Archive for category Trademark

Should Actors Be Paid for Unauthorized Youtube Uploads?


(This video appears to be authorized but is still awesome despite not being particularly relevant)

Rebecca Tushnet’s 43(b)log alerted me to an interesting copyright/trademark issue.  Apparently actors’ unions are requesting that advertising agencies either pay them for unauthorized YouTube uploads or send DMCA take down requests. The Joint Policy Committee on Broadcast Talent Relations has released a position that there are no fees associated with unauthorized uploads and advertising agencies are under no legal obligation to send take down notices.

Rebecca’s post notes that the law on whether actor’s individual rights are preempted by federal copyright law is currently split.  While I agree with Rebecca that this is a great topic for someone to right a law review note on, I don’t currently have the time.

Instead, I would argue that this should be covered by contract.  First, in this day and age (wow writing that makes me feel old) everyone should expect anything they do on video to be widely available on YouTube or elsewhere online.  Second, given that advertising agencies (and their clients) generally want their commercials to be viewed by as many people as possible, they have no incentive to issue take down notices for unauthorized uploads.  Since this should have been a foreseeable issue by the sides during contract negotiations, I would argue that the language of the contract should control.  If the contracts call for payment of fees for authorized YouTube uploads then it seems to me the advertising agencies are impliedly authorizing the uploads by their failure to police the copyright.

The implied authorization is equivalent to contributory infringement case. Contributory infringement liability requires knowledge and material contribution.  While the advertising agencies are the copyright holders they are also contributory infringing their own copyright.  Given the union’s demands for take down notices and/or fees the advertising agencies clearly have knowledge of the contributory infringement.  They also are materially contributing by failing to take action and benefiting from the infringement.  Since it appears the advertising agencies would be liable in a contributory infringement suit, I believe they have impliedly authorized the uploads in question.

Given that actors have typically waived all copyright claims to the works in question, the unions should pursue a breach of contract claim for the fees (which is presumably what they would prefer over take down notices anyways).

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Where Blogging and Branding Clash

EverydayFoodieYesterday my girlfriend alerted me to a post over at one of the food blogs she follows.  The blogger had received a cease and desist letter from a major brand alleging trademark infringement. After receiving legal advice the blogger has decided to abide the cease and desist letter despite a relatively strong legal position.

The post goes on to complain about the cease and desist tactic.  However I believe her response is one of the very reasons this tactic continues to be used where it shouldn’t be.  Instead of asking the brand to justify its position the blogger has acceded to their outrageous demands.  The attorney who sent the demand can report beak that he successfully defended the brand without mention the potentially devastating brand tarnishment that occurred by treating  a popular food blogger as a criminal.

We the people are stuck in a legal catch-22.  We continue to receive cease and desist letters and take down notices which border on ridiculous.  However fighting them can put oneself in an untenable position.  Having to fight a legal war against a large corporation with significant legal resources.  As a result the cease and desist letters and take down notices become more frequent as attorneys can cite their high success rate.

Until someone fights back and can get a judge to award a major penalty for sending unwarranted cease and desist letter corporate attorneys can continue to  blindly send out unjustifiable take down notices and claim victory.  The sad truth is that no one is winning.  The brands that the attorneys represent lose major PR and brand loyalty every time one of these letters is sent to someone it shouldn’t have been.

There is hope though!  United States District Judge Jeremy Fogel, denied a motion to dismiss in a lawsuit filed by Stephanie Lenz against Universal Music alleging misrepresentation pursuant to a DMCA take down notice. Fogel also held that copyright owners must consider fair use before sending take down notices.

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La Russa v. Twitter – Update on the Update – Not Settled!

One of the big stories on Friday was that Twitter had settled with La Russa over his trademark lawsuit.  This was surprising news considering lots of blogs had carried the inital story and the consensus was that La Russa had no basis for his suit.  Thankfully there is another update.  Twitter is reporting that they did not settle with La Russa and that the AP story is untrue.

La Russa said Friday that Twitter has agreed to pay legal fees and make a donation to his Animal Rescue Foundation.

As opposed to:

Reports this week that Twitter has settled a law suit and officially agreed to pay legal fees for an impersonation complaint that was taken care of by our support staff in accordance with our Terms are erroneous. Twitter has not settled, nor do we plan to settle or pay.

It is good to see that Twitter did not establish dangerous precedent by giving credence to the claims made by La Russa and his attorneys. Conversely it is sad to see that the AP and/or La Russa misreported the facts.

Makes me wonder who is going to want to pay for AP content

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Eric Goldman and Brand Spillovers

Today I get to register for classes for next semester! I am very excited about my last year of law school as I will be taking almost entirely elective classes. One of the classes I am excited about is Eric Goldman’s Cyberspace law class. Prof. Goldman is the director of the High Tech Law Institute at Santa Clara, a prolific blogger, and a well liked professor. While this will be my first class with Prof. Goldman, I have followed his blog for years and have attended some of his presentations (including one on the legal issues of blogging.)

Last week Prof. Goldman released the final version of his brand spillovers paper (available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1324822 ). I had read and cited an earlier version of the paper in my comment on the Rescuecom decision at Likelihood of Confusion.

I believe Prof. Goldman does an excellent job of describing the dichotomy between how traditional retailers profit from brand spillover while avoiding liability, whereas online intermediaries performing similar functions are often held liable. Prof. Goldman describes how both traditional retailers and online intermediaries are search cost managers and how their decisions on how to organize brands/trademark affect searches. Prof. Goldman argues that the end results in both situations is currently the best alternative available and thus a new policy on online intermediaries trademark liability is needed.

I highly recommend you read the paper for yourself.

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Tony La Russa sues Twitter — but why?!?!

As I am sure you have already heard Tony La Russa, the coach of the St Louis Cardinals, has sued Twitter over an unauthorized account using his name. The question I want to know is why? After reading the complaint I am none the wiser. In fact, I am more convinced that this lawsuit should not have been filed and Mr. La Russa ought to fire whomever advised him to file this suit.

For starters, lets assume that the account is likely to cause confusion and did cause mental anguish and distress. The screenshot of the damaging twitter account shows that it had 4 followers. Compare that to the thousands of tweets now detailing the lawsuit. By filing the lawsuit La Russa and his attorneys have brought considerably more attention to posts allegedly damaging La Russa’s reputation. One would assume this was not the intent of the lawsuit (although it was a easily foreseeable result.)

Furthermore, reports indicate that Twitter has been responsive to celebrity requests to remove fake pages. Thus a simple request to Twitter is likely to have resulted in the removal of the page with much less fanfare. While one report indicates that La Russa did ask for the page to be taken down, the complaint makes no such allegation. In my opinion given the detailed nature of the complaint it is unlikely that such a key fact would have been omitted.

Even worse, the screenshot attached to the complaint also reveals that the page was clearly labeled a parody. This weighs heavily against a finding of likelihood of confusion, raises serious fair use issues, and in my opinion raises issues of fraud in the complaint. The complaint alleges that the statements “are impliedly written by Plaintiff himself.” I don’t understand how they could be impliedly written by La Russa when the page explicitly indicates they aren’t.

Additionally, the complaint also argues agency theory with respect to the creator of the page and Twitter. While I only have one semester of Business Organization under my belt, I am hard pressed to believe that an agency theory between the account creator and twitter will hold up in court.

Finally, I am confused why the complaint was filed in San Francisco Superior Court rather than federal court given it was filed on the basis of federal trademark statutes. Perhaps it was to try an avoid Judge Kozinski . (See Mattel Inc. v. Universal Music International for Kozinski’s take on trademark’s and parodies.)

In my opinion, this is another example of a poorly thought out, poorly drafted complaint which will likely cause more damage to the attorney’s client than the alleged cause of action.

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Top Level Domains (TLD)

ICANN, the non-profit organization in control of top level domain names, has finished receiving comments from it’s proposed major overhaul which would allow anything to be a TLD.

For those of you that don’t know TLDs are .com, .org, .edu, etcetera. The ICANN has proposed that due to increasing demand for domain names the TLDs should no longer be limited to the current 2 and 3 letter acronyms (a list of all of the current TLDs can be found here.) Apparently despite the fact that ICANN would be “hard pressed to find more than one comment in favor of new TLDs from an organization other than those trying to launch new TLDs,” the proposal is still being considered.

While I have a consumer orientated view of Trademark law (see my comment at likelihoodofconfusion), I still think this is a bad idea. Those with a brand property view of trademark rights are extremely concerned. The fear is that people will be able to register infinite strings of tlds with trademarks in them, making it virtually impossible for trademark owners to protect their trademarks. While I don’t necessarily believe that people are going to suddenly start thinking http://www.drink.cokenotpepsi is coca-cola’s new homepage I do understand their concern.

U.S. Trademark law requires that owners police their trademarks or they lose some or all of their protection (either becoming weak and thus narrowly defined or abandoned entirely.) Allowing this new opportunity to register domain names as trademarks puts an incredible financial burden on trademark owners to protect their trademarks.

Thoughts?

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Rescuecom Update

As I am still struggling to fully express my ideas on the Rescuecom decision, I recommend you check out Ron Coleman’s opposing view at LIKELIHOOD OF CONFUSION and my comment in response.

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Life and TM

So I know I haven’t been posting and I’m sorry. I was trying to perfect a post on Google Adwords and trademark law, but life got in the way.

In an interesting turn of events the 2nd Circuit court just issued its opinion in Rescuecom v. Google. The court held that Google Adwords may be “use in commerce” and reversed the lower courts 12b6 dismissal.

After thinking long and hard about search engine keywords I think that Google’s use of trademarks fails all three elements of trademark infringement:
1. use in commerce
2. in connection with a sale
3. likelihood of confusion

but more on that to come soon (hopefully…) In the meantime check out the court’s opinion
and/or Eric Goldman’s analysis

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DreamWorks v. Dreamwerks

Anybody equate DreamWorks (of Antz, Shrek, Beautiful Mind, etc. fame) with Dreamwerks (the sci-fi convention organizer)?

In Dreamwerks Production, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998), Judge Kozinski held that DreamWorks reverse infringed on Dreamwerks trademark. (Reverse infringement is where the junior user, most recent adopter of the name, is a much larger entity than the senior user, oldest adopter of the name. In these cases the concern is that the junior user’s promotions and reputation will overtake the scenario users. I am not buying his conclusion that because DreamWorks and Dreamwerks are both in the entertainment industry that people are likely to confuse them. Anybody confused by that a Dreamwerks sci-fi convention is related to DreamWorks the movie production company? While they do sound the same, is the “reasonably prudent consumer” likely to confuse the two? I would argue that the Harlem Wizards and Washington Wizards are much more similar services than movie production and sci-fi conventions and yet the court in Harlem Wizards Entertainment Basketball Inc. v. NBA Properties, Inc. 952 F. Supp 1084 (D.N.J. 1997) held that show basketball was separate and distinct from NBA basketball.

Is Kazinski right or was Harlem wrong?

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