all.
The parties have until September 15, 2011 before the next report is due to the judge.
Friday, July 15, 2011
IT’S FRIDAY…NO IT’S $2.99…BUT IT'S FRIDAY...BUT IT'S $2.99
The YouTube viral music video sensation “Friday” featuring Rebecca Black is now the subject of a copyright dispute.
Apparently, Ark Music, the company that produced the video, wanted to start charging $2.99 for viewing of the “Friday” video on YouTube. No one told Rebecca Black. Apparently Black only learned of this development by fans.
Upon learning of the charges, Black’s lawyers sent a copyright takedown notice to YouTube for the video. Black’s lawyers claim that Ark Music does not have the rights of publicity or right to advertise the video. Black’s lawyers also claim that Ark Music has failed to provide the master recording of the song and that the company has no right to exploit the work (i.e. charge $2.99 on YouTube for the video).
While the dispute is being decided, the video has been removed from YouTube.
Is this one of those instances where a copyright takedown actually benefits the public.....will there be withdrawal without free access to the “Friday” video, and would anyone pay $2.99 to rent it?
Apparently, Ark Music, the company that produced the video, wanted to start charging $2.99 for viewing of the “Friday” video on YouTube. No one told Rebecca Black. Apparently Black only learned of this development by fans.
Upon learning of the charges, Black’s lawyers sent a copyright takedown notice to YouTube for the video. Black’s lawyers claim that Ark Music does not have the rights of publicity or right to advertise the video. Black’s lawyers also claim that Ark Music has failed to provide the master recording of the song and that the company has no right to exploit the work (i.e. charge $2.99 on YouTube for the video).
While the dispute is being decided, the video has been removed from YouTube.
Is this one of those instances where a copyright takedown actually benefits the public.....will there be withdrawal without free access to the “Friday” video, and would anyone pay $2.99 to rent it?
Thursday, July 7, 2011
Hangover Lawsuit Update
Last month, Warner Bros. and S. Whitmill “amicably settled” the copyright dispute regarding the use of the tribal tattoo that appears on Mike Tyson’s face from being used on another character in The Hangover 2. The details of the settlement were not disclosed.
Prior to reaching an agreement with Whitmill, Warner Brothers informed the Court that if it is unable to resolve the lawsuit involving the tribal tattoo on Ed Helms' character in The Hangover 2 (detailed in my previous post), that WB would take the step of altering the appearance of the tattoo on one of the character’s faces in the movie when it is released on DVD. This apparently is an expensive alteration. However, it may be less expensive than having to pay damages for infringement. Obviously, if the reproduction of the tattoo were not longer to appear in the movie, then the claim for additional damages would be mitigated.
An additional twist on this case is from David Nimmer who filed a declaration as an expert for Warner Brothers. The declaration can be seen in its entirety here.
Part of Nimmer’s argument is that the tattoo (and therefore, the copyrighted work) is not fixed in a tangible medium when the design was affixed to Tyson’s face. There are several references to the history of the Copyright Act and failure to mention tattoos as part of the legislation. But I think the analysis misses the overall structure and underlying purpose of the fixation of the work into a tangible medium. Part of the purpose of the fixation was to ensure that the work was not fleeting. While arguably, the tattoo may be able to be removed, it does nothing to change the analysis that the work is fixed. The work was clearly capable of being drawn onto a piece of paper or a picture of the work as appeared on Tyson’s face would suffice to show how the work appeared. It also raises a completely different question, because clearly Whitmill had to file a deposit of the copyright and could not have filed Mike Tyson’s face. (I presume a photograph was submitted to the Copyright Office.) Without getting into the merits of the level of protection that the tattoo should be provided under copyright law, it seems a rather flimsy argument to claim that the work is not fixed in tangible medium. The photograph itself would show the tattoo artist’s rendering.
The argument lacks credibility. By analogy, if an artist drew sketches in pencil, would the drawing not be capable of copyright protection because the copyright registration indicated that the sketch was in pencil and was capable of being removed with an eraser?
Another argument pressed by WB and Nimmer is that there are no reported cases involving copyright infringement for tattoos. (A case involving Rasheed Wallace was settled out of court – however, in that case, the tattoo involved was an actual tattoo on the person involved not a temporary reproduction on another person.) There is a copyright infringement case involving temporary tattoos. See Gonzalez v. Kid Zone, Ltd., 2001 U.S. Dist. LEXIS 12008 (N.D. Ill. Aug. 14, 2001).
Because of the settlement we will have no way of knowing how the case would have turned out. What do you think the Court would have decided?
Prior to reaching an agreement with Whitmill, Warner Brothers informed the Court that if it is unable to resolve the lawsuit involving the tribal tattoo on Ed Helms' character in The Hangover 2 (detailed in my previous post), that WB would take the step of altering the appearance of the tattoo on one of the character’s faces in the movie when it is released on DVD. This apparently is an expensive alteration. However, it may be less expensive than having to pay damages for infringement. Obviously, if the reproduction of the tattoo were not longer to appear in the movie, then the claim for additional damages would be mitigated.
An additional twist on this case is from David Nimmer who filed a declaration as an expert for Warner Brothers. The declaration can be seen in its entirety here.
Part of Nimmer’s argument is that the tattoo (and therefore, the copyrighted work) is not fixed in a tangible medium when the design was affixed to Tyson’s face. There are several references to the history of the Copyright Act and failure to mention tattoos as part of the legislation. But I think the analysis misses the overall structure and underlying purpose of the fixation of the work into a tangible medium. Part of the purpose of the fixation was to ensure that the work was not fleeting. While arguably, the tattoo may be able to be removed, it does nothing to change the analysis that the work is fixed. The work was clearly capable of being drawn onto a piece of paper or a picture of the work as appeared on Tyson’s face would suffice to show how the work appeared. It also raises a completely different question, because clearly Whitmill had to file a deposit of the copyright and could not have filed Mike Tyson’s face. (I presume a photograph was submitted to the Copyright Office.) Without getting into the merits of the level of protection that the tattoo should be provided under copyright law, it seems a rather flimsy argument to claim that the work is not fixed in tangible medium. The photograph itself would show the tattoo artist’s rendering.
The argument lacks credibility. By analogy, if an artist drew sketches in pencil, would the drawing not be capable of copyright protection because the copyright registration indicated that the sketch was in pencil and was capable of being removed with an eraser?
Another argument pressed by WB and Nimmer is that there are no reported cases involving copyright infringement for tattoos. (A case involving Rasheed Wallace was settled out of court – however, in that case, the tattoo involved was an actual tattoo on the person involved not a temporary reproduction on another person.) There is a copyright infringement case involving temporary tattoos. See Gonzalez v. Kid Zone, Ltd., 2001 U.S. Dist. LEXIS 12008 (N.D. Ill. Aug. 14, 2001).
Because of the settlement we will have no way of knowing how the case would have turned out. What do you think the Court would have decided?
Subscribe to:
Posts (Atom)