Copyrights are very powerful rights but often are not fully understood or protected by business owners. Here are some important tips about copyrights with which all businesses should be familiar:
- Register: Businesses should identify and register their copyrights within 90 days of the publication of the copyrighted work.
- Notice: Even though not required, we strongly recommend that businesses place an appropriate copyright notice on all copyrighted works to discourage infringement and cut off the “innocent infringer” defense.
- Rights: All businesses must make sure that they have the right (documented in writing) to use any copyrighted materials created by others. Copyright issues sometimes can be hard to spot so we strongly recommend that businesses retain an experienced intellectual property attorney to conduct a periodic intellectual property audit.
- Agreements: All businesses must make sure they have appropriate written agreements in place with employees and other creative personnel regarding ownership and use of copyrighted materials (including, most particularly, materials created by employees and contractors) as well as agreements establishing the right to use copyrighted materials owned by others.
- Insurance: Businesses involved in any way in areas that involve the creation and use of copyrighted materials should explore obtaining insurance for infringement claims. Please note that most commercial general liability policies do not cover intellectual property claims – the purchase of separate coverage usually is required.
- Infringement: Businesses should take seriously any infringement of its copyrighted materials as well as claims of infringement asserted by third parties. In both situations, the business should promptly consult with an experienced copyright lawyer to determine an appropriate and cost-effective course of action.
On September 30, 2015, we posted about a recent case that addressed whether decorative aspects of cheerleader uniforms could be the subject of copyright protection. Our September 30 post can be found here: https://affinitylaw.wordpress.com/2015/09/30/three-cheers-for-the-wood-flooring-recent-cases-confirm-copyright-protection-for-cheerleader-uniforms-and-wood-flooring-pattern/
The United States Supreme Court recently decided to review the case. More information can be found in this recent article in The Hollywood Reporter: http://www.hollywoodreporter.com/thr-esq/supreme-court-hear-fight-cheerleader-889321
As the article notes, while the case nominally is about cheerleader uniforms, the Supreme Court’s decision could have far-reaching implications for Hollywood and could set boundaries on the copyright protection afforded to costumes. Stay tuned to this space for updates.
Many of our readers may have read with interest the recent media about the copyright litigation concerning Led Zeppelin’s iconic “Stairway to Heaven” where the owners of the rights to a song entitled “Taurus” put out by the 60s band Spirit have sued Led Zeppelin for copyright infringement by the song “Stairway to Heaven.” This is just the latest in a long line of lawsuits involving alleged infringement and plagiarism of the rights to popular songs. Accusations of musical plagiarism are a recurring phenomenon, but only rarely end up being heard in formal legal proceedings. Many readers will remember the 2015 case where a jury awarded damages of $7.2 million against Robin Thicke and Pharrel Williams for infringing the copyright in Marvin Gaye’s “Got to Give It Up.” These artists settled out of court because their songs too closely resembled songs by other artists:
Given the enduring popularity of “Stairway to Heaven,” the potential infringement damages could be massive – it will be interesting to see if Led Zeppelin chooses to litigate or settle out of court. Stay tuned.
Launching A Website Or Commencing Advertising By Itself Is Not Sufficient Use In Commerce Of A Service Mark
Trademark owners often mistakenly assume that they merely have to put up a website or commence advertising to gain trademark rights in a service mark used on the website or in the advertising. By its March 2015 decision in Couture v. Playdom, Inc., the Federal Circuit Court of Appeals confirmed that such activity, without actually providing the services offering on the website or in the advertising, does not constitute sufficient trademark use.
In Couture, the Federal Circuit tackled the question of “whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act§ 45, 15 U.S.C. § 1127.” Section 45 provides that a service mark is used in commerce “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State” (emphasis added). Citing decisions in the Second, Fourth and Eighth Circuits, the Federal Circuit held that Section 45 requires the actual rendering of services for there to be use in commerce.
The Couture decision highlights what can happen when a trademark owner does not do sufficient strategic planning. The trademark owner in Couture filed its application in May 2008 and registration was granted in January 2009. The trademark owner’s application was under Section 1(a) of the Trademark Act (i.e. based on actual use) even though the trademark owner had only placed the service mark at issue on a website that was “under construction” at the time of the application and registration. The trademark owner did not actually begin rendering services until March 2010. Under such circumstances, the trademark owner could have better protected his trademark rights by filing an application under Section 1(b) of the Trademark Act based on an “intent to use.”
Here’s an interesting post written by our associate attorney Ashley Franco about the recent Volkswagen scandal:
In 1973 Volkswagen (VW) settled with the Justice Department for $120,000 for cheating on its emissions test. Now more than forty years later, Volkswagen has again been caught cheating on its emissions test. Apparently VW installed software in its diesel vehicles which was specifically designed to pass emissions tests without actually being in compliance.
So what exactly is the harm done by Volkswagen? The Environmental Protection Agency states that the cheating software allows specific VW models to pass emissions test while actually emitting more than 40 times the legal limit. This means that the VW vehicles with the cheating software emit 40 times more that the amount of harmful fumes allowed. VW has admitted to creating the software specifically to lower the emissions reported by its vehicles during inspections. Cheating on its emissions tests has already resulted in a dramatic plunge in VW’s stock price. VW also lost its CEO and is facing billions of dollars in fines.
What everyone should learn from VW’s mistake is that when dealing with state and federal laws, you don’t want to swindle your way into compliance. It is important to consult with a lawyer to make sure that your business practices are in conformity with applicable laws and regulations. Even if you are not intentionally breaking the law, you may still be inadvertently in violation of a law and/or regulation, thereby putting you at risk of civil and criminal liability.
In VW’s case, under the Clean Air Act (the federal law designed to control air pollution), each violation may result in up to a $37,500 fine. VW is suspected of having more than 400,000 violations. A $37,500 fine multiplied by 400,000 violations results in over $15 billion in potential fines being faced by VW simply by cheating on its emissions tests.
This isn’t the first time a car company has been fined by US regulators. Last year General Motors (GM) was facing civil and criminal penalties for installing faulty ignition switches in over 2.6 million vehicles. However, GM reached a $900 million settlement with US officials. The main difference between GM’s liability and VW’s potential liability is that VW’s cheating devices did not cause any deaths, whereas GM’s faulty ignition switches did. That doesn’t mean that there won’t be suits filed. A recent survey by Big Law Business of the nation’s court dockets identified that twenty federal lawsuits have already been filed against VW based on the diesel scandal. As of the date of this posting there have not been any settlements by VW so it is still too early to predict how the VW scandal will resolve. However, companies certainly can learn from the VW scandal that it simply does not pay to cheat on compliance with federal and state laws and regulations.
While The Scope Of Copyright Protection Is Broad, Two Recent Cases Involving Yoga Positions And Recipes Show That There Are Limits
In a recent post in this space, we commented on several cases that illustrated that the scope of copyright protection is extremely broad (see here: https://affinitylaw.wordpress.com/2015/09/30/three-cheers-for-the-wood-flooring-recent-cases-confirm-copyright-protection-for-cheerleader-uniforms-and-wood-flooring-pattern). Two recent cases show that while copyright protection is broad, there still are limits:
Bikram’s Yoga College of India, L.P. v. Evolution Yoga, LLC: In this well-publicized case, the issue was whether a sequence of 26 yoga positions and two breathing exercises practiced in a specific order, called the “Sequence” and developed by Bikram Choudhury (a seminal figure in making yoga so popular in the United States and throughout the world and the creator of Bikram Yoga, sometimes called “hot yoga”), could qualify for copyright protection. In 1979, Choudhury published the book “Bikram’s Beginning Yoga Class” that includes descriptions and photographs of the Sequence in practice. In 2002, Choudhury also registered a copyright on the “compilation of exercises” contained in his book. In 2009, the defendants founded their own yoga studio and offered “hot yoga” classes that included the Sequence. Choudhury sued for copyright infringement claiming that the defendants infringed on his copyrighted works by offering yoga classes featuring the Sequence.
On October 8, 2015, the Ninth Circuit Court of Appeals held that the Sequence falls squarely within the exclusion detailed in Section 102(b) of the Copyright Act, which excludes from copyright protection “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embedded in such work.” The Ninth Circuit found the Sequence was a process for obtaining physical and emotional fitness and was, therefore, not copyrightable.
Tomaydo-Tomahhdo, LLC v. Vozary: The issue in the Tomaydo-Tomahhdo case was whether a book of recipes could qualify for copyright protection. The plaintiff was a restaurateur who created and ran a successful restaurant and delivery catering business. In 2012, the plaintiff assembled a book of recipes that had been developed for the restaurant. The defendant was a former partner in the plaintiff’s business. He copied the plaintiff’s recipes and used them in a competing catering business, and the plaintiff sued him for copyright infringement.
On October 20, 2015, the Sixth Circuit Court of Appeals held there was no copyright infringement because neither the recipes themselves nor the book which compiled the recipes were entitled to copyright protection. In so holding, the Sixth Circuit explained that the recipes themselves are not covered by copyright because they are simply listings of facts (i.e. the ingredients) and functional instructions how to assemble the ingredients. Likewise, the Sixth Circuit held that the recipe book did not have any originality (such as original commentary, pictures, etc. by the author) that qualified for copyright protection separate from the recipes themselves.
In both the Bikram Yoga case and the Tomaydo-Tomahhdo case, the parties claiming copyright protection may have been able to take steps to protect their intellectual property other than merely claiming copyrights in the materials addressed by those cases. As always, we highly recommend that businesses consult with experienced intellectual property counsel to assess what IP protection may be available to the business.
Make Sure There Is Evidence Of A Bona Fide Intent To Use Before Filing That Intent-To-Use Application!
In the recent case of MZ Berger & Co. v. Swatch AG, the US Court of Appeals for the Federal Circuit affirmed a decision by Trademark Trial and Appeal Board (TTAB) to sustain an opposition to MZ Berger’s intent-to-use application for the trademark “iWatch.” By way of background, an intent-to-use application allows an applicant to essentially reserve a trademark so long as it has a “bona fide intent to use” the trademark in the future. The issue that has arisen in numerous cases over the years is what exactly is required to establish the requisite bona fide intent to use.
In the MZ Berger case, the evidence showed that MZ Berger only had an “aspiration” to reserve trademark rights in the iWatch name in case in decided to develop an associated watch. MZ Berger had never sold watches before, and there was no evidence that MZ Berger had ever taken any steps towards developing a watch product. The Federal Circuit therefore concluded that there was no evidence of a bona fide intent-to-use the iWatch mark.
The take-away from the MZ Berger case is that a mere subjective intent to use a trademark in the future is not a sufficient basis to establish a bona fide intent to use. Instead, if an intent-to-use application is challenged, the applicant must be able to produce objective evidence showing that concrete steps had been taken as of the date the application was filed to start commercializing the product or service to be marketed and sold using the proposed mark.
Three Cheers for the Wood Flooring! Recent Cases Confirm Copyright Protection for Cheerleader Uniforms and Wood Flooring Pattern.
Two recent cases show that the bar to obtain copyright protection is very low, and that designs on a variety of media can qualify for copyright protection if the design is not functional and demonstrates a minimal level of creativity:
Varsity Brands v. Star Athletica: The issue in the Varsity Brands case was whether the decorative designs on cheerleading uniforms were eligible for copyright protection. By way of background, the Copyright Act does not provide copyright protection for the functional aspects of clothing but it is possible to obtain copyright protection for purely decorative features of clothing. Where to draw the line between these two bedrock principles of copyright law in the fashion design context has perplexed many courts over the years.
In the Varsity Brands case, the Sixth Circuit Court of Appeals held that the decorative elements of a cheerleading uniform (such as chevrons, stripes, etc.) could be “identified separately from, and are capable of existing independently of, the utilitarian aspects of [the] uniforms” and consequently that the graphic designs on cheerleading uniforms are copyrightable subject matter if sufficiently creative. The court’s holding in such regard is an application of the copyright doctrine known as the “separability” doctrine.
In so holding, the Sixth Circuit was careful to distinguish between fabric design and dress design. Fabric design covers designs printed on a finished garment and have been treated by the courts as features that are not functional and therefore are subject to copyright protection. Dress design graphically sets forth the shape, style, cut and dimensions for converting fabric into a finished garment and has been held to be functional and thus not capable of copyright protection.
Home Legend LLC v. Mannington Mills, Inc.: The issue in the Home Legend case was whether a two-dimensional laminate flooring design qualified for copyright protection. By way of background, laminate flooring consists of three functional layers. Laminate flooring manufacturers then add a decorative layer called “décor paper” which places two-dimensional artwork on top of the laminate flooring.
The decorative layer at issue in the Home Legend case was a layer that simulated the distressed look of a maple floor after years of wear and tear. The Eleventh Circuit Court of Appeals held that the design was separable from the flooring itself (another application of the separability doctrine) and displayed a sufficiently minimum level of creativity to “hurdle the low bar of copyright originality.”
Ninth Circuit Rules En Banc That Actors Do Not Have Protectable Interests In Their Individual Film Performances
On January 7, 2015, we posted about the case of Garcia v. Google, Inc., which was a case then-pending in the Ninth Circuit Court of Appeals that raised the issue whether an actor has a protectable interest in his or her individual film performance. (See Here for prior post: https://affinitylaw.wordpress.com/2015/01/07/do-actors-have-protectable-copyright-interests-in-their-own-individual-film-performances/). While the case arose in the unique context of an actor’s performance in what she believed was a regular film being re-cut into an anti-Islamic propaganda film, the case nevertheless had important implications in the copyright field and for the entertainment and film industries.
On May 18, 2015, an en banc panel of the Ninth Circuit issued its decision in the Garcia case and (as expected by most copyright lawyers), the Ninth Circuit held that actors do not enjoy a copyright interest in their individual performances – primarily because they do not fix their “acting performance in a tangible medium, as required by 17 U.S.C. § 101.” Thus, the actor cannot be the author or owner of the work since the fixation is done by the film crew, not the performers.
The Ninth Circuit also rejected the arguments that actors in a film enjoy privacy right protections, any “right to be forgotten,” or any protection from emotional distress arising from copyright law.
The Ninth Circuit en banc decision in Garcia can be found here: http://cdn.ca9.uscourts.gov/datastore/opinions/2015/05/18/12-57302.pdf
The Washington Redskins’ ongoing battle to try to preserve its’ “Redskins” trademark was dealt a serious blow, and Washington appears to be at grave risk of losing its trademark rights in the iconic team name, because of a federal court decision issued today.
Several years ago, a Native American named Amanda Blackhorse commenced an administrative proceeding with the litigation branch of the United States Patent and Trademark Office called the Trademark Trial and Appeal Board (TTAB), by which Ms. Blackhorse challenged the Redskins trademark. In June 2014, the TTAB ruling in favor of Ms. Blackhorse and cancelled six Redskins trademarks owned by the Washington team, finding that Washington could not have trademark rights in the “Redskins” name because such name was offensive and disparaging.
Washington appealed the TTAB ruling. On July 8, 2015, a federal district judge in Virgina upheld the TTAB decision. An article discussing the district judge’s decision can be found here: http://talkingpointsmemo.com/livewire/washington-redskins-mascot-trademarks-cancelled
Losing trademark rights in the “Redskins” name would be a huge problem for the Washington team. According to the Washington Post, Washington’s lawyers assessed the team’s value at $2.4 billion in August 2014, with $214 million tied to brand management and the Redskins brand. So an appeal from the district judge’s decision is likely if not inevitable. It should be noted that Washington lost trademark rights in the “Redskins” name in the Trademark Office in 1999, but was able to regain the rights through court litigation. So even though Washington is behind, the game is only in the third quarter and there still is a lot of litigation left – stay tuned!