Group seeks cancellation of pro-football team mark

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Under the Lanham Act, which provides the situations in which a mark can be registered, there are also a number of prohibitions on registration. See Lanham Act § 2(a), 15 U.S.C. § 1052(a). One such bar on registration is a mark that disparages a person, institution, belief, or national symbol—and Native Americans have challenged trademark registrations on this ground in several instances. In particular, challenges over the names of football teams have arisen under this section, with varying degrees of success.

Most recently, a group of Native Americans have challenged the Washington Redskins’ mark. This challenge, which was filed in 2006 and argued in front of the Trademark Trial and Appeal Board in March 2013, is actually the second attempt. The first opposition made its way up to the Supreme Court, where certiorari was denied in 2009, leaving the Federal Circuit’s decision in favor of the mark holder standing.

Lawmakers are also seeking other means of challenging the Redskins mark—this time in the form of a bill introduced in the House of Representatives that would prohibit the term from being subject to trademark protection. The bill is entitled the Non-Disparagement of American Indians in Trademark Registrations Act of 2013, and if passed, would cancel any existing registered marks using the term “Redskins,” and prohibit future registrations.

In this situation, if the bill was passed, the Washington Redskins would not be forced to stop using the name for the football team. However, cancellation of the mark would allow the team’s ability to pursue infringers and allow other parties, such as retailers wanting to produce team apparel for fans, to use the mark without penalty. Historically, the NFL has actively protected its team marks through strict licensing agreements.

The first case relating to the Redskins mark, Pro-Football, Inc. v. Harjo, was successful in front of the TTAB, and resulted in cancellation of the mark. However, that decision was overturned on appeal because the initial challenge should have been barred by laches, and because the TTAB cancellation was unsupported by substantial evidence.

For more information:

http://articles.washingtonpost.com/2013-03-20/local/37865987_1_federal-trademarks-redskins-trademark-protection

http://articles.washingtonpost.com/2013-03-07/local/37535061_1_trademark-protection-judges-first-trademark

http://www.americanbar.org/publications/landslide/2012_13/march_april/joinder_over_a_year_after_the_america_invents_act.html

Supreme Court decides First Sale Doctrine applies for foreign-made works

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In a 6-3 decision, the Supreme Court overturned a controversial Second Circuit opinion and held that the first sale doctrine applies to a copyrighted work lawfully made abroad. This case, Kirstaeng v. John Wiley & Sons, is one that has been closely followed by many copyright scholars and publishers alike due to the potential implications on existing resale markets and foreign trade.

The petitioner-defendant, Kirtsaeng, is a college student who purchased foreign-made textbooks, which are less expensive than their U.S. counterparts but often contain identical material, and shipped them to the United States to sell to friends and other college students. Respondent-plaintiff publisher John Wiley & Sons filed a copyright infringement suit against Kirtsaeng, alleging that his shipment and resale of textbooks published outside of the United States was in violation of their copyright interests. At issue is the scope of the first sale doctrine, which is contained in Section 109(a) of the Copyright Act, the “importation” provision, Section 602(a)(1), and the meaning of the phrase “lawfully made under this title.”

The district court and Second Circuit held that Kirtsaeng could not benefit from the first sale doctrine because it did not apply to goods manufactured outside of the United States, and found Kirtsaeng liable for willful infringement of Wiley’s copyrights.

Supreme Court Justice Breyer’s majority opinion focused on the interpretations advocated by each party, and the decision, ultimately, turns on a combination of linguistic and grammatical considerations, the canon of statutory interpretation, along with the “deeply embedded” reliance on a non-geographical interpretation of the statute. “[T]he practical problems described by the petitioner and his amici are too serious, extensive, and likely to come about to be dismissed as insignificant—particularly in light of the ever-growing importance of foreign trade to America.”

For more information:

http://www.supremecourt.gov/opinions/12pdf/11-697_d1o2.pdf

http://www.techdirt.com/articles/20130319/08094922377/supreme-court-gets-it-right-kirtsaeng-you-can-resell-things-you-bought-abroad-without-infringing.shtml

http://www.law.cornell.edu/uscode/text/17/109

http://boingboing.net/2013/03/19/supreme-court-to-wiley-publish.html

Laches, Trademark Enforcement, and Injunctive Relief

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One key aspect of protecting a trademark is policing the mark. A failure to police a mark may render the mark owner’s trademark unprotectable if another party begins infringing the mark without recourse, especially if the activity goes on unchallenged for a long period of time. However, a recent ruling by the 5th Circuit Court of Appeals demonstrates that even delayed enforcement can protect a trademark owner’s rights.

In Abraham v. Omega, the 5th Circuit Court affirmed a lower court’s grant of a partial injunction against the infringer, even though the infringer proved his laches defense, because imposition of an injunction would not expose the infringer to “substantial prejudice.”

Abraham, the plaintiff in this action, filed for a declaratory judgment that he and his business were not infringing on the defendants’ trademarks. The defendants in this action are 32 fraternities and sororities, and they asserted counterclaims for trademark infringement and unfair competition under the Lanham Act and under Texas state law.

Since 1961, Abraham has run a business that manufactures wooden paddles and decorations for sororities and fraternities; these products have remained the same since the business first started. The paddles are wood, with the shape of Greek letters and crests carved into the wood. Abraham operated unchallenged until 1990, when the Greek Organizations first contacted him about a licensing deal. Abraham declined to enter any license arrangement because he had been using the Greek marks and terminology for 29 years already without a license. Since then, the Greek Organizations have contacted him sporadically, complaining about his use of the marks, inviting him to enter into licensing agreements, and threatening to sue. During this time, Abraham continued business as usual, and also invested heavily into machinery and advertising, in addition to having to rebuild his business after several fires and a tornado.

In this suit and in response to the Greek Organizations’ counterclaim of trademark infringement, Abraham argued the defense of laches. At trial, the jury found that Abraham proved his laches defense. However, the court balanced the equities of issuing an injunction and determined that laches did not bar the entry of a permanent injunction on Abraham’s future use of the marks at issue, and fashioned a partial injunction. On appeal, the 5th Circuit affirmed, finding that the lower court did not abuse its discretion in fashioning the injunctive relief.

This decision turned on the issue prejudice against the infringer—both in terms of the laches defense and in terms of the permanent injunction. Laches has three elements: (1) delay in asserting trademark rights, (2) lack of excuse for that delay, and (3) that delay caused undue prejudice to the infringer. The jury found that Abraham had sufficiently shown undue prejudice by the delay, particularly in that Abraham rebuilt his business three times and would not have done so had he known that the Greek Organizations would later sue him.

Imposition of a permanent injunction requires the party seeking the injunction to prove: (1) irreparable injury; (2) inadequate remedies at law; (3) equity is warranted considering the balance of hardships; (4) an injunction is not against the public interest.

However, a finding of laches will not bar a permanent injunction by itself. Rather, the prejudice experienced by the infringer in a laches situation must be “substantial” in order for laches to bar an injunction. In this case, only one of Abraham’s products met the “substantial prejudice” test; for all other products, the permanent injunction is in place.

For more information:

http://www.forbes.com/sites/oliverherzfeld/2013/02/28/failure-to-enforce-trademarks-if-you-snooze-do-you-lose/

Abraham v. Omega, No. 12-10525 (5th Cir. Feb. 7, 2013)

The Copyright Mystery of Sherlock Holmes

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Sir Arthur Conan Doyle wrote the Sherlock Holmes stories at various times between 1887 and 1927. Leslie S. Klinger is a living expert on the mystery and thriller genres in literature, including the Canon of Sherlock Holmes. The Canon “refers to the four (4) novels and fifty-six (56) stories by Sir Arthur Conan Doyle featuring the fictional character of Sherlock Holmes and other related characters and story elements,” according to a declaratory judgment lawsuit recently filed in federal court concerning the copyright status of the works.

Klinger believes that the Conan Doyle Estate, Ltd. is wrongfully claiming copyright ownership in the certain aspects of the Canon of Sherlock Holmes. Klinger was on the receiving end of an attempt at copyright enforcement by the Sir Arthur Conan Doyle Estate. Klinger was co-editing a collection of stories inspired by the Sherlock Holmes canon and feature characters and other elements from the Holmes stories. The Doyle Estate contacted the publisher demanding payment of a license fee, and claiming that the character is still protected under copyright until 2023, and asserting that if the book was published without payment of the license fees, it would block distribution of the book through many major distributors. The publisher subsequently dropped the book from publication. Klinger then filed a declaratory judgment action in federal court. The action seeks a judicial determination that the copyright for the works in question have expired in the United States and thus are in the public domain. The suit also requests that the court enjoin the Doyle Estate from further asserting rights in the works at issue.

Copyright in the United States confers exclusive rights to the copyright holder for a limited period of time. While that period of time lasts for quite a long time (for works created after January 1, 1978, life of the author plus 70 years), the work will eventually be released into the public domain. But for works published prior to January 1, 1978, there are different standards. For works published between 1923 and 1977 that were published with proper notice and renewed properly, they may be protected still depending on the year of publication. And for works published before 1923, as many of the Sherlock Holmes stories were, copyright has already expired and they are in the public domain.

Once the copyright term was expired, works automatically enter the public domain, meaning that anyone is able to copy, distribute, display, and create derivative works based upon the work.

These different standards can be the source of much confusion. However, many content owners resist this notion and maintain that certain works or characters are still protected under copyright law.

For more information:

Mike Masnick, “Arthur Conan Doyle Estate Sued to Show that Sherlock Holmes Is Public Domain,” http://www.techdirt.com/articles/20130215/15093722002/arthur-conan-doyle-estate-sued-to-show-that-sherlock-holmes-is-public-domain.shtml (Feb. 15, 2013).

http://lawprofessors.typepad.com/trusts_estates_prof/2013/02/suit-over-sherlock-holmes-copyright.html

http://www.mediabistro.com/galleycat/scholar-sues-arthur-conan-doyle-estate-over-sherlock-holmes-copyright_b65550

http://copyright.cornell.edu/resources/publicdomain.cfm

Interpreting Social Media Terms of Service

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Social media can be a powerful tool for all kinds of messages—including citizen-level accounts of breaking news. Huge, newsworthy events on both national and international levels have broken on social media sites such as Twitter. And, for the most part, this kind of in-the-moment, 140-character relay of information has been a boon to the consuming public. However, confusion over social media terms of service (TOS) has resulted in legal battles over content on these sites.

The most notable example of this comes in the form of several now-iconic photos that were posted on Twitter by a photojournalist, Daniel Morel, during the earthquake that devastated Haiti in 2010. The photos were placed on a newswire, Agence France-Presse (AFP) without payment to the photojournalist, who then sued the newswire for copyright infringement. After several years of litigation, the court has finally issued an opinion, holding in favor of the photojournalist.

The crux of AFP’s argument is that the Twitter TOS granted it a license to take and use any photos posted on the social media site. In a Jan. 14, 2013 opinion, the district court judge granted the photojournalist’s motion for summary judgment that AFP and the Washington Post are liable for copyright infringement, and stated: “Construing the Twitter TOS to provide an unrestrained, third-party license to remove content from Twitter and commercially license that content would be a gross expansion of the Twitter TOS.”

However, this opinion does not mean that Morel will recover the millions of dollars that he is asking for, as the judge rejected the photojournalist’s arguments regarding statutory damages. Morel argued that each individual reprinting of the images constituted a separate infringement that AFP and the Post are liable for. The judge rejected this, explaining that it is the “violative act” that constitutes infringement. In this case, that means the act of copying the image from Twitter, not the further distribution of copies.

For more information:

http://www.techdirt.com/articles/20130116/07144421700/court-once-again-explains-to-afp-that-twitters-terms-dont-give-it-right-to-use-any-photo.shtml

http://arstechnica.com/tech-policy/2013/01/news-flash-for-the-media-you-cant-sell-photos-grabbed-from-twitter/

 

Government Access to Digital Data

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In light of the recent ruling that there’s no expectation of privacy in information transmitted over a wireless router, many people may be wondering how other online information is treated under the law. Techdirt recently posted a link to a useful Pro Publica guide to digital data and accessibility by law enforcement.*

This guide discusses popular digital data types, such as phone records, cell phone location information, IP addresses, emails and text messages.  Obtaining IP address information has been a key aspect in many of the recent BitTorrent lawsuits.

As the guide explains, many of these types of information can be collected by law enforcement with only a subpoena, rather than a warrant. The standard for granting a subpoena is lower than that required to get a warrant, thus making the information easier for law enforcement to access. To obtain a warrant, the police must show that they have probable cause to search or seize evidence. A hunch that evidence may be found is not enough—the police have to establish that evidence of a crime will probably be found. By contrast, a subpoena requires only a reasonable probability that the materials sought will produce information that is relevant to the general investigation.

A subpoena is a legal document that generally requires the recipient to turn over the information specified at a future date, which is also specified in the document. The recipient may be directed to provide information about himself or about third persons, such as when ISPs receive subpoenas directing them to turn over subscriber information. If you receive a subpoena from your ISP, it is a good idea to contact an attorney to discuss your options.

*We provide these links for general informational purposes only. We make no claims about whether the guide’s contents are legally correct, or suitable for your particular circumstances. Neither the guide linked to nor the contents of this blog are legal advice. You should obtain legal advice from a licensed attorney regarding your own unique circumstances.

For more information:

http://www.propublica.org/special/no-warrant-no-problem-how-the-government-can-still-get-your-digital-data

http://www.techdirt.com/articles/20121204/13100221222/no-warrant-no-problem-government-can-still-get-your-data.shtml

https://ssd.eff.org/

Cease and Desist…or buy a license?

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Copyright enforcement doesn’t always come in the form of a subpoena notice from an ISP. Often, copyright holders will send alleged infringers a cease and desist letter, indicating that they believe their rights are being infringed, and requesting that the activity stop, without communicating any demand for payment. This invites an opportunity for discussion and negotiation without the hostility often linked to lawsuits. If negotiation in response to the cease and desist letter fails, copyright holders typically then file a lawsuit. This course of action allows for some disputes to be resolved prior to litigation—thereby saving tons of time and reducing (or eliminating) the expenses associated with a full lawsuit.

However, not everyone follows this path—some companies, like Getty Images, have been skipping the cease and desist letters entirely, and simply sending demand letters and threats of lawsuits. These large-scale copyright holders seem to be taking evidence of potential infringement and using it as part of an enforcement-based business model.

Others have been taking a different tack, and treat alleged infringers as potential licensees. Dreamline, a stock photo website, sends alleged infringers a cease and desist letter that also includes the option of obtaining a license, for as little as $8, so that the alleged infringer can continue using the copyrighted image legally. The company’s CEO said that this model has been successful for them, and often leads to purchases of larger licenses. This route may be cheaper in the long-run for people who receive the letters.

No matter what the pattern, those who receive letters alleging copyright infringement should contact an attorney knowledgeable in copyright law to look into the validity of the claim, and make sure that they are informed about all of their available options.

For more information, see:

http://www.techdirt.com/blog/casestudies/articles/20121113/18461221040/micro-stock-photo-agency-prefers-converting-customers-to-cracking-down-infringers.shtml

Unsecured Wifi: Nothing is Truly Private

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A Pennsylvania judge recently affirmed that a person connecting to another’s unsecured wifi does not have an expectation of privacy in that wireless connection. The defendant, who was suspected of downloading child pornography, challenged the police’s use of a tracking tool called “Moocherhunter,” which identifies the geo-location of hackers and individuals who “mooch” on the wireless connections of others.

The defendant lived across the street from the owner of the wireless router, connected to that wireless router, and downloaded child pornography. With proper warrants, the police searched the computers belonging to the owner of the wireless router, and discovered that the owner was not the responsible party. Using “Moocherhuner,” the police were able to find the defendant, who was in possession of child pornography. The defendant objected to the police’s use of Moocherhunter on the grounds that it was an unreasonable search and seizure, as it was conducted without a warrant. However, the judge ruled that there was no search under 4th amendment law because the defendant voluntarily shared information with a third party (the owner of the wireless router), and that he had no expectation of privacy in signals sent from his computer to the wireless router.

While the issue of expectation of privacy may seem new in the context of wireless routers, the concept has strong roots in criminal law and the 4th amendment law. The 4th Amendment protects against unreasonable search and seizure, and many cases have dealt with what constitutes a “search” and what kind of searches are “unreasonable.” At bottom, an action by the police is not a “search” for 4th Amendment purposes when the person searched (the accused) has no reasonable expectation of privacy in that information or the means by which the information was transmitted. Generally, a person has no expectation of privacy in information that he or she gives to a third party—instead, they assume the risk that the third party may share that information with others.

It is always a good idea to take care with what information people transmit through the Internet, but especially so in light of the recent confirmation of this principle—that you have no expectation of privacy in information shared over a wireless connection. Remember, nothing is truly private.

For owners of wireless routers, it may be wise to use a strong password to secure those routers. While it is still possible for sophisticated hackers to hack into the router, this may prevent others people from accessing your wireless, whether it is for something innocuous, like streaming Netflix, or something illegal, like downloading child pornography.

For more information:

http://www.forbes.com/sites/kashmirhill/2012/11/26/another-reason-not-to-download-child-porn-using-your-neighbors-wi-fi/

http://cyb3rcrim3.blogspot.com/2012/11/the-wireless-signal-moocherhunter-and.html

“6 strikes” Copyright Alert System to go into effect in 2013

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Early next year, five major Internet Service Providers (ISPs) will roll out the implementation of the “six strikes” plan. The “six strikes” plan, or Copyright Alert System (CAS), is the result of a private-party agreement between five major ISPs (AT&T, Cablevision, Comcast, Time Warner, and Verizon) and the MPAA and RIAA. Last summer, the agreement created the Center for Copyright Information (CCI), which will administer the program.

Put simply, this is a way for ISPs to privately take charge of copyright enforcement.

The creation of the CCI and the Copyright Alert System comes on the heels of the demise of SOPA and PIPA, two pieces of legislation that were aimed at increasing government power for the purpose of combating copyright violators. Both SOPA and PIPA were met with huge backlash on the Internet, including an Internet blackout on January 18, 2012 in protest of SOPA which included such participants as Wikipedia, Reddit, and Google.

CCI bills the Copyright Alert program as educational, and that the alerts are designed “help subscribers understand the significance of protecting copyright in the digital environment, to advise them about the importance of avoiding inadvertent or intentional online distribution of copyrighted content, and to suggest legal ways to obtain digital content.” The alerts only apply to peer-to-peer file sharing activity.

Alerts come in three phases: (1) notifications; (2) acknowledgments; and (3) mitigation. During the first phase, subscribers will send educational materials along with the notice that that the account may have been misused for potentially illegal file sharing. Acknowledgement notices will “reinforce the seriousness of copyright violations,” and will include information on “how to address the activity.” In the final phase, the ISP may take mitigation measures, including temporarily reducing the speed of the subscriber’s internet, redirecting internet pages to a page that requires the subscriber to contact the ISP or to educational materials about copyright—and any other measures that the ISP deems necessary.

Each ISP will have its own system of notices, though the first notice is “educational” in nature. CCI is adamant that termination of a subscriber’s account is not required under the alert system. However, it is important to note that termination of service is not expressly prohibited, either.

The CCI has developed an independent review of the copyright alerts that will be operated by the America Arbitration Association. Any subscriber can request an independent review after receiving an alert, but before any mitigation measures have been taken. The filing fee is $35, which can be waived by the AAA. Review by the AAA is non-exclusive, and subscribers are free to challenge any action in a court of law.

Initially, the CCI planned on implementing the alert system in the end of 2012. However, on Nov. 28, the organization announced that implementation would be pushed back to early 2013, “[d]ue to unexpected factors largely stemming from Hurricane Sandy which have seriously affected our final testing schedules.”

To obtain legal advice as to whether you should provide a counter-notice to DMCA notices you have received, contact the copyright attorneys at Antonelli Law.

For more information:

http://www.copyrightinformation.org/faq

http://torrentfreak.com/att-starts-six-strikes-anti-piracy-plan-next-month-will-block-websites-121012/

http://www.cnn.com/2012/11/30/tech/web/six-strikes-internet/index.html?c=tech

http://www.ibtimes.com/how-six-strike-program-works-time-warner-comcast-att-other-isps-working-together-combat-online

Wiley & Sons brings Dummy Lawsuits

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BitTorrent suits alleging illegal download of movies, from Hollywood films like The Hurt Locker to accusations of numerous porn downloads, have been in the headlines for months. But film companies aren’t the only ones going after alleged downloaders. Ebook publisher Wiley and Sons has been more quietly suing alleged illegal downloaders as well.

Wiley alleges that John Doe defendants downloaded titles from Wiley’s Dummies series using BitTorrent. Recently, Wiley was awarded a $7,000 default judgment against a defendant who allegedly downloaded WordPress for Dummies. This award breaks down into a $5,000 award for copyright infringement, and $2,000 for trademark counterfeiting—much less than the maximum copyright statutory damages that Wiley requested.

These suits are very similar in strategy to the porn BitTorrent cases—filing suit against numerous John Does identified only by IP address, then subpoenaing information from the ISPs. However, unlike the porn cases, these lawsuits have more or less flown under the radar and have not garnered as much publicity. In one suit, filed in April 2012, Wiley has demanded a jury trial. If the case goes to trial, it will be the first time that evidence relating to BitTorrent and IP addresses is tested by the courts.

Despite the lower settlement demands and smaller risk of embarrassment from an ebook downloading case, those who receive notice from their ISPs that their IP address has been linked to copyright infringement should consult an attorney. If you have any questions about file sharing lawsuits, please contact the attorneys at Antonelli Law Ltd.

For more information about Wiley and Sons ebook download suits:

http://torrentfreak.com/7000-fine-for-sharing-wordpress-for-dummies-on-bittorrent-120702/

http://www.teleread.com/copy-right/john-wiley-sons-wins-default-judgment-in-peer-to-peer-lawsuit/

http://www.publishersweekly.com/pw/by-topic/digital/copyright/article/49342-wiley-goes-after-bit-torrent-pirates.html