We last blogged here about the Second Circuit’s denial of TV Eyes’ fair use defense in a lawsuit brought by Fox News. Now the Wikimedia Foundation (owner of Wikipedia), joined by other free press advocacy groups, have filed an amicus brief in support of TVEyes’ petition for the Supreme Court review.U.S. Supreme Court building in Washington, DC

TVEyes is a subscription service that records massive amounts of television content and compiles it into a searchable database of 10-minute clips. Its subscribers range from the New York Times to the Department of Defense. Fox News brought a copyright infringement action against TVEyes in 2013. The Second Circuit handed down a decision in February upholding the network’s claims. TV Eyes has appealed this decision to the Supreme Court.

The Wikimedia brief warns of dire consequences if the circuit court ruling is allowed to stand, stating that it permits copyright owners to “stifle criticism and undermines established fair use principles that are vital for media commentary.” It notes further: “In today’s fast-paced and increasingly polarized media landscape, researchers, commentators, and critics must be able to record, search, watch, and compare the original visual recordings of relevant broadcasts. Such comprehensive tools can only be maintained by commercial services like TVEyes.”

The amici questioned the Second Circuit’s balancing of the four fair use factors. The court found the fourth factor dispositive, in that the TVEyes service harmed the ability of Fox News to benefit from its copyrights by licensing clips directly. The Wikimedia brief challenges that conclusion, asserting that the existence of a direct market for Fox News clips is “theoretical,” and one that Fox would be “unlikely to authorize.”

Fair use analysis always requires a balancing of the copyright holder’s statutory monopoly against the benefits of free dissemination of content. Frequently, this involves purely commercial interests on both sides, but some fair use cases, particularly those involving matters of public concern, implicate larger values. It has been 20 years since the Supreme Court issued a major fair use decision. Advocates on both sides will be watching to see whether it will use this case to clarify a contentious doctrine.

Alarm bells rather than wedding bells are ringing in the insular but passionate world of romance novels as authors and publishers grapple with the question whether an author can claim exclusive rights to use “cocky” in book titles.

It started in early May, 2018. A self-published author named Faleena Hopkins obtained a registration for “cocky” as the the trademark for “a series of downloadable e-books in the field of romance.” Hopkins’s tomes include such titles as  Cocky Cowboy and Cocky Senator. Registration in hand, she sent cease-and-desist emails to other authors who had published books similarly titled.  Hopkins also reported the alleged infringements to Amazon, which removed a number of the titles from its Kindle e-book store.

Some of these authors  responded by re-titling their books. Jamila Jasper, for example, changed the title of her book from Cocky Cowboy to The Cockiest Cowboy to Have Ever Cocked. Hopkins’s campaign, not surprisingly, aroused intense emotions, and not only in the Twitterverse. Kevin Kneupper, an author and retired lawyer, filed a petition with the US Patent & Trademark Office (PTO) to cancel Hopkins’s registration. He is being supported in this by the Romance Writers of America (RWA), a nonprofit trade association. The RWA contacted Amazon to resume selling other writers’ Cocky titles, with some success.

Sniggering aside, this case actually raises a real trademark issue. Hopkins’s claim is, of course, that Cocky has been established as her brand–readers seeing Cocky in the title of a romance novel will identify it as one of her books. Her detractors claim that the word is simply descriptive of a particular subgenre of romance novels. For example, readers with a taste for historical “bodice-rippers” are guided by the cover and the title to their favored format. Likewise, lovers of medical romances will look for books with “doctor” in the title. So a reader who obtains fulfillment seeing a heroine break through the hero’s arrogant front would be aroused by a “cocky” title.

Whether a descriptive term can be protected as a trademark generally turns on the term’s “secondary meaning,” which is the extent to which an ordinary consumer would associate the term with a particular source. For example, one could argue that Star Wars is descriptive of a genre of space opera, but the term has unquestionably established secondary meaning. Secondary meaning is a factual question, usually established through consumer survey results. Hopkins’s challenge will be to establish that romance readers think of Cocky books as Hopkins books. The resolution is in the hands of the PTO.

 

 

The jury has spoken. After a saga worth of Homer, Comic-Con is a valid trademark.

The battle began when, the organizers of San Diego Comic-Con (SDCC), the 50-year old grandaddy of fan conventions, sued the producers of Salt Lake Comic Con for infringement. As we previously reported, the defendants struck back by asserting that comic con (no hyphen) had become a generic descriptor for comic book conventions, citing the scores of events around the country that describe themselves the same way.

The case took a curious turn when the trial judge issued a gag order against the defendants prohibiting them from taking their case to social media, bringing First Amendment issues into what was otherwise a straightforward trademark case. The Salt Lake crew challenged this order by seeking a writ of mandamus from the Circuit Court, which agreed with them and vacated the order.

The case went to trial in early December, with a verdict in favor of the San Diego Comic-Con. The jury found both that the plaintiff’s mark is valid and also that it was infringed. It determined, however, that the infringement was not willful, and awarded only $20,000 in damages rather than the $12 million demanded by the plaintiffs. Nevertheless, armed with a finding of validity, SDCC could be emboldened to take action against other comic book conventions.

The defendants, meanwhile, have not laid down their weapons. They’ve announced an intention to appeal the verdict and are also pursuing an petition before the US Patent and Trademark Office to cancel the rival mark.

 

10066940 – super hero and a ninja doing battle.

I’ve blogged here and here about the pending trademark infringement case brought by SDCC, the registered owners of the San Diego Comic-Con mark, against the producers of Salt Lake Comic Con. The Utah group had launched an aggressive social media campaign to draw moral and financial support from fans and organizers of other Comic Cons around the country. The plaintiff persuaded the trial judge, Anthony Battaglia, to issue a gag order to halt against this campaign on the ground that the extensive posts would taint the San Diego jury pool.

The Utahans appealed to the Ninth Circuit, which ruled in an order issued on October 26 that the gag order was unconstitutional. The court noted that prior restraints on speech are highly disfavored except in the most extreme circumstances, such as a clear and present danger to safety or a serious and imminent threat to SDCC’s interest in a fair trial. The defendants’ social media campaign did not, the court held, rise to this level. The court compared the defendant’s Twitter following of 35,000 against the jury pool of nearly 2 million and concluded that the plaintiff would certainly be able to find 12 unbiased jurors out of that large group. Moreover, Judge Battaglia should have recognized that less restrictive and routine procedures such as voir dire, jury sequestration and jury instructions would be sufficient to protect SDCC’s rights. The court also expressed raised the specter of a slippery slope, in that allowing the order to stand would justify similar orders “in almost any situation where an article is written or a statement is made in a public forum.”

This interesting but collateral issue having been disposed of, the parties can resume their progress toward what will presumably be a well-publicized trial.

46927072 – Aleksandr Smaglov

After the outspoken conservative commentator Milo Yiannopoulos sued Simon & Schuster this summer for allegedly breaching their contract to publish his autobiography Dangerous, Simon & Schuster threw the book at Yiannopoulos with a motion to dismiss.  But New York Supreme Court Judge Barry Ostrager was not convinced Yiannopoulos’ suit is ready for its final chapter.  Last week, the Court denied the motion and opened the door to discovery of evidence Yiannopoulos vows will show the publishing company breached the contract in bad faith to appease left-wing critics.

When news broke that Simon & Schuster agreed to publish Yiannopoulous’ work in December of 2016, droves of left-leaning celebrities and well-known authors decried the arrangement as promoting “hate speech” and called for a widespread boycott.  However, it was not until a podcast surfaced two months later in which Yiannopoulos purportedly condoned pedophilia that Simon & Schuster backed out, citing a clause within the contract that empowers Simon & Schuster to refuse publication of the work “if in its sole good faith the Work is not acceptable to it.”  That Yiannopoulos vociferously denied the accusation claiming his remarks were sarcastic and taken out of context is irrelevant, argued the publisher.

But what caught Ostrager’s eye was Yiannopoulos’ counterargument citing Simon & Schuster’s contractual obligation to permit Yiannopoulos to revise any manuscript the company deemed unsatisfactory and to provide specific reasons for rejection.  Yiannopoulos contends not only did Simon & Schuster fail to provide any reasons for rejection, but it also used the podcast as a pretext for terminating the contract to diffuse widespread left-wing backlash.

Regardless, the publisher reasoned Yiannopoulos should still lose because he kept his $80,000 advance and thereby triggered the defense of accord and satisfaction.  However, Ostrager held Yiannopoulos’ rebuttal that Simon & Schuster told him he had 18 months to return the funds was enough to defeat this argument at the pleading stage.

Yiannopoulos ultimately self-published Dangerous three days before filing suit, strongly suggesting, in Simon & Schuster’s words, the case is nothing more than a “publicity stunt.”  Regardless, the publishing company must answer Yiannopoulos’ verified complaint and engage in costly discovery if a settlement cannot be reached.

Closeup of earbuds and smartphoneLos Angeles-based IP lawyer Erin M. Jacobson recently penned a piece describing the ongoing dispute between members of the music industry and music streaming service Spotify, and arguing against Spotify’s attempts to limit the type of licenses it must obtain from copyright holders in order to maintain the service. She outlines the series of copyright infringement cases brought against the company and notes the ramifications for songwriters and publishers of a potential precedent-setting court decision in favor of Spotify’s argument that its streaming does not require a mechanical license.

To read the full piece, visit Erin’s blog. It was also published on the Forbes website on September 22.

Spotify, the world’s largest music streaming service, was sued last week for over $366 million by two music publishers, Bluewater Music Services in Nashville and a group of companies affiliated with Bob Gaudio, the award-winning songwriter and member of Franki Valli and the Four Seasons.

Closeup of earbuds and smartphoneEach plaintiff claims in their lawsuit that Spotify failed to comply with the requirements of Section 115 of the U.S. Copyright Act for obtaining mechanical licenses to use the plaintiff’s songs on Spotify’s streaming service, thereby infringing the plaintiff’s copyrights. Under U.S. law, streaming companies like Spotify are not required to negotiate mechanical licenses with publishers, but they must send publishers written notices of their intention to obtain compulsory licenses. The plaintiffs claim that Spotify did not provide proper notices to them and continued to stream their songs without mechanical licenses.

When a stream occurs, it utilizes two of the exclusive rights granted to a copyright owner of a song, the reproduction right and the communication right. In the music publishing business, those are known as “mechanical rights” and “performing rights.” Performance rights are licensed in the U.S. by performing rights organizations, like ASCAP, BMI and SESAC, which each represent different catalogs of songs. Mechanical rights in the U.S. are licensed primarily through The Harry Fox Agency, which acts as a licensing agent for music publishers, but mechanical rights in many songs must be obtained from individual publishers or songwriters, who can be challenging to locate and communicate with.

This is not the first time Spotify has been admonished for failing to implement adequate procedures to notify song proprietors of Spotify’s intention to add their songs to its playlist. In 2016, Spotify reached a $30 million settlement with the National Music Publishers’ Association (NMPA) for unpaid mechanical royalties and Spotify recently settled a class action suit by a group of songwriters led by David Lowery for $43.3 million. The largest members of the NMPA are the major music publishing companies, whose parent companies own a combined 18% of Spotify, according to the recent lawsuits. The lawsuits claim the three major U.S. record companies stand to make $700 million each if Spotify pursues a public offering (which is anticipated this year), thus fostering speculation those companies settled the lawsuits to protect that windfall.

In those prior lawsuits, Spotify emphasized the difficulty of identifying and contacting each song publisher and the company agreed in the settlements to “work collaboratively to improve the gathering and collecting of information about composition owners to help ensure those owners are paid their royalties in the future.” The complaints in the recent lawsuits claim that Spotify has “built no infrastructure capable of collecting compositional information and failed to ask for such information.”

In most countries outside the U.S., mechanical rights are licensed via a centralized collective licensing organization, which represents all the song owners in the particular country. Even if music publishers license their songs directly to a streaming service, the mechanical rights “society” in their country usually handles the administration associated with collecting and paying out the royalties due. In the U.S., there is no industry-wide or national organization to assist with processing mechanical licensing and collecting mechanical royalties

Although the U.S. music industry has acknowledged that a global music rights database is necessary, no one has yet made it a reality. Everyone seems to agree that songwriters and music publishers should be paid properly when their songs are streamed, and some argue it is the responsibility of the well-financed streaming firms to design a system to identify songs and make appropriate payments. Others argue the music publishing establishment should create a industry-wide system for identification and payment.

If the U.S. were to adopt the nationwide collective licensing model utilized in almost all other countries and create a centralized mechanical licensing entity, the recent lawsuits against Spotify would never have been necessary. Unfortunately, that is not likely to occur due to the entrenched and vested business interests involved, and the reluctance to collaborate and share databases of song information, which many consider to be proprietary.

Who would have thought a handful of textbooks purchased in Thailand and shipped to the U.S. would be the subject of repeated discussion at the United States Supreme Court?  Once again, Kirtsaeng v. John Wiley & Sons, involving the resale of textbooks, is heading to the U.S. high court.  In 2013, the Court decided Kirtsaeng I and held that the first sale doctrine applies to lawful copies of copyrighted works, irrespective of where the copy was made.  On remand, the issue of attorney’s fees became highly contested.  The Second Circuit decided not to award Kirstaeng attorney’s fees, which was premised on the finding that John Wiley & Sons’ claim of copyright infringement was not “objectively unreasonable.”  Kirtsaeng petitioned for certiorari, citing the split amongst various circuits regarding the standard for the award of attorneys’ fees in copyright cases.

Copyright: nbvf / 123RF Stock Photo
Copyright: nbvf / 123RF Stock Photo

On January 15, 2016, the Court granted Kirtsaeng’s petition to resolve this five-way circuit split.  The last time the Supreme Court addressed attorney’s fees in copyright cases was over two decades ago in Fogerty v. Fantasy, Inc.  Fogerty stood for three propositions: (1) prevailing plaintiffs and defendants should be treated equally; (2) attorney’s fees should not be granted automatically, but should be granted when the claim or defense advances the purposes of copyright; and (3) to assess whether a district court should grant attorney’s fees, the court may use the non-exclusive factors of (a) frivolousness, (b) motivation, (c) objective unreasonableness (both in the factual and legal components of the case), and (d) the need in particular circumstances to advance considerations of compensation and deterrence.

Currently, the Circuits have five different approaches on whether to grant attorney’s fees to the prevailing party in copyright matters.

  • Circuits that focus on the strength of the non-prevailing party’s arguments (First and Second Circuits).
  • Circuits that create a presumption in favor of granting attorney’s fees to the prevailing party (Fifth and Seventh Circuits).
  • Circuits faithful to the objectives of the Copyright Act (Ninth and Eleventh Circuits).
  • Circuits faithful to applying the non-exclusive Fogerty factors (Third, Fourth, Sixth and Eighth Circuits).
  • Circuits that are a hybrid of faithfulness to the objectives of the Copyright Act and the non-exclusive Fogerty factors (Tenth Circuit).

Given how critical 17 U.S.C. § 505 (the statutory provision on attorney’s fees) is to copyright litigation, Kirtsaeng II is likely to have further reaching and longer lasting implications on copyright than Kirtsaeng I.


Lincoln Bandlow and Rom Bar-Nissim recently wrote an article for the December 2015 Media Law Resource Center Bulletin on this subject, entitled “To Give Fees Or Not To Give Fees, That Is the Question (With A Different Answer In Every Circuit): The Circuit Split Over Attorneys’ Fees Awards Under The Copyright Act.”

To commemorate the anniversary of the 911 attack, a producer for Fox News personality Judge Jeanine Pirro  posted to the Facebook page that promotes Judge Pirro’s show an image the producer had found online that featured the iconic photograph of NY firemen raising an American flag at Ground Zero next to a photograph of soldiers raising an American flag at Iwo Jima.  With this post, the producer simply added the text “#neverforget.”

The owner of the copyright in the firemen photo sued for copyright infringement and Fox News moved for summary judgment on the grounds it was a protected fair use. New York federal judge Edgardo Ramos rejected the motion, holding that the fair use factors either did not favor defendant or there were questions of fact as to those factors, precluding summary judgment.

As for the first fair use factor, the court held that the use was not particularly transformative and it was a question of fact if the use was commercial. On the fourth factor, the court seemed to be concerned that allowing this kind of use would severely damage the licensing market for the photo.

Fox News has filed an interlocutory appeal, contending among other things that use on social media is inherently transformative by changing the context in which the work is used and because of the communication inviting nature of social media posts. How will this turn out?  As Judge Pirro might say on her show: stay tuned.