Copyright Law Blog: Exclusive Rights

Author Archives: Shourin Sen

Attorney Shourin Sen advises on a broad range of copyright trademark, licensing, trade secret, right of publicity, privacy, corporate representation and litigation matters. Prior to opening his firm, Mr. Sen worked on intellectual property and general corporate issues at an academic publishing house. In 2006, Mr. Sen was a Legal Intern for Chief Judge Khalida Rachid Kahn at the United Nations International Criminal Tribunal for Rwanda. Mr. Sen performed bass and taught music before he entered law.

LOC names Maria Pallante Acting Register of Copyrights

Shourin Sen - 20 December 2010 – 9:00 am

Filed under Copyright Office

The Librarian of Congress has appointed Maria Pallante to serve as Acting Register of Copyrights. As per the Copyright Office’s press release:

Maria A. Pallante, senior adviser to the Librarian of Congress, has been appointed Acting Register of Copyrights, effective Jan. 1, 2011. She will serve until the next Register of Copyrights is selected and assumes the duties of the position. The current register, Marybeth Peters, will retire on Dec. 31, after 16 years in the position.

“The position of Register of Copyrights is extremely important to the copyright community, the Library of Congress and the United States, and requires a significant skill set. It is important that we proceed diligently in making that appointment,” said Librarian of Congress James H. Billington. “In the meantime, Maria is an experienced copyright lawyer and manager, and I am grateful that she is willing to oversee the registration, policy and other important functions of the Copyright Office for as long as we need her.”

* * * * *

Pallante has spent much of her career in New York. From 1999-2007, she served as intellectual property counsel and director of licensing for the Guggenheim Museums, where she advised on programmatic and business initiatives related to worldwide publishing, product development and branding; the acquisition and exhibition of contemporary art; and the operation of overseas affiliates and licensees. Earlier in her career, she worked in private practice and on the staffs of the Authors Guild and National Writers Union, respectively.

Pallante earned her juris doctor degree from George Washington University and her bachelor’s degree from Misericordia University, where she was also awarded an honorary doctorate of humane letters.

Nimmer on Copyright, Goldstein’s Copyright’s Highway, Patry on Fair Use, and Lerner’s set on Art Law . . . that’s certainly a sufficiently nerdy enough book collection.

Call for papers: 4th Annual Junior Scholars in Intellectual Property Workshop

Shourin Sen - 18 December 2010 – 5:40 pm

Filed under Academia

The Michigan State University College of Law Intellectual Property & Communications Law Program has issued a call for papers for its Junior Scholars Workshop on April 15-16, 2011:

The Junior Scholars in Intellectual Property (JSIP) Workshop offers an opportunity for junior scholars* writing in the areas of intellectual property, communications, and cyberlaw to receive commentary from established scholars in a focused workshop setting. Articles will be chosen prior to JSIP through a blind-review selection process. Accepted articles will receive detailed feedback from at least two commentators as well as from workshop participants. Participants are expected to attend for the full duration of the workshop.

Applicant-scholars should submit papers online below by February 4, 2011.

* Eligible junior scholars have seven or less years full-time teaching experience.

For more information please contact Sean Pager at 517-432-6972 or spager[at]law.msu.edu

9th Cir. affirms abandonment of trademarks due to naked license

Shourin Sen - 8 December 2010 – 9:00 am

Filed under Trademark

FreecycleSunnyvale v. The Freecycle Network, 4:06-cv-00324-CW (9th Cir. November 24, 2010)

The Freecycle Network was a national umbrella of local groups which advanced the practice of giving unwanted items to strangers so that the items could be reused. Most of The Free Cycle Network’s activities were organized locally via Yahoo!Groups or Google Groups. FreecycleSunnyvale was a member group of The Freecycle Network. The Freecycle Network used three trademarks FREECYCLE, THE FREECYCLE NETWORK, and a logo to identify its services and affiliations with member groups. As The Freecycle Netork grew, it increasingly relied on local moderators to regulate its member groups’ use of the trademarks.

Before 2004, The Freecycle Network had only a few suggested guidelines for trademark use in the etiquette section of its website, including a “Keep it Free” rule. In 2004, a national organizer, along with local group moderators, reached an ostensibly majority agreement on a new rule, “Keep it Free, Legal & Appropriate for All Ages”; though the enforcement of the rule varied by member group.

For reasons the court noted were not evident from the parties’ briefs, The Freecycle Network sent emails to FreecycleSunnyvale ordering the group to cease and desist using the Freecycle name and logo. FreecycleSunnyvale, shortly thereafter, filed a declaratory action, alleging noninfringement of TFN’s trademarks and tortious interference with FS’s business relations. FreecycleSunnyvale moved for partial summary judgment on the issue of whether its naked licensing defense to trademark infringement allowed it to avoid a finding of infringement as a matter of law.

The Ninth Circuit (Graber, Bea, Callahan writing) affirmed the district court’s finding that The Freecycle Network had engaged in naked licensing and abandoned its trademarks because TFN (1) did not retain express contractual control over FS’s quality control measures, (2) did not have actual controls over FS’s quality control measures, and (3) was unreasonable in relying on FS’s quality control measures.

CO extends deadline for comments on federalizing protection of pre-1972 recordings

Shourin Sen - 2 December 2010 – 1:54 am

Filed under Copyright Office, Sound Recordings

As per the CO’s press release:

The Copyright Office is extending the time in which comments and reply comments can be filed in response to its Notice of Inquiry requesting public input on the desirability and means of bringing sound recordings fixed before February 15, 1972, under federal jurisdiction. Initial comments must be received in the Office of the General Counsel of the Copyright Office no later than January 31, 2011. Reply comments must be received no later than March 2, 2011. The Office prefers that comments be submitted electronically via the Copyright Office website. For further information, go to the Copyright Office website at www.copyright.gov. (Read More)

Cal. Appeals affirms dismissal without leave to amend of IP conversion claim

Shourin Sen - 19 November 2010 – 9:00 am

Filed under Conversion of IP, Preemption

Karls v. Wachovia Trust Company, et al., CGC-09-487535 (Cal. 1st App. October 27, 2010) (unpublished).

The plaintiff allegedly devised a corporate tax strategy. By some means not alleged, defendants came upon plaintiff‘s idea and used it to obtain foreign tax credits. Plaintiff brought a single claim for conversion, seeking compensatory damages in the amount of tax credit that the defendants were able to claim as a result of their use of plaintiff‘s idea and punitive damages. Defendant Wachovia filed a demurrer, and Wells Fargo filed a motion for judgment on the pleadings, both of which were granted without leave to amend.

The defendants asserted that the complaint must be dismissed because it only alleged conversion of an idea, and because the plaintiff did not allege how defendants have substantially interfered with plaintiff‘s dominion over his own idea. The plaintiff argued that the conversion claim was proper because the tax structure was too complicated to be comprehended separate from the paper on which it was written. The plaintiff argued that, like Leonaro da Vinci‘s painting The Mona Lisa, the tax structure was an idea that could not be understood without reference to the tangible written presentation that he prepared prior to defendant‘s alleged conversion.

The Court of Appeals (Margulies, Rivera, Dondero writing) found that an idea does not qualify as property subject to conversion even if the idea is reduced to a writing:

It is apparent that the plaintiffs in the instant action were not seeking to recover the value of the particular items of personal property in defendants‘ possession but were seeking to recover damages for the value of a creative design allegedly appropriated by defendants. Plaintiffs made no attempt whatever to establish that the personal property in defendants‘ possession, consisting of one set of plaintiffs‘ plans, was of any value in itself. It may be inferred from the evidence that the value of one set of plans would be equal to the printing costs. Plaintiffs likewise made no attempt to show that they suffered any detriment from the loss of the one set of plans. The gravamen of plaintiffs‘ cause of action was the allegedly wrongful appropriation by defendants of a creative idea or design. The trial court was obviously correct in holding that the case should be submitted to the jury solely on the theory of copyright infringement and not on the conversion count. (Oakes v. Suelynn Corp. (1972) 24 Cal.App.3d 271, 279 (Oakes).)

In sum, while an action for conversion may be entirely appropriate in the context of paintings and other tangible mediums of artistic expression, under the rationales of Oakes and Melchior the tort is not available to plaintiffs suing for infringement on their intellectual property rights, regardless of whether the concepts at issue have been memorialized in a writing.

E.D. Cal. finds 512(f) “knowing misrepresentation” in contradictions in copyright registration application

Shourin Sen - 16 November 2010 – 9:00 am

Filed under Architectural Design, DMCA, Useful Article

Design Furnishings, Inc. v. Zen Path LLC, 2:10-02765 WBS GGH (E.D. Cal. Oct. 20, 2010)

Design Furnishings and Zen Path sold wicker furniture from the same manufacturer on eBay. Zen Path, the defendant, sent a cease and desist to Design Furnishings, the declaratory judgment plaintiff, stating that Design Furnishings’ sale of the furniture infringed Zen Path’s exclusive rights granted under the Copyright and Patent Acts, and that the photos Design Furnishings used to market the furniture on Ebay infringed Zen Path’s copyrights. Design Furnishings stopped using the photos, but continued to sell the furniture.

Zen Path then allegedly sent a series of sixty-three takedown notices to Ebay, claiming that the sale of the furniture infringed its exclusive rights. Zen Path also filed copyright registration applications for four different furniture collections. Zen Path filed the registrations as “sculpture/3-D artwork, Ornamental Design” and attached pictures of the furniture. (A picture of one of the deposits is below.)

Design Furnishings filed an action in state court, which was later removed to federal court, which included claims for (1) misrepresentation of intellectual property infringement in violation of 17 U.S.C. § 512(f) of the Digital Millennium Copyright Act (“DMCA”), (2) tortious interference with a contract, (3) tortious interference with prospective economic advantage, (4) a violation of California’s Unfair Competition Law, Cal. Bus. & Prof. Code §§ 17200-17210, and (5) declaratory and injunctive relief.

Knowing misrepresentation

17 U.S.C. 512(f) of the DMCA provides, inter alia, that any person who knowingly materially misrepresents that “material or [an] activity is infringing,” “shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer.” The Court noted, citing Rossi v. Motion Picture Ass’n of Am ., Inc., 391 F.3d 1000, 1005 (9th Cir. 2004), that “Liability does not extend to when “an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake. Rather, there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner.”

The Court, nonetheless, granted Design Furnishings’ motion for a temporary restraining order that barred Zen Path from issuing additional DMCA takedown notices. The Court found that it could draw an inference of “knowing misrepresentation” from contradictions in the defendant’s copyright registration applications:

Here, defendant’s applications for copyright protection claimed the works were sculptures or 3-D artwork or ornamental designs, indicating that defendant knew the limits of copyright protection. The pictures of the furniture, though, suggest that defendant impermissibly sought protection of the “industrial design” of the furniture. Moreover, the internal contradiction in the applications raises a strong inference that defendant subjectively knew it did not have a copyright infringement claim when it notified eBay. Accordingly, the court finds that plaintiff has a likelihood of success on the merits.

New IP Colloquium: A Conversation with Chief Judge Randall Rader

Shourin Sen - 27 October 2010 – 9:00 am

Filed under Academia, Patent

IP Colloquium has released a new podcast interview with Chief Judge Randall Rader:

Intellectual Property Colloquium

A new audio program is ready for listening at www.ipcolloquium.com. The title and description are included below. As always, sincere thanks to our several partners: the UCLA School of Law; the economic consultancy Compass Lexecon; the computer technology company Microsoft; and the Kauffman Foundation.

Title: A Conversation with Chief Judge Randall Rader

Guest: Honorable Randall R. Rader (Chief Judge of the US Court of Appeals for the Federal Circuit).

Description: In this edition of the IP Colloquium, the Honorable Randall R. Rader, Chief Judge of the Federal Circuit, joins us to discuss a wide range of legal and policy issues related to the nation’s patent system. The conversation is a frank and open discussion, with exchanges about (among other things) the need for Federal Circuit judges to experience district court proceedings in order to meaningfully evaluate them, and the possibility that independent creation is in fact evidence of patent obviousness. UCLA Law Professor Doug Lichtman hosts.

Kal Raustiala: Knockoffs and Fashion Victims

Shourin Sen - 22 October 2010 – 5:39 pm

Filed under Fashion

Kal Raustiala, Professor of Law at UCLA, has released a new paper titled Knockoffs and Fashion Victims. Raustiala, in the paper, questions whether what he terms as the “property rights theory” underlying copyright is applicable in the field of fashion:

A different way to ask this question is: how do fashion designers remain so creative? To a large degree, the answer is that creativity in fashion thrives due to copying, not in spite of copying. Extensive copying accelerates the fashion cycle, rendering once-desired designs to the apparel scrapheap. And extensive copying allows trends, the cornerstone of contemporary fashion, to develop and spread.

In this way copying provides the functional equivalent of the striking new feature on a cellphone–the feature that makes a customer toss out a perfectly usable item in favor of a new one. In fashion, of course, the new design is not an improvement so much as it is a distinction. But this is a distinction with a difference: for many consumers, a key appeal of any garment is whether it sends the right kind of signal. As the garment’s design spreads via copying, the distinction offered by the design is lost—and the shopper is ready to buy a new design. The property rights theory of copyright has virtually no place in this story. And subsequent chapters will show, fashion is not alone in this regard.

Liability in US for overseas infringement stemming from domestic, predicative act outside the SOL

Shourin Sen - 21 October 2010 – 10:04 am

Filed under Extraterritoriality, News, Statute of Limitations

In re Outsidewall Tire Litig., 1:09cv1217 (E.D.V.A. October 18, 2010)

There was an interesting decision on the extraterritorial application of the Copyright Act and the statute of limitations this week. The plaintiffs, an individual and his trio of companies which produced mine vehicle tires, alleged that a group of defendants manufactured and distributed infringing tires. A jury returned a verdict in the plaintiffs’ favor on a series of claims including copyright infringement. Defendants moved for a new trial.

The plaintiffs alleged that the defendants manufactured the infringing tires abroad using designs that were copied in the U.S., outside of the statute of limitations. The Court found that the defendants were domestically liable for damages on the overseas infringement because the infringement was enabled by domestic, predicate acts, even though the domestic acts occurred prior to (what the Court applied as) the statute of limitations period:

Defendants next argue that the verdict should be set aside because no acts of copyright infringement occurred in the United States. As discussed in the July 21 Order, this argument is also unavailing. See July 21 Order, at 14. As an initial matter, the evidence adduced at trial plainly showed (i) that in 2005 and early 2006, Vance copied plaintiffs’ Alpha tire blueprints and modified them to create an infringing derivative work for defendants and (ii) that he did so in part in Virginia. It is true that none of these acts occurred in the United States after October 28, 2006, meaning the acts do not fall within the limitations period for the copyright claims. Indeed, both the manufacturing of the infringing tires based on Vance’s work and the sales of such tires occurred outside the United States during the relevant limitations period. While the Fourth Circuit has [*30] not yet addressed whether extraterritorial exploitation of a copyright falls within the Copyright Act’s jurisdiction when the domestic, predicate acts occurred prior to the limitations period, the Second and Ninth Circuits have sensibly held that such infringement is covered by the Act. See L.A. News Serv. v. Reuters Tel. Int’l, Ltd., 340 F.3d 926, 928 (9th Cir. 2003); Update Art, Inc. v. Modiin Pub., Ltd., 843 F.2d 67, 73 (2d Cir. 1988). ¹⁸ Specifically, the Ninth Circuit has held that while “the Copyright Act does not apply extraterritorially, an exception may apply where an act of infringement is completed entirely within the United States and that such infringing act enabled further exploitation abroad.” L.A. News, 340 F.3d at 928; see also Update Art, 843 F.2d at 73 (in the Second Circuit, holding that although “copyright laws generally do not have extraterritorial application[,] [t]here is an exception . . . when the type of infringement permits further reproduction abroad”). This rule ensures that domestic copyright infringers cannot escape liability for their infringing acts by exploiting the fruits of their infringement in foreign markets. This rule is appropriately applied [*31] in this case. Defendants cannot escape the reach of the Copyright Act where, as here, they initiated and committed their infringing acts in the United States and then attempted to reap the spoils of their infringement by manufacturing and selling their infringing tires abroad. Thus, they are liable for the foreign acts implementing their unlawful infringement scheme.

FOOTNOTES

18 The Sixth Circuit has also recognized that a court has subject matter jurisdiction over a copyright infringement action “as long as some act of infringement occurred in the United States,” even if most of the infringing conduct took occurred abroad. Liberty Toy Co. v. Fred ilber Co., No. 97-3177, 1998 U.S. App. LEXIS 14866, at *11 (6th Cir. June 29, 1998).

Furthermore, the fact that the domestic acts of infringement occurred outside of the limitations period is irrelevant to defendants’ liability, because the Copyright Act’s statute of limitations limits the remedy, not the substantive rights, under the Act. See Prather v. Neva Paperbacks, Inc., 446 F.2d 338, 340 (5th Cir. 1971) (holding that the limitations period would affects “the remedy only, not the substantive right” under the Copyright Act); Peter Letterese & Assocs. v. World Inst. of Scientology Enters., 533 F.3d 1287, 1320 (11th Cir. 2008) [*32] (agreeing with the Fifth Circuit’s analysis). Accordingly, defendants are liable for their foreign acts of infringement despite the fact that the domestic acts of infringement occurred before October 28, 2006.

Finally, defendants’ argue that Virginia law was improperly applied to the claims in this action because the wrongful acts did not occur in Virginia. This assertion is plainly meritless, since there is no question that acts of infringement occurred in the Commonwealth of Virginia. The Supreme Court of Virginia has consistently held that it is the place of the wrong that determines which state’s substantive law applies. See Quillen v. International Playlex, Inc., 789 F.2d 1041, 1044 (4th Cir. Va. 1986) (citing McMillan v. McMillan, 219 Va. 1127, 253 S.E.2d 662 (1979)).

Berkman Center accepting applications for fellowships

Shourin Sen - 20 October 2010 – 9:00 am

Filed under Academia

Berkman Center accepting fellowship applications for 2011-2012 academic year

The Berkman Center for Internet & Society at Harvard University is now accepting applications for fellowships for the 2011-2012 academic year.

We are currently accepting applications through two distinct channels:

* 1) We are accepting applications for a specific fellowship opportunity: our academic fellowship for rising early-to-mid career academics.
* 2) We are accepting applications for fellowships through our annual open call.

The academic fellowship is intended for a rising scholar who will use the period of the fellowship to develop his/her teaching and research career and produce compelling, potentially paradigm-shifting contributions to our understanding of cyberspace. It is a stipended fellowship and residency in Cambridge, MA is required. The deadline for applications for the academic fellowship is 11:59 p.m. ET on November 15, 2010.