Today, the Supreme Court released several opinions, including Kimble v. Marvel Entertainment. Kimble involves the question of whether a party may contract for payment of patent royalties after the patent's expiration. The opinion has attracted a great deal of attention -- not due to its answering this question in the negative and adhering to the precedent set in Brulotte v. Thys Co., 379 U.S. 29 (1964) -- but instead because of its numerous references to Spider-Man and superheroes. The case, after all, includes Marvel Entertainment as a party, and concerns "a toy that allows children (and young-at-heart adults) to
role-play as 'a spider person' by shooting webs—really,
pressurized foam string—“from the palm of [the] hand.'"
For example, in the concluding paragraphs of the majority opinion, Justice Kagan notes;
What we can decide, we can undecide. But stare decisis teaches that we should exercise that authority sparingly. Cf. S. Lee and S. Ditko, Amazing Fantasy No. 15: “SpiderMan,” p. 13 (1962) (“[I]n this world, with great power there must also come—great responsibility”).
Coverage noting the references in Justice Kagan's majority opinion can be found here, here, here, and here.
Also of note is this paragraph:
As against this superpowered form of stare decisis, we would need a superspecial justification to warrant reversing Brulotte. But the kinds of reasons we have most often held sufficient in the past do not help Kimble here. If anything, they reinforce our unwillingness to do what he asks.
After a bit of searching, it appears that this is the first federal court opinion to use the word "superspecial." A few other opinions contain the hyphenated phrase, "super-special" -- often as part of a quotation -- but Kimble is the first to employ the single-word term. Kimble also appears to be the first Supreme Court opinion to use the term, "superpowered." Several opinions in the lower court have employed this phrase (see, e.g., Twentieth Century Fox Film Corporation v. Marvel Enterprises, Inc., 277 F.3d 253, 255 (2002) ("In 1963, Marvel began publishing a comic book series entitled 'X-Men,' featuring a group of young, superpowered mutants led by Professor X, an older, superintelligent leader who sought to train his students and to protect them from a hostile society.")). But Justice Kagan's majority opinion appears to be the first instance of the Supreme Court using this word.
Kimble concerns a technical subject. But due to Justice Kagan's marvelous writing and references, the opinion is a delight to read.
The major intellectual property story of the spring has been a lawsuit by Marvin Gaye's estate against Pharrell Williams and Robin Thicke. A jury recently held that Thicke and Williams' song, "Blurred Lines," infringed on the copyright for Gaye's song, "Got to Give It Up." I have not been following the litigation very closely, and I do not have much analysis of my own to add regarding the litigation itself, but you can find additional analysis and criticism of the case and verdict here, here, here, here, and here.
While I am not a big fan of Pharell Williams or Robin Thicke, I am far more interested in the work of Weird Al Yankovic. Weird Al wrote an excellent parody of Williams' and Thicke's song, entitled "Word Crimes." Here it is:
While Weird Al made sure to get permission from Thicke and Williams to use their song as a basis for his parody, would Thicke and Williams' recent loss spell trouble for Weird Al?
Sherwin Siy thinks that Weird Al could potentially be affected by the "Blurred Lines" litigation. While the Gaye estate did not sue Weird Al in time to recover damages for copyright infringement, the estate may still be able to sue Weird Al to recover a share of his profits from the song. As Siy notes:
While awards of damages for copyright infringement are joint and several, awards of the infringers’ profits are only several. This means basically that each infringer is responsible for their own profits, and not anyone else. You can see how this works: though the Gaye estate was damaged a certain amount by everyone (here, let’s say, Pharrell, Thicke, and Yankovic) acting in concert, each of those three different people made a different amount of profit, separate attributable in part to their use of the song.
So while it’s too late for the Gaye estate to recover damages from Weird Al (or, to be more accurate, they already have, in a way), they could still try to go after him for his profits on “Word Crimes,” to the extent that those profits can be attributed to his taking from “Got to Give It Up.” And giving Al Yankovic a reason to worry is just one more reason to be upset with this verdict.
So even though Weird Al was not involved in the original infringement suit, he may still face difficulties if the Gaye estate seeks to capitalize on its recent victory. But if that victory ends up getting appealed, perhaps Weird Al will be free to continue marketing his parody without disruption.
So notes the ABA Journal, reporting on a letter that Katy Perry's lawyers sent to the 3D printing company, Shapeways:
Lawyers for Katy Perry sent a cease-and-desist letter to a 3D printing company selling Left Shark, the uncoordinated costumed character who danced next to the singer during the Super Bowl.
. . .
Shapeways complied and removed Left Shark from its catalog. According to its website, users can design a product with the help of a 3D printing app and upload it to Shapeways, which produces the product and sells it.
. . .
[The designer of the 3D printing model, Fernando] Sosa told CNBC he offered to pay royalties to market Left Shark, but he was turned down. Sosa has since placed his design on Thingiverse, which requires the downloader to do the 3D printing, according to Gigaom. Sosa is offering the download for free.
Above the Law has a portion of the cease and desist letter here.
Here's a video of Katy Perry's Superbowl performance where Left Shark made its appearance. The poor dancing that rocketed the shark to international renown begins at around 1:25:
Staci Zaretsky at Above the Law comments on this story as well. She notes that New York University Law professor, Christopher Sprigman, takes the position that Left Shark is a useful article and therefore cannot be copyrighted.
Going to Twitter, it appears that this story has developed further since Above the Law's initial coverage. Sprigman posted a link to this announcement which suggests that the US Copyright Office has taken the position that costumes are useful articles and therefore not subject to copyright protection.
Useful articles are design aspects of an item that cannot be separated from a utilitarian function that the item performs. As the Second Circuit Court of Appeals noted in Chosun International, Inc. v. Chrisha Creations, Ltd., quoting 17 U.S.C. § 101:
"[T]he design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work 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.") (emphasis added). For this reason, one may not copyright the general shape of a lamp, because its overall shape contributes to its ability to illuminate the reaches of a room. But one can copyright the fanciful designs imprinted on, or carved into, the lamp's base, so long as those designs are unrelated to the lamp's utilitarian function as a device used to combat darkness.
But things may get complicated when costumes are involved. As this post from Foley & Hoag's Trademark and Copyright Law Blog notes, while a costume may indeed be a useful article, the Chosun court went on to state that design elements of the costume may be separated from its function as a costume and subject to copyright. In the words of the court, parts of the costume that "invoke in the viewer a concept separate from that of the costume's 'clothing' function," the addition of which is "not motivated by a desire to enhance the costume's functionality qua clothing," may indeed be subject to copyright protection. (Chosun, 413 F.3d at 329-30).
This abstract, vaguely worded test practically begs eager intellectual property lawyers to file lawsuits.
Fortunately for Fernando Sosa, the designer of the 3D printed Left Shark, it looks like Sprigman is taking his views beyond the world of tweets and commentary. From Sosa's Twitter account:
Sosa may indeed need legal representation, since he has decided to share his Left Shark design on Thingiverse. While he is no longer selling the 3D printed Left Sharks, the cease-and-desist letter referred to Sosa violating copyright by using "shark images," as well as "shark costumes" in developing his 3D printed sculptures.
While Sosa may no longer be producing the sculptures himself, Katy Perry's claim over the images would likely extend to Sosa's digital design for the 3D printed Left Sharks. If Katy Perry continues to pursue her claim, there may end up being some interesting litigation over whether a costume can be copyrighted.
During the summer of 2014, everybody on the Internet briefly became a copyright expert, scholar, or commentator as people debated the copyright status of this photo taken by a monkey:
The copyright dispute over this photo revolved around whether the photographer whose camera the monkey stole to take the picture owned the copyright for the photo. The U.S. Copyright Office concluded that the picture could not be copyrighted since it was taken by the monkey, by including a notably-specific hypothetical scenario on page 8 of this vast report.
While the U.S. Copyright Office's say may put an end to the copyright speculation, Craig Whitney of the Socially Aware Blog notes that this picture may end up making its way back to intellectual property debates in the trademark arena.
Whitney highlights this application for trademark status which features a picture that looks strangely similar to the monkey selfie photo. Whitney writes:
A company identified as Saban Capital Group Inc., based out of the British Virgin Islands, has filed an application with the U.S. Patent and Trademark Office to register a trademark in the image of a monkey for use on various types of apparel—including wedding gowns (one can only imagine the market for such an item). The company claims to have been using this image in commerce since August 16, 2010—which we understand is prior to the date that the Monkey Selfie was taken. Nevertheless, the image in question bears a striking resemblance to a certain photograph of a fetching Indonesian primate. But given that no one owns a copyright in the Monkey Selfie, it is unclear whether the Trademark Office or anyone else will seek to prevent a drawing based on the image—if that is what this is—from being registered as a trademark for use on certain apparel.
The trademark application is still in the early stages, and I don't know nearly enough about that area of law to give an informed opinion on the application's merits or whether it may be challenged. But if any law students are reading this post, it might be a good idea to flag this story just in case Intellectual Property professors are considering writing exams on some of the stranger areas of copyright and trademark law.
I came across this fascinating letter by Christopher Jon Sprigman to Peter Brody, the lawyer for the Harvard Law Review Association. Sprigman informs Brody that the Bluebook -- a 500+ page tome of meticulous rules for legal citations -- is arguably not protected by copyright.
Sprigman points out that the copyright for the 10th edition of the Bluebook (now in its 19th edition) has expired. He goes on to argue that much of the 19th edition is indistinguishable, and that courts' requiring lawyers to use Bluebook citations transforms the Bluebook's rules from copyrightable material into "government edicts."
From the later paragraphs of the letter:
Based on what we’ve learned, we have embarked on a joint project with Public Resource to create and publish a public domain version of The Bluebook – a project we refer to as Baby Blue. Our project will mix public domain portions of the 19th edition with newly-created material that implements the Bluebook’s system of citation in a fully usable form.
In short, The Bluebook will soon face a public domain competitor. And when Baby Blue comes to market, The Harvard Law Review Association is likely to face questions regarding why the public – including pro se and indigent litigants – are obliged to pay for access to a resource that is indispensable to all those who seek justice from our courts. The Harvard Law Review Association is likely also to face questions regarding the financial transparency of the current structure.
I'm no expert in copyright law, so I'm not sure how far Sprigman's arguments will go. But I can't help but hope that Sprigman's Baby Blue project will succeed. Until then, however, I will get by with my hard copy of the Bluebook (and the publicly-available California Style Manual).
Kevin Underhill writes at Lowering The Bar about Paul Ingrisano's recent trademark for the symbol for pi, followed by a period. The information on the trademark is available here. The text of the trademarked mark is:
The mark consists of the pi mathematical symbol followed by a period.
Even though the trademarked symbol is π followed by a period, Wired reports that Ronald Millet, the attorney for Ingrisano, has demanded that the website, Zazzle remove all merchandise containing the symbol π, whether or not the symbol is followed by a period:
When Ingrisano discovered that California-based print-on-demand outlet Zazzle offered an array of clothing items that feature pi–which represents the ratio of the diameter of a circle to its circumference–he had attorney Ronald Millet send the company a strongly worded cease-and-desist letter this month demanding their removal.
. . .
Attorney Millet defends the cease-and-desist letter. He says that to his knowledge none of the designs sold through Zazzle included the exact trademark π.—pi followed by a period—but some of them were confusingly similar to his client’s design.
“Some clearly have a pi sign and look similar enough that folks out there might confuse it with products that my client also sells,” he says. “I saw the back and forth on the blogs of some of the sellers on Zazzle expressing their disappointment. I can see that as an understandable reaction, from a personal standpoint.”
At least Millet is sympathetic towards those who are reacting to his "missing the point of trademark law" (those are Professor Mark Lemley's words, not mine). Underhill has some more critical commentary.
Here, Ingrisano presumably added the period in the first place so the Patent & Trademark Office would be less likely to reject it as too "generic" to register. (See, e.g., USPTO, "Basic Facts About Trademarks.") If so, then he shouldn't be able to turn around and claim that a pi symbol without the period might confuse consumers into thinking an item is one of his products. And since his attorney has admitted that as far as they know, there are no products actually bearing a "π." symbol being sold anywhere on Zazzle ... well, it almost seems like he shouldn't have sent the letter in the first place, doesn't it?
I don't have much more to add, other than providing the full demand letter to Zazzle below. I think that the letter speaks for itself, so I won't criticize Ingrisano's pointless abuse of trademark law any further.
A store opened in the Los Angeles neighborhood of Los Feliz this weekend calling itself “Starbucks ,” only with the word “dumb” in front of the name. “Dumb Starbucks” had a Dumb Starbucks logo, a Dumb Starbucks menu, even Dumb Starbucks cups (in Dumb Grande, Dumb Venti and Dumb Tall).
. . .
As the FAQ reads: “Although we are a fully functioning coffee shop, for legal reasons Dumb Starbusks needs to be categorize [sic] as a work of parody art. So, in the eyes of the law, our “coffee shop” is actually an art gallery and the “coffee” you’re buying is considered the art. But that’s for our lawyers to worry about. All you need to do is enjoy our delicious coffee!”
The store has a Twitter account, where it shared a picture of its menu:
While Dumb Starbucks claims that can use Starbucks's logo and name because Dumb Starbucks is a parody, I think that they will have a difficult time arguing this in court. In Campbell v. Acuff-Rose Music, Inc., the Supreme Court held that a work of parody may be protected from lawsuits because it can be a "fair use" of the copyrighted work. The Court pointed out that it is dangerous for fair use evaluations to rely on judges' ability to determine when a parody is in good or bad taste, limiting the "threshold question" of whether a parody work is protected by fair use to "whether a parodic character may reasonably be perceived." But the Court added a footnote immediately afterwards noting:
The only further judgment, indeed, that a court may pass on a work goes to an assessment of whether the parodic element is slight or great, and the copying small or extensive in relation to the parodic element, for a work with slight parodic element and extensive copying will be more likely to merely “supersede the objects” of the original.
All that Dumb Starbucks seems to be doing is putting the word "dumb" in front of Starbucks's name and menu items. Beyond "Dumb," there seems to be no departure from Starbucks's original name, menu items, and logo. There is no other indication that Dumb Starbucks is criticizing Starbucks or its products.
While the Court in Campbell held that the parody song was protected fair use, the Court made sure to point out that "[t]his is not, of course, to say that anyone who calls himself a parodist can skim the cream and get away scot free." Here, Dumb Starbucks seems to be attempting to do just that.
And given Starbucks's litigious nature, I doubt that Dumb Starbucks will be around for very long.
UPDATE
Some further research indicates that the legal analysis here might be a bit more complicated, since Campbell was a copyright case, and Starbucks seems to be threatening trademark action against Dumb Starbucks. I am not an expert in intellectual property law, and I am certainly less of an expert when it comes to trademark. The central question in trademark cases is whether consumers will likely be confused that the infringing use of a trademark is being endorsed by or is associated with the trademark holder. That being said, it seems that Dumb Starbucks will still have a difficult time arguing trademark claims, since it is difficult to see how Dumb Starbucks's use of Starbucks's trademarks describes Dumb Starbucks's own products or how the use of the trademarks is part of an overall critique of Starbucks. And Dumb Starbucks's pervasive use of Starbucks's various trademarks will make it difficult for Dumb Starbucks to show that they are using only as much of Starbucks's trademarks as is reasonably necessary to identify Starbucks as the target of the parody.
King.com Ltd., the maker of “Candy Crush Saga,” the game played on Facebook Inc.’s social media pages and Apple Inc. products, wants to register “candy” as a trademark.
According to the database of the U.S. Patent and Trademark Office, the Malta-based company said it will use the mark with products including underpants, earmuffs, swimsuits, party planning, gambling services and amusement parks, as well as electronic-game services. The company said in its application that it began using the mark in commerce in February 2013.
The Los Angeles Times reports that this move has upset some people, including several game developers who have been informed that their games infringe on King.com's prospective trademark. Ars Technica quotes Mark Methenitis, chair of the Video Game Committee at the American Bar Association, who says that a "small army" of people will likely contest the registration of King.com's trademark.
Ars Technica elaborates that "candy" has already been used many times in the gaming context:
Indeed, a cursory search turns up roughly a thousand prior games that use the term "candy" in their title, as you'd expect for such a common word. That list includes PC shoot-em-up Bullet Candy, children's Game Boy Color title Tiny Toon Adventures: Dizzy's Candy Quest, and Candyz (a match-three puzzle game that bears more than a slight resemblance to Candy Crush). And that doesn't even get into board games like Candyland or gaming websites like Candystand.com. All of these works and properties would seem to have just as much claim on a word like "candy" in a video game context, if not more.
It will be interesting to see how many parties challenge King.com's application in the days to come. Given the common, previous use of the term in the game-title context and the large number of potential challengers, King.com might end up having a tough time registering its trademark.
The Des Moines Register reports on a lawsuit that ARAG North America has filed against Google as a result of a blogger's use of a picture of one of ARAG's executives:
ARAG North America, which provides legal insurance, sued the Internet giant last month in a case legal experts say exhibits an increasingly common clash over bloggers who post images online without permission.
The lawsuit concerns a head-and-shoulders photo of Ann Dieleman, a senior vice president and chief marketing officer with ARAG. The photo was published in 2009 on SexyExecs.blogspot.com, a forum where users post photos of executives with satirical comments.
The register reports that the picture remains posted on the blog (I have confirmed this as well). The blog itself is interesting, with its "voice" coming across as a strange combination of a snide Reddit commenter with the character "Rorschach" from Watchmen. For example:
Suit matched to hair. Literal interpretation of the white collar worker. Great moustache. Glasses. Bad tie. Skin that was last exposed to sunlight on the Sunday afternoon prior to starting the job in April of 1991.
But the blog is not what makes this story interesting -- it is the dispute between ARAG and Google, which owns Blogger, the company that hosts the SexyExecs blog (as well as this blog). The Register explains the progression of events that have led to the lawsuit:
The legal battle started in September 2012, when Trout sent Google a letter accusing the company of copyright infringement. Google declined to remove the photo without proof that ARAG held the copyright.
Trout responded by saying ARAG owned the copyright of the photo and requesting Google to remove it.
In an email, Google again declined.
. . .
Jeff Hermes, director of Harvard University’s Digital Media Law Project, said the lawsuit shows Google is willing to look at copyright infringement accusations on a case-by-case basis.
“Google is apparently not rubber-stamping all of these as they come through,” he said.
. . .
Hermes said the company has little financial incentive to fight for one photo on one blog. But the company, he said, might see a competitive advantage in protecting their users’ right to post images online.
It is interesting to see Google asserting itself against claims of copyright violations on blogs in cases like this. The article notes that Google received 25 million take-down requests in December 2013. One might expect a website faced with so many take-down requests to automatically comply with most or all of them in an effort to avoid liability. Indeed, expectations like these form the rationale for several important statutes, including section 230 of the Communications Decency Act.
But here, Google, seems to be taking a case-by-case approach, rather than automatically complying with ARAG's take-down request. And Google is doing this for a blog that has been inactive since 2011. This case makes me wonder how often Google actively resists take-down requests, rather than automatically removing content.
The Supreme Court has granted certiorari in Alice Corporation Pty. Ltd. v. CLS Bank, International. Here is the Federal Circuit's opinion. The SCOTUSBlog case file on the case is here. Bloomberg.com reports here, and the Electronic Frontier Foundation weighs in here.
The issue before the Court is:
Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.
The EFF takes a favorable view of the cert. grant, noting that there is a problem of "low-quality" and "abstract" software patents. Whether software is too much of an abstract idea to be patentable subject matter will likely be the crux of the issue, and it will be interesting to see how it turns out.
The BBC and The Guardian report about a UK lawsuit between Ministry of Sound and Spotify. Ministry of Sound, a company that creates compilation albums consisting of various songs in a specific order, is suing Spotify, a music streaming service that lets users create song playlists, arguing that Spotify users are creating playlists that copy Ministry of Sound compilations. Ministry of Sound argues that this infringes on their intellectual property rights. In an editorial on The Guardian website, Ministry of Sound's Chief Executive, Lohan Presencer, explains the basis of the lawsuit:
[Spotify users] were copying our compilations. They were posting them as their own playlists and calling them "Ministry of Sound". We assumed it was an oversight on Spotify's part and contacted the company to request it remove the offending playlists. It declined, claiming there was no infringement and it wasn't its responsibility to police its users.
Several rounds of legal letters later, this dispute will now be settled in court. We believe we have a clear cut case. After 20 years and more than 50m album sales, the value and creativity in our compilations are self evident.
Ministry of Sound argues that creating mashups requires skill and effort, noting that it has developed techniques for creating effective mashups such as avoiding repeated alternation of loud and soft songs, and ordering songs so that songs by an artist are followed by songs written by the artist. I am no expert on intellectual property law, and I'm certainly even less of an expert on UK intellectual property law, but I am interested in seeing how this case develops. The story also raises a question that I think is interesting: could a mashup artist claim copyright protection of his or her compilation and sue a party that copies this compilation by creating a playlist of songs that copy the order of the songs in mashup compilation?
Lyle Denniston reports here on the Supreme Court’s opinion in Association
for Molecular Pathology v. Myriad Genetics, Inc. The opinion’s text is available here.
I am not particularly well-versed in patent law,
but the outcome seems agreeable to me. Most
importantly, it overrides the decision by Judge Sanders in Boston Legal, Season
Three, Episode 21 (Tea and Sympathy) who
ruled that a doctor could obtain a patent on blood that could cure itself of
HIV. The script for the episode can be
found here. Judge Sanders’ opinion and ruling was:
Truth
be told, I couldn’t understand what the hell anybody was talking about in this
case. It was clear to me that Mr. Griffin, as I said, was an ass. The idea of
one person getting a patent on somebody else’s DNA—! Well, you don’t have to be a senile old goat
to be befuddled by that! But the most
confusing thing of all is the idea that AIDS
maybe can be cured, and progress is repeatedly being stalled by a bunch of drug companies and scientists going
for patents and fighting over profits. I
don’t doubt the sincerity of the doctor.
Legally, I suppose, he does have a patent, but I keep coming back to—this
is Simon Griffin’s blood. And he’s an ass. I rule in favor of the doctor. Adjourned.
Notably, Sanders played the “ass card,” meaning
that this case was of low precedential value due to its easy distinguishability
(not to mention the fact that it was a trial-level ruling). It is also interesting to note that the
Boston Legal case illustrates a scenario where getting a patent is not
necessarily a profit-driven endeavor.
The doctor in the episode sought to patent his patient’s blood in light
of the patient’s plan to sell his blood to the highest bidder. The doctor’s main aim in patenting the blood
was to ensure that nobody else could get a patent on the blood, and thereby
ensure that a cheap, generally available drug could be made available.
Admittedly, the Supreme Court’s opinion will have
a favorable impact on prices for some genetically derived cures. And it would be naïve to think that most
people who got ahold of patents on miraculous things would pursue the greater
good rather than private profit. But it
is important to also keep in mind that the patent route may not necessarily
always be the path of the villain.
