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.
Here’s a link to a very interesting and informative discussion in today’s New York Times about the complicated topic of copyright protection for fashion designs: http://www.nytimes.com/roomfordebate/2014/09/07/who-owns-fashion?emc=edit_th_20140908&nl=todaysheadlines&nlid=44964334
From the “you thought you had seen everything” department, we bring you the question of who — if anyone — owns the copyright to the now famous “monkey selfie” picture. By now, most of you probably have heard or read about this story. A British nature photographer was travelling in a national park in Indonesia and left his cameras unattended for a few minutes. A band of black macaque monkeys – thought to be among the most intelligent breeds of monkeys — wandered by. One of them grabbed an unattended camera and took a series of “selfies” which actually are quite excellent, stunning and humorous. Here are some examples of the monkey selfies:
Ultimately, the photos ended up on Wikipedia, who refused to take them down after objection from the photographer because, in Wikipedia’s view, the photographer doesn’t own any copyright rights in the monkey selfies since he didn’t take the pictures.
In the ordinary case, a person who takes a selfie normally would own any copyright rights that would attach to the selfie. However, under United States copyright law, a non-person like a monkey cannot own a copyright. Therefore, it is clear (please hold your laughter!) that the monkey doesn’t own the copyright in his/her selfies.
But the question remains: does anyone own a copyright in the pictures? If the photographer had exercised some creativity by setting up the camera, arranging the shot, setting the exposure, etc., and then the monkey just pushed the button, the situation would not be that much different from a picture taken using a timer so the photographer might have a good argument that he owns the copyright. But that does not appear to be the facts here – instead, the pictures appear to be the product of the random acts of the monkey or maybe (if possible???) the creativity of the monkey not the photographer. So it does not appear that the photographer has any claim to the copyright.
For legal purposes, a monkey could be considered “property” under certain circumstances. There have been cases that have held that the owner of the property can own the copyright that might attach to the property in some way – think of a random video of a dog doing something funny. Which could mean that the owner of the monkey is the owner of the copyright. However, the monkey that took the selfie here was a wild monkey. It may be possible to determine whether Indonesia owns its wildlife, but such a result seems doubtful. Instead, the most likely result here is that Wikipedia is correct: no one owns the copyright in the monkey selfies but instead the photos are in the public domain.
Do I Need A Design Patent, A Copyright Registration Or A Trade Dress Registration (Or An “All Of The Above” Strategy)?
You have created a product that has a unique and original design. Now what – how do you obtain intellectual property protection for the design? Your design may be eligible for a design patent, a copyright or trade dress protection (or maybe all three!). Here’s a brief primer on these three important forms of protection:
Design Patents: A design patent protects new, original and ornamental aspects of an article for manufacture and can cover either the overall appearance of the article or specific design elements. Design patents only protect non-functional elements of an article. A functional element, which is not protected by the design patent, is an element that is essential to the use or purpose of the article. A design patent grants the owner the right to prevent others from making, using, selling, offering to sell or importing any article that embodies the design protected by the patent. The test for infringement is a pretty simple one: Would an ordinary person who buys and uses this design, and who is familiar with this type of design, confuse the allegedly infringing design with the patented design?
A design patent requires much more upfront work and costs to obtain protection than a copyright registration or trade dress registration but provides an extremely strong form of protection. A design patent remains in effect for 14 years after the date of issuance.
Copyright: A copyright protects an original work of authorship fixed in any tangible medium of expression. In order to be original, the work must be an independent creation and must possess at least a minimum level of creativity. The amount of creativity necessary for copyright protection is very low, and often is described as “modest” and “very slight.” A difficulty that often arises in obtaining copyright protection for product configurations is that the copyright only protects the design elements of the product design and not the functional and utilitarian elements of the design. Consequently, the design elements must be able to be identified separately and must exist separately from the functional and utilitarian elements of the product configuration. This is known as the “conceptual separability” requirement. If a product’s design and function cannot be separated, copyright protection is not available.
An item infringes a copyright if the accused item is “substantially similar” to the copyrighted work. This is a simple test to state but often can be a difficult one to apply.
A copyright registration is not required for protection but is highly desirable because the registration provides significant benefits and remedies if infringement should occur. A copyright registration is inexpensive and can be obtained fairly quickly. A copyright generally remains in effect for the life of the author plus an additional 70 years, and does not have to be renewed.
Trade Dress: A particular aspect of a product configuration, or the overall configuration of the entire product, may be protected as trade dress (which essentially is the same as a trademark, but applied to a product configuration). A product configuration can qualify for trade dress protection if the configuration attains what is known as “secondary meaning.” The concept of “secondary meaning” is a short-hand way of saying that the particular configuration has come to be recognized by consumers as an indicator of the source of the product. Think the Coca Cola bottle.
The test for trade dress infringement is whether a competitor has adopted a similar trade dress that causes a “likelihood of confusion” in the minds of consumers. In other words, infringement exists when a consumer is likely to be confused into believing that the product of the infringer originates with or is sponsored by the legitimate owner of the trade dress.
A product configuration acquires trade dress protection through use. Registration is not required but is highly advisable and confers a number of benefits to the owner of the registration. The trade dress may be registered with the US Patent and Trademark Office. It cost more money and takes more time to obtain a trade dress registration than a copyright registration, but generally less time and money than a design patent. Trade dress protection does not have any specific term – the protection exists for as long as the product is sold. A trade dress registration must be renewed every 10 years.
As can be seen, design patents, copyrights and trade dress each have different requirements for protection and different costs involved to obtain protection. A business that has developed what they believe is a strong product design or configuration should consider all forms of protection as appropriate to provide a strong deterrent against infringement.
Consider the following situations: a person or business hires an outside contractor to design a website or logo, to take some photographs, to do some graphics, to design a proprietary computer program, or even take some family photographs. In such situations, who owns the copyright to the works created? Most people would answer that the person who paid for the work owns the copyright. But that is not correct. The person who paid for the work owns the physical object that was created. But the person who paid for the work does not automatically own the copyright just because they hired and paid someone to create the work. On the contrary, the person who created the work – not the person who paid for the work – owns the copyright. And to make matters worse, the person who paid for the work cannot legally make any copies of the work, and will be guilty of copyright infringement if a copy is made.
While the foregoing might seem strange, there is a simple solution: the person paying for the work needs to enter into a simple written agreement with the person to doing the work to make sure that ownership of the copyright ends up in the right place. If the work is one that falls within one of the nine categories that are eligible for work made for hire status under 17 USC 101, then the agreement simply needs to state the work is a work made for hire. If the work does not qualify as a work made for hire, then the agreement should simply provide that the contractor transfers the copyright to the person paying for the work.
It really is as simple as that, but experienced copyright counsel should be consulted for the language of an appropriate agreement.
In a 6-3 decision, the United States Supreme Court found that the copyright doctrine known as the “first sale doctrine” applies to copyrighted items purchased outside the United States but re-sold in the United States. The case is Kirtsaeng v. John Wiley & Sons, Inc. and the decision can be found here: http://www.supremecourt.gov/opinions/12pdf/11-697_d1o2.pdf.
Explained simply, the “first sale doctrine” means that the copyright protection for an otherwise protected work ceases to exist upon the “first sale” of the work. In other words, the copyright owner only has control of the work through the first sale. Therefore, you can re-sell CDs and DVDs, artwork, books, electronics, and all manner of other works to whomever you please after the first sale. Swap meets and websites like eBay and Craigslist exist in large part because of the protection of the first sale doctrine.
The Kirtsaeng case challenged the first sale doctrine in an important way. In the Kirtsaeng case, the issue was whether copyright holders of works that were made outside the US can require that a person have the copyright holder’s permission for resale. A lower appellate court said yes, thereby seriously undermining the first sale doctrine.
The Supreme Court reversed, holding that the language of the statute that sets forth the first sale doctrine, as well as the context of the statute and the common law history of the first sale doctrine favored an interpretation of the doctrine that was not geographically limited. The Supreme Court also noted that a geographic limitation on the first sale doctrine would threaten ordinary scholarly, artistic, commercial and consumer activities, which were harms that Congress could not have intended in enacting the first sale doctrine.
The significance of the Kirtsaeng case cannot be overstated. Had the Supreme Court accepted a geographically limited interpretation of the first sale doctrine as urged by the respondent, copyright owners would have had a strong incentive to shift the manufacture of their works outside the US, which would have allowed them to obtain almost perpetual control over the re-distribution of their works. The danger of such a result was obvious on many levels, and would have severely damaged re-sale e-commerce sites like eBay and Craigslist. Fortunately, the Supreme Court adopted a practical, common sense interpretation and the first sale doctrine is safe.