Pop culture fan conventions are huge in the new millennium.  “Cons,” as they are often called, have sprung up all over the country and grown into a massive cultural phenomenon.  There are Cons for comics, movie and television franchises, toys and much more.  By its own reckoning, Comic-Con boasts more than 130,000 attendees a year.  Hit television shows like the Big Bang Theory celebrate Cons as part of hip “nerd culture.”

However, there is a less seemly side of Cons—IP infringement.  It’s easy to find unlicensed fan art for sale and knock-off products being sold without the proper licensing.  Owners of big IP franchises like comic book characters and toy lines may have tolerated much of this activity in the past, but some are taking notice.

For example, in recent years, the LEGO Group has cracked down on enforcement of its trademarks and other IP being used by fan Cons and fan clubs.  It has promulgated guidance that has addressed things like limitations on sales of Con t-shirts bearing LEGO Group IP assets like the LEGO^® name and logo.  In fact, some LEGO^® fan clubs have had to change their names due to new IP guidelines issued by the company in the last couple of years.  Arguably, the LEGO Group has charted a reasonable approach, balancing protection of its IP while  not entirely prohibiting or discouraging use of its IP assets in many permissible ways by fans; other companies can be more or less aggressive.

Con vendors selling “fan art,” should be aware of the risk of a claim for IP infringement.  Fan art like “original” artwork depicting copyrighted characters, fan websites or fan novels/stories can all implicate IP infringement.  In Warner Bros. Entertainment Inc. v. RDR Books, the court found that fan art in the form of an encyclopedia of “fictional facts” regarding the Harry Potter universe—which appropriated plotlines, summaries of scenes or key events and language used in the novels—established a case of copyright infringement.  See Warner Bros. Entertainment Inc. v. RDR Books (S.D.N.Y. 2008) 575 F.Supp.2d 513, 538.  The court engaged in an extensive “fair use” analysis and rejected that defense.  Id. at 551.  Among other things, the court observed that the “actual use of the copyrighted works is not consistently transformative.”  Id.

Fan art quite often can also be characterized as a “derivative work,” and the law of copyright protects the copyright holders right to control the creation of derivative works (i.e. works that merely change an original work into a new mode of presentation like the novelization of a movie).  See Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc. (2d Cir. 1998) 150 F.3d 132, 143.

As explained in earlier posts, the law of fair use is complicated and requires a careful review and evaluation of numerous factors, such as purpose and character of the use and the effect of the use upon the potential market for or value of the copyrighted work.  (See “Google’s Effort to Digitize Millions of Books” and “Using ‘Borrowed’ Images in Your Blog”).

The step by step questions laid out in my post “Using ‘Borrowed’ Images in Your Blog” are just as apt as regards to fan art, as many of the same principles apply.  The application of the fair use factors is a case by case determination, but broadly speaking much fan art does not really amount to parody, critical commentary or substantial transformation so as to fall into the realm of fair use.  Though certainly some will.  Moreover, because supposedly “everyone does it” or the alleged infringer is a small time operation making little profit, contrary to some popular sentiment, does not, in and of itself, mean the fan art constitutes fair use.

Thus, some fan art at Cons treads on very shaky grounds and Con goers may want to be wary of supporting non-authorized works that violate the IP rights of the content creators whose works have given rise to these conventions that we enjoy.

[This post is part 3 of a 3 part IP Basics Series]

In a recent series of IP Basics: Copyrights, Trademarks and Trade Secrets, Oh My! and What are “Trade Dress” and “Trade Secrets?”, we considered a number of different types of intellectual property (IP).  In this post, we will discuss those ubiquitous IP related symbols we see on products (and other works) and what they really mean.

The Copyright Symbol.  Use of the copyright symbol Ⓒ is regulated by federal copyright law.  For works first published after March 1, 1989, a formal copyright notice is optional.  17 U.S.C.A. § 401(a).  There are several formats for this notice proscribed by federal statute.  Federal law specifies that the notice may be in any one of the following forms:  (1) the symbol Ⓒ (the letter C in a circle), (2) the word “Copyright” or (3) the abbreviation “Copr.”  17 U.S.C.A. § 401(b)(1).

While not required, including a copyright notice on a published work can negate an infringer’s ability to rely on the “innocent infringement” defense to avoid the imposition of certain damages.  17 U.S.C.A. §§ 401(d) and 402(d).

A copyright notice was required for works published before March 1, 1989 (the effective date, as to the United States, of the international copyright treaty known as the Berne Convention).  General publication before that date without a copyright notice could cause a work to enter the public domain if the copyright owner failed to cure the omission of the mandatory copyright notice.  There are, however, some limited circumstances in which the omission of the copyright notice from authorized copies distributed by the copyright owner does not invalidate the copyright in a work.  For example, a copyright is not lost if an otherwise required copyright notice was left off in violation of an express written requirement contained in the owner’s authorization of the public distribution of the work.  17 U.S.C.A. § 405(a)(3).

The Trademark Symbol.  Where a trademark is not registered, those claiming a protectable trademark or servicemark can make use of the “TM” and “SM” symbols.   The former signals a claimed trademark, while the latter is used with servicemarks (a servicemark is a trademark used to identify a service rather than a product).  No specific federal statutes authorize the use of the “TM” symbol, limits its use, or states definitively what it does or does not convey to the public.  Southern Snow Manufacturing Co. v. Snow Wizard Holdings, Inc. (E.D. La. 2011) 829 F.Supp.2d 437, 452 (“Southern Snow”).  Historically, however, the designation has been used as a way of alerting the public to a claim of ownership of a trademark.  Southern Snow, at p. 452.  Such a claim does not necessarily equate with any actual, protectable rights.  “…[T]he TM symbol does not mean that the party has trademark rights in the name or can ensure that the mark is capable of serving as a trademark…”  Southern Snow, at p. 453-454.

However, using the “TM” and “SM” symbols can help establish a trademark.  The courts may consider such use as evidence demonstrating that a name or mark is being used in the sense of a trademark or servicemark to reflect the origin of the goods or services, a factor in the overall determination of the existence of trademark protection.  The fact that no symbol is used to designate an alleged trademark is evidence that the mark is not being used as a trademark.  T.A.D. Avanti, Inc. v. Phone-Mate, Inc. (C.D. Cal. 1978) 1978 WL 21444, *6.

We previously wrote about the copyright battle between two of the largest cheerleader uniform manufacturers. Plaintiff Varsity Brand, Inc. claimed that Star Athletica, LLC had infringed its copyrights by manufacturing cheerleader uniforms with similar design elements, like stripes, chevrons, zigzags and color blocks. The Supreme Court granted certiorari to resolve at least nine conflicting tests for “separability”: the test as to whether the decorative elements can be “identified separately from, and …existing independently of, the utilitarian aspects of the article.”  (17 U.S.C. § 101).

Justice Thomas, writing for the 6-2 majority established a two-part test:

[T]he artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two-or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic or sculptural work either on its own or in some other medium if imagined separately from the useful article.

Relying entirely on the text of The Copyright Act, the Court concluded that “if the arrangements of colors, shapes, stripes and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied to another medium-for example, on a painter’s canvas-they would qualify as ‘two-dimensional … works of …art’ §101.”

The Court upheld the 6th Circuit’s decision that design elements, like those on Varsity’s cheerleader uniforms, were subject to copyright protection but remanded the case for further determination as to whether Varsity’s surface decorations “are sufficiently original to qualify for copyright protection.”  Fn 1.

The Court’s decision may have wide implications in the clothing and furniture industries, where design elements are often intertwined with the utilitarian elements of the products.

[This post is part 2 of a 3 part IP Basics Series]

In the last post, we discussed copyrights, trademarks and the difference between them. In this post, we will consider the concepts of “trade dress” and “trade secrets.”

Trade dress refers generally to “the total image, design, and appearance of a product and ‘may include features such as size, shape, color, color combinations, texture or graphics.’”  Clicks Billiards, Inc. v. Sixshooters, Inc. (9th Cir. 2001) 251 F.3d 1252, 1257. The “look and feel” of a particular restaurant’s design or of a particular manufacturer’s packaging are common examples of protectable trade dress. Proving trade dress infringement requires that a party show (1) that its claimed trade dress is non-functional; (2) that its claimed trade dress serves a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the offender’s product or service creates a likelihood of consumer confusion. Id. at 1258. The concept of secondary meaning refers to the circumstances in which the purchasing public associates the trade dress with a particular source. Id. at 1262. Think of something like an Apple store design with a distinctive architectural style and visual elements that the public may well come to associate with Apple as a particular vendor.

A trade secret is information, including a “formula, pattern, compilation, program, device, method, technique, or process,” that (1) has economic value due to the fact that it is not generally known to the public or others that might use it where (2) the owner makes reasonable efforts to maintain its secrecy. See Cal. Civ. Code § 3426.1(d). A trade secret must also be non-obvious and not readily ascertainable to competitors.

Think of the classic example—a secret recipe or formula. It has value to me, the manufacturer, precisely because I am the only one who knows that recipe and can sell that particularly formulated product into the marketplace, and my product commands a premium price for that “authentic” product.

Among the most basic of the rights conferred by ownership of a trade secret is the right to prevent its acquisition, use or disclosure by a competitor. There are nuances as to what can constitute a trade secret and the scope of protections depending on whether state or federal trade secret law is applied.

Unlike a copyright, the information protectable as a trade secret can be an idea or method. Unlike a trademark, the information protected is not an expression of the source of a product but rather, most typically, a formula or method for producing the product itself. Thus, the “Coca-Cola” name is a trademark, while the formula for its soft drink is a trade secret (and apparently kept locked up in a vault in the company’s museum in Atlanta, Georgia). The artwork on a “Coca-Cola” can or bottle might well be protected by copyright. The shape of the classic glass bottle might be protected by trade dress.

In the next post, we will consider some of the symbols used by owners of different types of IP to identify their IP and, in some cases, to enhance their ability to protect that IP.

[This post is part 1 of a 3 part IP Basics Series]

When discussing intellectual property (IP) it is sometimes easy to confuse the blurred line between the various species of IP such as copyrights, trademarks and trade secrets. But with a little background and understanding of the different works and types of information that are protected, the distinction between copyrights, trademarks and trade secrets becomes clearer.

A copyright is, essentially, the bundle of rights that an author has in an original creative work of expression. Those rights include the right to control the duplication of the work and to sell it for profit. A common type of work protected by copyright is a written work such as a novel. However, copyright can protect other types of works as well, such as paintings, movies, music, sculpture, works of architecture and design.

Among the important and fundamental limitations on the scope of copyright protection is the principal that a copyright protects the expression of a work and not abstract ideas. A copyright differs from other IP protections in that regard (compare this to patents and trade secrets which may protect original ideas and methods). Thus, copyright will protect the words of my written novel, but generally will not protect the abstract ideas or themes expressed in the story. For example, I could not put my name as author on the Harry Potter series of books and attempt to sell the books to the public. I could, however, write my own novel about an orphaned  child wizard who overcomes his evil arch nemesis. Of course, there are nuances and limitations that are beyond the scope of this post, such as the right to control “derivative works” and the point at which a knock-off character (say, my orphaned child wizard) might be so similar to the original that it infringes upon rights in a copyrightable character in a work. For example, Comedy Central recently attempted to prevent Stephen Colbert from bringing his Stephen Colbert character to the CBS The Late Show.

A trademark protects a “mark,” which may be a word, name or symbol, used by a particular proprietor to identify and distinguish the goods of that proprietor. See Cal. Bus. & Prof. Code § 14202(a). A trademark serves as identifier of the source of goods, as against competing products, and functions as a means of preserving a product’s reputation in the market place. Sun-Maid Raisin Growers of California v. Mosesian (1927) 84 Cal.App. 485, 494.  Examples of trademarks are the “Coca-Cola” name or a logo like the familiar Starbucks icon.

A “trade name” is a related but distinct concept. It connotes the identifier of a particular business, including what is often described as the goodwill—that is, the reputation built up in the marketplace—associated with the “good name” of the business. See Cal. Bus. & Prof. Code § 14202(d) (“‘Trade name’ means any name used by a person to identify a business or vocation of that person.”).

Thus, a copyright and a trademark protect distinct types of intellectual property. Copyright, simply put, protects original works of expression from copying for a limited period of time while trademarks protect expressions used to identify the source of goods in the marketplace and can last in perpetuity. Phoenix Entertainment Partners, LLC v. Rumsey (7th Cir. 2016) 829 F.3d 817, 825. Sometimes a company logo can be protected both by copyright and trademark law.

In the next post, we will consider the concepts of “trade dress” and “trade secrets.”

In a recent episode of CBS’ The Late Show with Stephen Colbert, the host lampooned an apparent cease and desist demand from lawyers contending that Colbert improperly revived his “character” from The Colbert Report, his prior show on the Comedy Central network.

For the uninitiated, some explanation may be in order. Before his current gig on CBS as host of The Late Show, Colbert portrayed the narcissistic, politically right-wing spin doctor of truthiness and host of The Colbert Report, a late night talk show on Comedy Central. Colbert played his over-the-top caricature for years, often as a foil to his left-wing liberal counterpart on Comedy Central, John Stewart.

During The Late Show’s coverage of the national conventions earlier this Summer, Colbert brought back the Comedy Central Stephen Colbert character for a cameo and that is when someone decided to sic the lawyers on him.

Now, I do not pretend to know the details of the assertions made regarding Colbert’s use of his prior host persona. It does, however, present an interesting question in the law of intellectual property. Can it be that an actor like Colbert may not actually own or have a right to use his own name and persona?

One has to raise an eyebrow—as Colbert himself is known to do—at the suggestion that a network has the right to control the use of the name and persona of a performer like Colbert. Still, is it not also true that, as least in a case like Colbert’s, an actor may create such a unique “character” around his own name and persona that his employer might obtain intellectual property rights in the character, much like in the case of an author of a comic book who creates a new superhero for her publisher?

In a landmark 1950s federal court case, the Ninth Circuit Court of Appeals considered whether a literary character, Sam Spade, was copyrightable. In that case, the court observed:

It is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by the copyright.

Warner Bros. Pictures, Inc. v. Columbia Broadcasting System, Inc. (9th Cir. 1954) 216 F.2d 945, 950.

This case has given rise to the “story being told” doctrine, though this area of law is murky, with different tests arguably being applied based upon graphically represented characters like cartoon characters versus purely literary characters versus visually depicted characters in television and movies. See discussion in Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., Inc. (C.D. Cal. 1995) 900 F. Supp. 1287, 1296.

Based on the “story being told” test, however, a strong argument can be made that the Colbert character is copyrightable. If any character falls into the category of the “story being told,” it is very likely Stephen Colbert’s character Stephen Colbert. The persona of the character himself was the driving force behind the show and the focus of its humor. Colbert’s right wing caricature is certainly a “unique character” with “specific qualities” that remain constant in his depictions, qualities that quite arguably transcend the actor playing the character. Metro-Goldwyn-Mayer, Inc., supra, 900 F. Supp. at 1296.

With all due respect to Mr. Colbert, when an actor creates or portrays a character that, in and of itself, becomes an icon and the focus of a story or other media, like a Rocky or a James Bond, that character may well give rise to intellectual property rights separate and apart from the actor himself or herself.

Can a corporation protect its logo by copyright as well as by trademark law?

Traditionally, when one thinks of works protected by the law of copyright, one thinks of substantial works of authorship such as a novel, a song or a painting. And, indeed, among the required elements to establish a copyright in a work is that the work contain a certain degree of originality and creativity.

It has been recognized that a corporate logo used as a trademark is nonetheless copyrightable where the logo qualifies, in and of itself, as pictorial or graphic work that meets the general requirements of the law of copyright. See 1 McCarthy on Trademarks and Unfair Competition § 6:18 (4th ed.). Courts have found that a corporate logo can incorporate a “creative drawing” which is a creative work of the sort at the “core” of those types of works protected by the Copyright Act. Bouchat v. Baltimore Ravens Limited Partnership (4th Cir. 2010) 619 F.3d 301, 311.  Indeed, it has been observed that “pictures and logo designs used as marks are no less pictures and designs merely because they appear on labels and in advertisements.” McCarthy, supra, at § 6:18; see Bleistein v. Donaldson Lithographing Co. (1903) 188 U.S. 239 (a pictorial work is no less a subject of copyright protection because it is used to sell goods).

To be copyrightable as a pictorial, graphic, or sculptural work [pursuant to 17 U.S.C. § 102(a)(5)], a work “must embody some creative authorship in its delineation or form.”  37 C.F.R. § 202.10. The logo must demonstrate “artistic features” above and beyond serving as a mere identifier of the source of goods or services.  See Fabrica Inc. v. El Dorado Corp. (9th Cir. 1983) 697 F.2d 890, 894 (pictorial, graphic, or sculptural works must “stand alone” as “works of art,” with “artistic features” separate and apart from their utilitarian purpose); see also John Muller & Co. v. New York Arrows Soccer Team, Inc. (8th Cir. 1986) 802 F.2d 989, 990 (logo for the New York Arrows soccer team lacked the minimum requisite level of creativity to be considered a “pictorial, graphic or sculptural work”).

Even tradedress can be copyrightable where it rises to the level of a unique, creative work of authorship. See Reader’s Digest Association, Inc. v. Conservative Digest, Inc. (D.C. Cir. 1987) 821 F.2d 800, 806 (Reader’s Digest has combined and arranged common typeface and other elements to create a unique graphic design and layout.)

If your company is ever in a position to have to be thinking about pursuing an infringer where trademark protection of a logo is problematic for some reason or perhaps insufficient to bar the particular infringing use at issue, it may be advantageous to consider other theories such as copyright. At the very least, this is a reminder of the need for “creative” thinking about the nature and source of intellectual property protections that may yield alternative sources of protection in many circumstances.

It’s been widely reported in the news and on this blog—a jury in a Federal copyright infringement case has reached a verdict favoring legendary rock band Led Zeppelin, finding that it did not plagiarize the iconic guitar riff from the band’s hit song “Stairway to Heaven.” However, almost nobody is talking about the law behind that verdict.

In the law of copyright, just how similar is too similar when it comes to music? We all know that in the world of popular music, musical styles come and go. There is no question that when a certain “sound” becomes popular, that sound will influence and be echoed by other artists. However, by what standard does the law judge if a musical work is too similar to a prior work?

Among the things that must be proven in any case of infringement of a musical work protected by copyright is that the alleged infringer copied protected elements of the original work. Swirsky v. Carey (9th Cir. 2004) 376 F.3d 841, 844. That may be done by showing that the new work is “substantially similar” to the original work. Two tests are employed by the courts in the 9th Circuit, an “objective extrinsic test” and a “subjective intrinsic test.” Id.

The objective extrinsic test turns on “whether two works share a similarity of ideas and expression as measured by external, objective criteria.” Id. This requires an “analytical dissection,” basically breaking the work down into particular components and comparing them for similarities. Any infringement case involving musical works will involve musicology experts opining on matters such as rhythm, tempo, pitch, chord changes, lyrics, and other stylistic and compositional elements. The courts have observed that there is no “uniform set of factors to be used” in judging the compositional similarity of two works. Swirsky v. Carey, supra, 376 F.3d 841 at 849.

The subjective intrinsic test turns on “whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar.” Three Boys Music Corp. v. Bolton (9th Cir. 2000) 212 F.3d 477, 485, quoting Pasillas v. McDonald’s Corp. (9th Cir.1991) 927 F.2d 440, 442.

Another relevant consideration in the Ninth Circuit’s infringement jurisprudence is what is known as the “inverse-ratio rule.” Under that rule, the greater the showing made as to the actual access to the original work by the alleged infringer, the less rigorous the showing of substantial similarity must be. Three Boys Music Corp. v. Bolton, supra, 212 F.3d at 486. In other words, if the evidence were to show that a songwriter had seen the original work performed just before writing his or her hit song that supposedly infringed that original work, then less evidence is required to prove the substantial similarity between the two works. In the Stairway to Heaven case, the plaintiff offered evidence that Led Zeppelin and the plaintiff’s band Spirit had toured together and  Spirit had performed the song that included the opening guitar section that Led Zeppelin had allegedly copied. Access aside, the jury concluded that the works were not sufficiently similar.

Accordingly, infringement of a musical work involves a complicated analysis under the law. That analysis can turn on circumstantial evidence as to how the songs came about, as well pure musical theory. So all that glitters is not necessarily gold in the law of music infringement.

Last week the final judgment was entered by United States District Court Judge William Alsup in favor of Google following a jury trial in its long running legal battle with Oracle over Google’s use of bits of the JAVA programming language in Google’s Android smartphones. With a single check mark on a verdict form, the jury in Oracle America Inc. v. Google Inc. (United States District Court for the Northern District of California, Case No. C 10-03561 WHA) found that Google’s use of certain JAVA components was “fair use.”

For six long years Google and Oracle had locked horns, including an earlier trial and trip up to the United States Supreme Court. Oracle, the owner of the JAVA programming language developed by Sun Microsystems, sought more than $9 billion dollars in damages, claiming that internet giant Google’s mobile smartphone operating system, Android, infringed portions of JAVA.

Oracle’s copyright claims included the contention that the Android operating system improperly utilized the structure, sequence and organization of certain components of the JAVA programming code known as “APIs,” essentially modular chunks of software that serve as the interface to certain program libraries implementing different software functions. Use of such publicly available APIs, short for “application programming interface,” is common place in the software industry. On this issue, the question for the jury was whether or not the use of JAVA’s APIs by Google amount to fair use under the law.

It has been observed that the use of APIs is arguably not particularly transformative, an important consideration in deciding fair use (for a broad primer on the boundaries and rules of fair use under copyright law, see my earlier postings Google’s Effort to Digitize Millions of Books is Fair Use and Using “Borrowed” Images in Your Blog). On the other hand, the open source nature of JAVA and the functionality of APIs — standardized code modules designed to function as interfaces with other code — arguably mitigate in favor of a finding of fair use. The jury agreed and vindicated Google’s position that it was fairly building on industry standards and open source protocols.

Of course, the battle will rage on in the appellate courts when Oracle likely appeals. Followers of IP law may be treated to more musings on the law of fair use by Ninth Circuit or even the United States Supreme Court.  Stay tuned.

Two years ago, a federal judge rocked the music industry in holding that pre-1972 recordings may be protected under state copyright laws and are protected by California copyright law.  This holding, in a case brought against SiriusXM, had vast potential ramifications, as it would mean that radio and internet radio stations playing such recordings would have to pay out millions of dollars in royalties that they had never anticipated paying. CBS Radio, however, just scored a legal victory that, if it stands up, would effectively eliminate any artist’s ability to recover royalties for pre-1972 recordings.

Seeking a way to shift the paradigm of the SiriusXM case and the string of similar suits that preceded and followed it, when ABS  Entertainment, which owns the pre-1972 recordings of Al Green and others, sued CBS, iHeartMedia, and Cumulus, CBS decided to throw something of a legal “Hair Mary.”  It argued that “CBS does not play vinyl sound recordings.”  Rather, it plays only re-issued or remastered versions of pre-1972 recordings.

United States District Judge Percy Anderson grabbed CBS’s Hail Mary in the end zone, finding that the sound engineering process in remastering an album constitutes “copyrightable originality.”  As such, CBS was permitted to treat the recordings as post-1972 recordings.

Judge Anderson’s ruling comes despite ABS’s warning that accepting CBS’s remastering argument would result in the owners of sound recordings trumping artists’ rights over their works in all cases.  The judge addressed this point in a footnote, distinguishing the “original expression added by a sound engineer during the remastering process” from the naked conversion between formats (i.e., vinyl to MP3).

The reason that this issue exists is that, on February 15, 1972, Congress brought sound recordings under federal copyright law, but not retroactively. Prior to 1972, musical recordings were protected only be state copyright laws, many of which are based in common law, court-made rules that are not codified in statutes and, at least in many instances, do not require registration in order to protect recorded material.  Works that are copyright protected by state common law are harder to track than those protected by a registered federal copyright.

[This post was written by Jason Horst.]