Mejo 341 copyright and trademark

What is a "trademark?" service mark?

-A name or symbol that identifies the source of a product -A specific name of your service ---distinguishes your service from competitors -ex) A bank has "top flight checking"

what does it mean legally for a work to be federally registered with the USCO? what are the legal benefits of registration?

-Actual damages and profits (out-of-pocket losses to owner plus profits of infringer to extent they exceed losses) OR -Statutory damages if work registered within 3 months of publication or before infringement (up to $30K per work or $150K per work if infringement is "willful") PLUS -Infringer can opt for statutory damages -Either/or -Benefit- Owner can seek injunction and also costs and attorney's fees

Why was the trademark registration for the Washington Redskins cancelled under federal law, specifically, the Lanham Act? Generally, what provisions in the law are relevant in that still ongoing case? What about the In re Tam case? What is the main issue in that case that will be decided by the U.S. Supreme Court this term?

-Blackhorse v. Pro Football: the mark was seen as disparaging to native american people ● -the case In re Tam with it involves an asian rockband called "The slants" ● SCOTUS determined denying TM due to disparaging effect violates 1st amendment protection of commercial speech ● -The Lanham Act allows for denial to register TMs that are "immoral, deceptive, scandalous" or "may create false or disparaging connection between people and mark"

useful articles

-Defined: Articles having intrinsic utilitarian functions that are not merely ornamental or expressive -Works created by the U.S. government and employees -But: Employees can own works created on own time and third parties might own works created under contract -Only applies to federal government not state and local ○ Hot news cannot be replicated for a certain amount of time -Varsity Brand v Star Athletica (U.S. 2017)

examples of copyrightable work

-Literary works - broadly defined -Musical works, including ... words -Dramatic works, including ... music -Pantomimes and choreographic works -Pictorial, graphic and sculptural works -Motion pictures and other A/V works -Audio video works- movies/video games -Sound recordings (A/V work as well) -Architectural works -Compilations -Collective works -Derivative works

Loubitin case -why did the appeals court rule the red soles for shoes could qualify for trademark protection but not if the uppers if the shoes are red in color?

-YSL was making womens heels with red soles, just like loubitins -Q: Can color be a protected ™? -red soles could qualify because they had estabished a secondary meaning, but anyone can put red sole on red shoe because it serves a FUNCTION (shoe is all one color)

What are the types of marks in terms of "distinctiveness" from most to least distinctive?

1. Fanciful: word created specifically to be a trademark ex) exxon, lexus, xerox 2. Arbitrary: Common word w/ a meaning NOT related to product its used to mark ex) Apple computers 3. Suggestive: Suggests product attribute or quality w/o being merely decsriptive ex) Vanish Toilet Bowl Cleaner 4. Descriptive: Merely describes product-----not registerable as ™ unless develops a 2nd meaning

What are the fair use? what are the four statutory factors that courts use to conduct a fair use analysis?

4 factor test is only for copyright cases ■ [1] What is the purpose and character of the use? ○Is the use transformative? (has become KEY factor here) -Does the use of a piece of a copyright work used to be a whole new work with a new purpose? -Critique and review of a film would be an example of a new work ○Is the use non-commercial or commercial? -If it's a commercial use like an AD it's not encompassed by fair use -If it's non-commercial more in favor of fair use ○Is the use one of the favored "fair use" purposes under the Copyright Act - "criticism, comment, news reporting, teaching...scholarship or research?" -Those things all weigh heavily with fair use because they are in the fair use statute ■ [2] What is the nature of the original copyrighted work? ○More highly creative and less factual weighs in less favor of fair use ○Unpublished weighs against fair use- just because it has not been published doesn't mean it isn't copyright protected ■ [3] What is the amount (quantity) and substantiality (quality) of the portion used in relation to the original copyrighted work as a whole? ○How much of the original work was used? 5 seconds of movie? ○The more that's used the more it weighs against fair use ○Substantiality -Use footnotes from a book with over 500 footnotes -Not very substantial -If you take 50 words of a huge manuscript but it is the most substantial part of the book that weighs against fair use -More substantial weighs against fair use ■ [4] What is the effect of the use on the potential market for or value of the original copyrighted work? ○Does the infringing work devalue the copyright rights the owners has ○Doesn't encompass secondary harm -Movie critic gives movie bad review-irrelevant -Matters if infringing use replaces original in the marketplace

what is a collective work? (type of compilation)

A work such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole." So, a collective work is a specified type of "compilation." ■ Like a periodical/ magazine ■ Advertisements ■ Photographs ■ Stories ■ All put together with permission

what is the source of congressional power to protect intellectual property rights in the U.S?

Article I, Section 8: "The Congress shall have the power ... to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

What dilution of a distinctive mark by tarnishment?

Association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark - unwholesome associations - NO FACTORS in TDRA

How does a descriptive mark develop secondary meaning and achieve distinctiveness? What are the factors that courts consider?

Courts consider these factors to determine if descriptive mark has developed a 2nd meaning: ○ Actual Consumer Percetpions of mark association ○ Extent + Scope of advertising and promotion ○ Extent+ Amount of time mark has been used ○ Actions by company to establish connection b/t word/symbol and the product color had secondary meaning in the Louboutin case

The "safe harbor" for online service providers under the Digital Millennium Copyright Act DMCA; what are the take down requirements? what are the anti circumvention provisions in the DCMA?

Digital Millennium Copyright Act (1998) ■ Provides "safe harbor" from liability for ISPs for copy-righted material posted by third parties on their systems without permission - must meet conditions of 512(c) - -No actual knowledge of infringing material -3rd party postings on websites, Intellectual property claims, not excluded by section 230 -No direct financial benefit from infringing activity -Comply expeditiously with valid "takedown" notice -Youtube can takedown copyrighted material -Recent case example (on remand) -pro-visions that allow for limited educational use of materials -Digital Millennium Copyright Act -IMPORTANT: Statutory "Fair Use?" ○ Statutory exception to unauthorized copying ○ By definition NOT infringement

How does copy right protection arise and what types of works does copyright law protect?

Immediate protection arises when... -Work meets criteria of a "copyrightable" work -But owner of work derived in U.S. cannot sue for infringement unless work is registered with U.S. Copyright Office

What is trademark "infringement?" What factors are used to determine the "likelihood of consumer confusion" issue?

Infringement: is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. oAre consumers likely to be confused or misled about the source of goods or services being offered or sold? -Factors courts consider on this issue: oStrength or weakness of original mark oSimilarity of products or services being marketed under the original mark and the allegedly infringing mark oEvidence of actual consumer confusion oWhether alleged infringer acted in good or bad faith oQuality of defendant's products goods or services oSophistication of potential consumers oTrade channels for the products or services oSimilarity of the advertising or promotion

Varsity Brand v Star Athletica (U.S. 2017)

Supreme Court: things that cannot copyrights: useful items; this case dealt with design for cheerleading uniform; design can be copyrighted bc of work of art; but cut of clothes cannot be

what is the public policy rationale for protecting intellectual property rights?

To encourage new works and encourage people to pursue new ideas

what is a derivative work?

Work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole represent an original work..., is a 'derivative work.'" ■ Popular book like Hunger Games- films based on this book is derivative ■ New work/ updated version of something old is copyrighted even if the old version is in public domain

what is the notice of copyright? why is notice legally important?

[Copyright or ©] [DATE OF PUBLICATION] [OWNER] [Copyright or ©] [DATE] [OWNER] -If it's noticed that it is copyrighted that precludes someone from saying "I had no idea" which could lead to a case of intentional infringement which is much worse

what must a plaintiff prove to recover for trademark dilution under federal law?

blurring (factors) or tarnishment (no factors)

What is the legal and constitutional significance of the case of Eldred v. Ashcroft (U.S. 2002)?

extended copyright to be life of author plus 70 years; he brought a claim that said this is not fair; works that have already been published under previous copy right act should not be extended; Supreme Court said that congress can extend copy right if they want to; not a violation of first amendment

how are infringement and dilution claims different?

infringement about consumer confusion; dilution is making mark less valuable

What are the exceptions recognized under the Federal Trademark Dilution Act as amended by the Trademark Dilution Revision Act in 2006?

meaning not actionable as dilution by blurring or tarnishing [1] Any nominative or descriptive fair use (when not source-denoting) in connection with... ○ Comparative advertising OR ■ Advertisers can truthfully and non-deceptively use the mark of a competitor to compare product if its is factual ■ Don't need permission ■ Not considered infringement ■ No consumer confusion ■ Truthful non-misleading comparative advertising ○ Identifying and parodying, criticizing, or commenting on the famous mark owner (or its goods or services) [2] All forms of news reporting and news commentary [3] Any non-commercial use of the mark - does more than merely propose commercial transaction

criteria of copyrightable work?

original works of authorship that are -Original means some degree of individual effort -Some effort of creativity from an individual -fixed in any tangible medium of expression -Mere ideas in someone's head are not protected, The brain is not a tangible medium of expression -perceived, reproduced or otherwise communicated either directly or with the aid of some device.

what is a compilation?

work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." ■. Can be facts ■ Unique set of facts that have enough intellectual effort that can be copyrighted ■ Dow Jones index- factual information weighted into an index that a lot of people follow ■ Copyrightable ■ Share price of general electric in and of itself is not copyrightable but the index is

What is the Significance of the Supreme Court's ruling in the Aereo case in 2014

■ Aereo, Inc. (Aereo) provides a service that allows its subscribers to watch programs that are currently airing on network television or record programs that will air in the future over the Internet. By allowing subscribers to watch live television as well as record and watch shows on Internet-enabled devices including mobile phones, Aereo serves three functions: that of a regular television antenna, a recording device, and an application that makes these services work on devices other than televisions and computers. Aereo does not have a license from the copyright holders of the programs to record or transmit their programs. ■ Two groups of plaintiffs filed separate copyright infringement suits against Aereo and moved for a preliminary injunction to prevent Aereo from transmitting programs to its subscribers while the programs were still being broadcast. The plaintiffs claimed that the transmission of the programs violated their right to "publicly perform" their copyrighted works. ■ Question was whether this violated the public performance rights of the copyright program of the broadcast company ■ Court ruled service that streamed on-air broadcast TV programs over the Internet in near real-time infringed on the exclusive public performance rights ● Aereo is functionally similar to community antenna television (CATV), which Congress specifically amended the Copyright Act to cover, the Copyright Act regulates Aereo's actions in a similar manner. Therefore, Aereo, like CATV, is not just an equipment provider but rather a broadcaster.

What rights are included among the copyright owner's exclusive rights?

■ Copy or reproduce the original work ■ Create derivative works based on the original ■ Distribute the original work (including first distribution) ■ Display the original work publicly ■ Perform the original work publicly ■ Perform copyrighted work publicly via digital audio transmission if the work is a sound recording

what is the difference between direct, contributory and vicarious infringement?

■ Direct infringement (Andreas case we just discussed) -Violating copyright owner's rights without permission ■ Contributory infringement - generally -Requires (1) knowledge of the infringing activity and (2) material contribution to the activity - inducement ■ Vicarious infringement - generally -Having "(1) the right and ability to supervise or control the infringing activity; and (2) a direct financial benefit from that activity"

How long does copyright protection last for an authored work under the CTEA? how about for joint works (more than one author)? Works made-for hire?

■ Extended copyright protections ○ "Author(s)" - for works created on or after 1/1/78 -Term: Life of author plus 70 years OR if joint authors then life of last surviving author plus 70 years -If co-author and co-author outlives me then its co-authors life plus 70 years ○ "Works made for hire" created on or after 1/1/78 -"[A] work specially ordered or commissioned for use as a contribution to a collective work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or an atlas, if the parties expressly agree in written instrument signed by them that the work shall be considered a work made for hire." -Works produced within the "scope of employment" -Certain works "specially ordered or commissioned" under express written "work made for hire" contract -Usually the "author" and owner is a company -Term: 120 years from date of creation or 95 years from the publication date (whichever is shorter) (also applies to anonymous and pseudonymous works) -limits free speech

What must the plaintiff prove in an infringement suit? What circumstantial evidence can be sufficient to prove unauthorized copying if there is no direct evidence of unauthorized copying?

■ Party claiming infringement under Act must prove: -OWNERSHIP of a work that is protected by a valid copyright and registered, AND... -UNAUTHORIZED COPYING of the parts of the work that are original and protected by copyright with... ○ EITHER direct evidence of copying... ○ OR circumstantial evidence of copying: -ACCESS* TO ORIGINAL WORK (meaning a "reasonable opportunity" or "reasonable possibility" of viewing the original work) AND -SUBSTANTIAL SIMILARITY TO ORIGINAL WORK

Examples of contributory and vicarious infringement

■ Sony Corp. v. Universal City Studios, Inc. (U.S. 1984) -Sony had technology that could record things and the supreme court said that sony was not liable for copyright infringement -Supreme court said non-contributory -People could use it for substantial non-infringement uses ■ A&M Records, Inc. v. Napster, Inc. (U.S. 9th Cir. 2001) -A lot of content was copyrighted music that was not allowed to be produced \ -Napster was materially contributing or inducing people to use service -Napster was also guilty of vicarious infringement because illegal files were on the website ■ MGM Studios Inc. v. Grokster Inc. (U.S. 2005) -Service Grokster changed so that it was a peer to peer service- a conduit so that people could connect their hardrives on their own computers. If I have music on my computer someone can access that music through Grokster -Supreme court said this was CLEARLY contributory infringement -Clearly encouraging people to use the program for this illegal service -Held liable for the inducement factor

The significance of the Tasini and National Geographic cases regarding electronic distribution

■ Various freelance authors wrote articles for various print publishers. The publishers treated the authors as independent contractors under contracts. The authors filed suit alleging that their copyrights were infringed when the print publishers placed their articles in the electronic publishers' databases, such as LEXIS/NEXIS. ■ The District Court held that the electronic databases reproduced and distributed the authors' works, under section 201(c), "as part of...[a] revision of that collective work" to which the authors had first contributed. ■ The Supreme Court held that section 201(c) does not authorize the copying at issue. "The publishers are not sheltered by [section 201(c)], we conclude, because the databases reproduce and distribute articles standing alone and not in context, not 'as part of that particular collective work' to which the author contributed, 'as part of...any revision' thereof, or 'as part of...any later collective work in the same series.' Both the print publishers and the electronic publishers, we rule, have infringed the copyrights of the freelance authors," ■ Third party database-- created a new work

Examples of Safe Harbor cases

■ Viacom Int'l, Inc. v. YouTube, Inc. (S.D.N.Y. April 2013) ● Case was settled in March 2014 after 7 years of litigation ● Viacom International, Inc. (Viacom) and other copyright holders (collectively, "plaintiffs") (Plaintiff) alleged direct and secondary copyright infringement based on the public performance, display, and reproduction of about 79,000 audiovisual "clips" shown on the YouTube (Defendant) website, an online video sharing service. The plaintiffs (Plaintiff) argued that YouTube (Defendant) was not entitled to safe harbor protection under the Digital Millennium Copyright Act (DMCA) for airing the clips because, as plaintiffs (Plaintiff) claimed, YouTube (Defendant) was aware or chose a blind eye to the fact that these clips did indeed infringe on the plaintiffs' (Plaintiff) copyrights. ● This Digital Millennium Copyright Act (DMCA) case is important because it will likely be looked to as precedent in the future. The court addressed many points of DMCA law, which points out the many factors a service provider must meet under the DMCA to qualify for safe harbor protection under § 512. This aspect of the DMCA has been criticized as a deficiency of structure, because even if a service provider meets all but one of these many factors, the provider will not be entitled to safe harbor protection. ■. Lenz v. Universal Music (U.S. 9th 2016) ● Ninth Circuit ruled that "fair use" must be considered before sending "takedown" notice - "dancing baby" case ● Must be considered before sending and complying with a takedown notice ● Music is barely discernable ● Fair use was not considered before take down

What are the elements of copyright "infringement?" How does the Copyright Act define "infringement?"

■ Violation of © owner's exclusive rights -Rights listed in the federal Copyright Act in Section 106 -"Fair use" is not infringement, usually raised as defense

What is the federal statutory remedy that trademark owners have against alleged cybersquatters? what must the plaintiff prove to prevail under the federal statute-- the anticybersquatting consumer protection act? specifically what is bad faith in this context?

○ Anticybersquatting Protection Act (ACPA) of 1999 ○ Must prove the other person: ○ "registers, traffics in, or uses a domain name that is...identical or confusingly similar [to that mark]..." - "...with "bad faith intent to profit..." ○ Nine statutory "bad faith" factors (all are listed in the reading) including... - Commercial use of mark in question? - Intent to divert consumers using the mark in question? - Registered mark to sell back to "rightful" owner? ○ Remedies under the statute include injunctions and forfeiture orders among other remedies under ACPA - Note: Federal §230 immunity does NOT protect websites from federal TM claims for user-generated content

What does copyright law not protect?

○ Ideas, concepts or principles -Businesses are very protective of their ideas before they are done being developed ○ Facts, procedures, processes -BUT: Original, unique compilations of facts CAN BE ○ Names, titles or short phrases (might be a trademark) -Not typically copyrighted -Title for something can be used as long as items are unrelated ○ Slogans, catch phrases, lists of ingredients or formulas -"Just do it" is not copyrighted just trademarked -Shape of a water bottle cannot be copyrighted but a photo on a water bottle can be copyrighted ○ Formats and layouts -News first then weather then sports- format and not copyrighted -Drop down menu on a website is not copyrightable ○ "Useful articles"

V Secret Catalogue v. Moseley (6th Cir. 2010)

○ Likelihood of dilution? -Easier to win if you don't prove dilution but likelihood of dilution ○ Appeals court held that use of "Victor's Secret" or "Victor's Little Secret" for adult novelty and gift store make "sexual associations" with the famous mark - "Victoria's Secret" - with clear "semantic association," and, absent proof to the contrary, was likely to dilute the famous mark by tarnishing -Small little shop gets hit by VS -Companies will go to great lengths to protect their mark ○ Appeals court upheld trial court's permanent injunction against the Moseley's - case was on remand... ○ SIGNIFICANCE: In 2003, Supreme Court had ruled in case that FTDA required proof of actual dilution so Congress passed 2006 TDRA to require only likelihood of dilution -Standard was changed to a likelihood of dilution

Term of trademark protection

○ Protection is renewable every ten years -Allows continual use in business, commerce -Unlike copy-right which is limited protection ○ Mark can be "abandoned" by the owner: -Voluntary abandonment -Involuntary abandonment - mark becomes commonly used as a generic noun or verb (cellophane, aspirin, escalator, for example) ○ How do owners protect their valuable marks? -Informational campaigns - PR and AD campaigns -Specific warnings and notices -Litigation - they sue!

Qualitex Co. v. Jacobson Products Co. (U.S. 1995) - For the issue of color developing a secondary meaning in trademark law.

○ Qualitex Company (Petitioner) uses a special shade of green-gold for press pads that it sells to dry cleaning firms. Jacobson Products (Respondent) began to use the same color. Petitioner registered the color as a trademark and then added a trademark infringement count to an unfair competition claim in a lawsuit it had already filed against Petitioner for use of the color. The Lanham Act gives a seller or producer the exclusive right to register a trademark and to prevent competitors from using that trademark. ○ There is no objection to the use of color alone as a trademark, when that color has attained a secondary meaning and therefore identifies and distinguishes a particular brand.

What is the legal effect of registering a mark with the U.S. Patent & Trademark Office (USPTO)? Generally, what is the process?

○ lets you own trademark & sue for dilution ○ registration renewable every 10 years, but can be abandaned voluntarily or involuntarily [becomes a generic word]

what is trademark dilution?

○ making trademark less valuable; Commercial use of famous and distinctive mark that is likely to cause dilution by blurring or tarnishment - key definitions: ■ famous; widely recognizable company ■ "Blurring" - confusing;Association arising from the similarity between the mark or trade name and the famous mark that impairs the distinctiveness of the famous mark - see the non-exclusive FACTORS in TDRA (next slide); Tarnishment: ruin reputation of mark

Ownership rights: what are the key terms and provisions of the Copy Right Term Extension Act (CTEA)?

● CTEA was legal, didn't violate 1st amendment rights ● In the 1998 Copyright Term Extension Act (CTEA), Congress enlarged the duration of copyrights by 20 years, making copyrights now run from creation until 70 years after the author's death. Petitioners, whose products or services build on copyrighted works that have entered the public domain, argued that the CTEA violates both the Copyright Clause's "limited Times" prescription and the First Amendment's free speech guarantee. They claimed Congress cannot extend the copyright term for published works with existing copyrights. The District Court and the District of Columbia Circuit disagreed. ● Court held that Congress acted within its authority and did not transgress constitutional limitations in placing existing and future copyrights in parity in the CTEA. Disagreeing with the argument that a copyright once set is fixed, the majority found that the CTEA "continues the unbroken congressional practice of treating future and existing copyrights in parity for term extension purposes," and is a permissible exercise of Congress's power under the Copyright Clause. Moreover, the Court held that the CTEA's extension of existing and future copyrights does not violate the First Amendment.

what are the factors that courts use to determine likelihood of dilution by blurring?

● Degree of similarity between the mark or trade name and the famous mark ● Degree of inherent distinctiveness of the famous mark ● Extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark ● Degree of recognition of the famous mark -Relates to consumer perception ● Whether the use of the mark or trade name is intended to create an association with the famous mark -Is there some attempt to rely upon the thing of distinctive original mark ● Any actual association between the mark or trade name and the famous mark -Either through advertising or something along those lines