In a case that confirms the advisability of registering your copyright in software and websites, the Ninth Circuit Court of Appeals has denied statutory damages in the context of a continuing infringement.  The copyright act does not allow statutory damages or attorney’s fees if the infringement “commenced” prior to the registration of the copyright (subject to a 3 month relation back exception for newly published works). 17 U.S.C. Sec. 412.

In Derek Andrews v. Poof Apparel, the defendant had copied the decorative tags that the plaintiff attached to its clothing items, and attached them to its own clothing line.  The tags gave rise to the copyright claim (the case also involved trademark infringement claims).  On the copyright claim, the District Court awarded the plaintiff $15,000 in statutory damages and  $296,090.50 in attorneys' fees.  The Court of Appeals stated that the Copyright Act leaves no room for discretion on this point: “in order to recover statutory damages, the copyrighted work must have been registered prior to commencement of the infringement, unless the registration is made within three months after first publication of the work.”  The court noted that other courts have construed Section 412 in a similar manner, finding that infringement commences for the purposes of § 412 when the first act in a series of acts constituting continuing infringement occurs. Accordingly, “the first act of infringement in a series of ongoing infringements of the same kind marks the commencement of one continuing infringement under § 412.”

The case highlights the importance of registering copyrights early.  One of the most frequent areas of copyright infringement we see involves software and content from websites (or entire websites themselves).  In these situations actual damages can be very difficult to prove, and the availability of attorneys fees and statutory damages greatly enhances your case, and ability to resolve these issues quickly and on favorable terms.

The lists are starting to roll in.  Check out Pogo's Chronicles of Dissent: Top Ten Privacy Breaches of 2007, and Threat Level's look at the year 2007  from a privacy/security perspective.  The Metropolitan Counsel provides us with the Advertising, Marketing And Promotions Law Year In Review,   and the USPTO Announces it's year end results, touting "historic improvement in the quality of patent and trademark reviews and subsequently the quality of issued patents and registered trademarks."  Euclid Managers offers its Predictions for 2008 Security Threats, PatentlyO offers Ten Ways to Spend your Holiday Bonus (I got the Nuvi), the TTAB Blog reports that the Leo Stoller Blog Has Returned, and Chevy Chase reports that Generalissimo Francisco Franco is Still Dead. 

Happy Holidays, and Best Wishes for a prosperous 2008 from the TechKnowledgy Blog!

Updated Oct. 26, 2007  to add a link to the document - see:  Principles for User Generated Content Services

Several of the largest media companies have agreed to use technology to eliminate copyright-infringing content uploaded by Web users and to block any pirated material before it is publicly accessible.  That is part of a set of principles designed to "offer a road map for unlocking the enormous potential of online video and user-generated content," Disney Chief Executive Bob Iger said in a statement issued by the participating companies.

Some of the other companies involved are Viacom Inc, Walt Disney Co, Microsoft Corp, News Corp's Fox and MySpace units, CBS Corp, General Electric Co's NBC Universal, and online video services such as Veoh Networks and Dailymotion.  Notably absent was Google, owner of YouTube.

Essentially, the copyright holders in the group have agreed not to pursue Internet companies for infringement claims if their sites adhere to certain principles. Those principles include eliminating copyright-infringing content uploaded by users to Web sites, and blocking any infringing material before it is publicly accessible.  The pact reportedly is not legally binding, but more of a trust-building exercise among the companies, according to the Wall Street Journal report. 

You know the Video Professor - he's the guy on those infomercials that urges you to buy his computer education programs by trying them for free.  The company even encourages consumers to search for reviews online before buying.  Problem is, lots of consumers are complaining online that they were mislead as to the "free" part, or are otherwise unhappy with the product.  Perhaps in an effort to draw more attention to the negative reviews, the Video Professor has taken to suing the bastards who are saying these bad things. 

Do you suppose the Prof. is aware of the Streisand Effect?  Or the likelihood of succeeding in stifling anonymous criticism in light of the First Amendment rights involved and other available defenses?  In any event, right or wrong, the online world does not like bullies, and the backlash has begun (see below).

On a practical note, these links provide a good tutorial and resources (including forms) for those involved, or considering getting involved, in litigation to identify anonymous internet posters.

Video Professor sues anonymous griping posters, demands their identities

Video Professor Sues Anonymous Critics

Politicians, infomercial kings try to stifle anonymous Internet speech

Letter from Public Citizen Litigation Group

The Video Professor Sues His Unnamed Critics

-Photo courtesy of Llyod Doppler under Creative Commons

The Appellate Court of Illinois recently denied a motion to dismiss filed by the online stock photo company Corbis, effectively preserving claims that Corbis violated Jame's Browns right of publicity by offereing to license photos of the the late singer.  The decision is here.  The case is interesting, because presumably there would be some uses of the photos that would not violate Brown's right of publicity, for fair use or first amendment reasons. Corbis would presumably license the photos to anyone who would pay the fee, and note that the photo comes without a publicity release, leaving it up to the licensee to use the photo in a lawful manner.  Nonetheless, the court is willing to entertain the claim that Corbis, by offering to license the photos, is thereby engaging in some commercial activity for which it may need the permission or consent of The Godfather of Soul.  Internet Cases has a good summary of the case.

The US District Court in Utah has ruled that "Novell is the owner of the UNIX and UnixWare copyrights" that are the subject of the dispute between Novell and SCO.  The opinion will undoubtedly impact SCO's suit against IBM.  The opinion is here.  The Court concluded:

"Therefore, Novell is entitled to a declaration of rights under its Fourth Claim for Relief that it was and is entitled, at its sole discretion, to direct SCO to waive its claims against IBM and Sequent, and SCO is obligated to recognize Novell's waiver of SCO's claims against IBM and Sequent. Accordingly, Novell's motion for partial summary judgment on its Fourth Claim for Relief for declaratory judgment is granted, and SCO's cross-motion for summary judgment on Novell's Fourth Claim for Relief is denied."

SCO responded in a statement that it "is obviously disappointed with the ruling", but that it is only a flesh wound, and that even though its arms and legs had been chopped off,  it could still butt IBM and Novell with its head.

This is an excellent article that takes on the issue of design patents being issued in situations where even the low threshold of originality required for copyright protection is too high, such as in the case of design patents on business forms.  Excerpt:

The standard for copyright protection is notoriously low — the work must be independently created by the author and possess a minimal degree of creativity. Nonetheless, even with that generous standard, the courts and the Copyright Office recognize that certain works do not contain even that minimum level of creativity such that they are categorically refused copyright protection. Blank forms, and other forms that do not convey information, fall within this category. 

In contrast, and for good reason, the standard for design patent protection is much more burdensome. Design patents protect new, original, ornamental, and non-obvious designs. This more difficult standard, which generally subsumes the copyright standard, would lead one to assume that anything failing the low copyright would not be eligible for design patent protection.  Then again, one might be wrong. The Patent and Trademark Office has issued design patents for blank forms and recent case law has either upheld design patent protection for blank forms or declined to categorically refuse such protection.

This article explores the blank forms doctrine in copyright law, the overlap between copyright and design patent protection, why the law's refusal to protect blank forms under copyright law is necessarily inconsistent with the law's protection of blank forms via design patents, and possible judicial, Congressional, or administrative solutions to resolve this inconsistency.

Read the whole article here.

And we thought we were immune from the risks of IP law that our clients face each day.  If the debacle over patented estate planning techniques were not enough, we now have to be concerned about copying the pleadings of others, lest we face a copyright infringement claim!  The Wall Street Journal Law Blog has an interesting post on this topic.  Most interesting from my perspective for the lack of knowledge of copyright law demonstrated by the comments, presumably from lawyers. 

For example, one comment reads: "Any pleading filed with a court is

Click to read more ...

Search engines and ISP's have widened the moat with this decision from the 9th Circuit, which essentially holds that Google's practice of copying thumbnail versions of photographs from third party web sites, with "in-line linking" to the full size version of those photos at their original location on the web, constitutes fair use.  Goldman's summary here.

Viacom and others have filed a Complaint against YouTube and Google alleging vast copyright infringement and seeking more than $1 billion in damages and injunctive relief.  The Complaint contends that Viacom has identified at least 160,000 clips of its its programming on YouTube that it alleges have been viewed an astounding 1.5 billion times.  Viacom released this statement pertaining to the Complaint:

YouTube is a significant, for-profit organization that has built a lucrative business out of exploiting the devotion of fans to others’ creative works in order to enrich itself and its corporate parent Google.  Their business model, which is based on building traffic and selling advertising off of unlicensed content, is clearly illegal and is in obvious conflict with copyright laws.  In fact, YouTube’s strategy has been to avoid taking proactive steps to curtail the infringement on its site, thus generating significant traffic and revenues for itself while shifting the entire burden – and high cost – of monitoring YouTube onto the victims of its infringement.

Viacom is clearly making its case that Google's actions constitute infringement per the Supreme Court's 2005 Decision in MGM v Grokster, which held that "one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties."  Key to the Grokster case was the fact that Grokster was profiting handsomely from the rampant infringement it was facilitating.  Sound like Viacom's press release?  Although not as blatant as Grokster (you can actually find lots of non-infringing material on YouTube), the economic benefits to Google from this widespread infringement are seemingly undeniable. 

The following, in no particular order, are our top ten favorite TechKnowledgy stories of 2006:

1.  Posner Appears Live as Avatar on Second Life.  If the words in that headline are gobbledygook to you, you better get with it!  Second Life is a popular online virtual world where users interact with each other through "avatars", which are basically animated cartoons of themselves.  Judge Richard Posner appeared live on Second Life on December 7th, and was interviewed on a variety of topics for two hours.   The illustrated transcript can be found here.  The idea that one of the most influential legal minds of our time is willing to embrace this emerging technology is just, well, cool. . ..

2.  Supreme Court Alit in Patent Cases.  While the world focused on the drama of the appointment of Justice Alito, IP lawyers had some drama of their own, with a fully loaded patent docket.  Decisions included

Click to read more ...

The just concluded 109th Congress largely failed to deliver on technology issues, from data breach notification, patent reform, Net neutrality, H-1B visas,  copyright/digital rights management, and the R&D tax credit.  CNet has a good round-up here.

It is no secret that Google is pushing the boundaries of what is permitted under existing copyright law, and is willing to take some significant risk and expend significant financial resources in establishing its right to do so.  It is a little surprising then, to see Google/YouTube aggressively attacking TechCrunch for makeing a utility available for people to easily copy YouTube videos onto their hard drives, Ipods and similar devices for personal use, on the basis of contributory copyright infringement, among other things.  It would seem as though Google understands that YouTube has its own issues of contributory copyright infringement (it reportedly reserved in excess of $200 million to cover copyright infringement issues relating to the YouTube acquisition).  Yet YouTube, the business that is built on other people's copyrighted works, apparently does not want someone else doing the same.  Interesting.

It will be interesting to see what the TechKnowledgy Landscape will look like in the coming months. With Democrats controlling the House and Senate, the mood in the technology community appears upbeat. MediaNews reports that Nancy Peolsi has committed to giving more attention to tech-sector issues, from renewing the research and development tax credit, to more direct investment in scientific research. With the Dems in power there is also a hope for more H-1B visas for tech workers, and Internet companies are expecting support on their push for network neutrality initiatives. 

Meanwhile, it seems as though the technology lobbyists are not so sure.  CNet reports that they are frantically pressing the republicans for last minute legislation to cover these very topics before the democrats take over.

Click to read more ...

Blogs and Podcasts raise a number of unique legal issues, particularly relating to copyright. This is because much of what is blogged or podcast consists of content copied from others to varying degrees. The folks at the Creative Commons have published an outstanding Legal Guide to Podcasting, that also serves as a decent primer for online copyright issues in general. Denise Howell has an interesting podcast interview with the author of the Guide that you can access here.

Photo courtesy of Rhys Bennett under Creative Commons license.