Owners, Borrowers & Thieves 2.0 : Husch Blackwell Sanders LLP : First Amendment, Commercial Speech

Coming soon to a blogoshpere near you . . .

As regular readers of this blog know, we have often used this space as a means to follow and comment on the continuing tension that results from trying to fit new technologies, new types of content and new content delivery systems into old paradigms of intellectual property law.  Sometimes it's copyright -- for example, YouTube's assault on (or defense behind) the DMCA;  sometimes its trademark -- for example, whether Google Keyword ads constitute trademark use for purposes of an infringement claim; sometimes it's even Comics!

Recently we've realized that our mutual interest in emerging technologies and how the law practice can adapt to a changing IP environment has been prompting us to adapt our blogging to fit our own new paradigm.  We're very excited about some changes that will be coming shortly, including adding a fresh new voice or two.

We hope we've been "fairly useful" (to borrow Professor Sag's great blog title) so far, and hope you'll check in regularly as we go forward.

Stay tuned . . .  

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It used to be pretty simple.  You went to a record store (or mailed in your record-club form), bought an album or CD, and you owned it.  As the owner, you had certain rights--under the First Sale and Fair Use doctrines, you could make a copy for your own personal use, give it away,  share it, even sell it.  Easy, right?

Well, the times they are a'changin'.  Like many people, I haven't bought a new CD in a long time -- I have all my music on my iPod and download it from iTunes (legally, of course).  Now I'm excited about Amazon.com's new MP3 Store, which promises cheaper music downloads, better sound, and--most importantly--the music is DRM-free, meaning I can play it on any device.  Great! 

But not so fast . . .

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No, that's not a headline from The Onion.

In a recent precedential opinion, the TTAB held that evidence from the immensely popular online encyclopedia Wikipedia can be admitted even though -- by its very nature -- such evidence may be unreliable.  See In re IP Carrier Consulting Group, TTAB, Serial No. 78542726 (June 18, 2007).   At issue were applications to register two trademarks: "ipPICS" for online image services and "ipPIPE" for communications services.  The PTO rejected both applications on the grounds that they were merely descriptive of the services provided.  In doing so, it relied in part on numerous online and print sources showing that the abbreviation "ip" was commonly used to refer to "Internet Providers" such as the applicant.  On appeal to the Board, the applicant cited Wikipedia's entry on "Internet Service Provider" to show that the most common abbreviation for Internet Provider was "ISP", not "IP."  The Board accepted and considered the Wikipedia evidence, but still affirmed the examiner's descriptiveness finding and refused the applications.

In the process, the Board spent some time discussing the relative merits of evidence from Wikipedia and other user-edited online sources and concluded that the fact that such sources may sometimes be unreliable does not make them automatically inadmissible, provided the non-moving party has an opportunity to introduce rebuttal evidence.

Does this make sense?  John Welch at the TTABlog doesn't think so.

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As should be pretty obvious from most of the posts on this blog, we like to focus on new cases, new industry developments and new technology and how all those new things fit in with old (or at least older) legal constructs.   Today I want to draw your attention to a new resource that focuses on the old practice of settling cases.

I recently discovered The IP ADR Blog, a new blog hosted by Victoria Pynchon, Michael Young, Les Weinstein and Eric Van Ginkel, a group of well-respected alternative dispute resolution specialists in Los Angeles.  The blog focuses exclusively on IP litigation/ADR-related issues such as licensing structures, negotiation and IP asset valuation, all with an eye on getting litigating parties out of the courtroom and back to business.  Often one of the biggest challenges we face when advising clients involved in IP disputes is not letting the legal issues get in the way of seeing the business realities.  From what I've seen so far, The IP ADR Blog looks like it's going to be a great resource in meeting this challenge.

As Victoria Pynchon says in one of the first posts on the blog:

"Collaboration and reciprocity are the by-words of the blogosphere and the key to the settlement -- or the effective management -- of complex IP litigation."

I agree -- and in that spirit, I look forward to joining the dialogue and learning from these authors.

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That might be an increasingly popular refrain heard by Canadian pop star Avril Lavigne, who is getting a lot of attention right now for her songwriting practices.  Last week, Lavigne was hit with a copyright infringement lawsuit over her song "Girlfriend."  The plaintiffs are the founder and former road manager of the '70's pop band the Rubinoos.  They claim that Lavigne's hit infringes their 1978 release "I Wanna Be Your Boyfriend."  As you would expect, you can already find many comparisons on YouTube and elsewhere, including the Rubinoos own website.  (Of course, all those who posted snippets of both Lavigne's and the Rubinoos' copyrighted music on YouTube and elsewhere should have a fair use right to do so, as long as they only used as much of the songs as was necessary to facilitate their commentary.)  Eminent copyright scholars like William Patry and almost everyone else seems to have weighed in on whether the suit has merit. 

Lavigne publicly responded this week by essentially asserting a "no access" defense -- that is, she claims she never heard the Rubinoos' song, so couldn't possibly have copied it.  Curiously, Lavigne does not say whether her co-writer, producer/remixer Dr. Luke, ever heard the song.

The "never heard it" defense won't help Miss Lavigne out of her most recent copying flap, however.  In the last two days, similar copying claims have surfaced regarding another of her songs, "I Don't Have To Try."  This time Lavigne allegedly copied the song "I'm The Kinda" by Peaches, an artist (and song) that Lavigne recently publicly stated was one of her biggest influences. 

I'm no musicologist, but at first blush both claims appear to have some merit, and they can't be good for the young pop star's reputation.  It may be great to be in Rolling Stone and on Perez Hilton, but there are better ways to be noticed.

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Beware the RAM . . .

From Gary's iPhone to my TiVo to your computer, we've begun to take the existence and use of digital devices almost completely for granted.  Most of us never think about the vast amounts of digital data that are being processed through our devices' random access memory (RAM).  On the most basic (non-technical) level, all digital devices create and very briefly store--often for only fractions of seconds--transient data "buffer" copies of digital information in order to ultimately display and/or process that information for the end user. 

Cool, but so what, right?

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The tri-frontal attack on YouTube's business model spawned an interesting (probably to lawyers only) side skirmish the other day when a second class action complaint was filed by mandolin player and former Grateful Dead jammer David Grisman.  Grisman, along with his company Dawg Music and his partner Craig Miller, seek to represent a class of other musicians and copyright owners whose works are posted on YouTube without permission or compensation.  This filing falls on the heels of the class action complaint filed earlier this month by the English Premier League charging YouTube with massive copyright infringement.

The allegations in the two complaints are largely the same.  In fact, for the most part they are EXACTLY the same.  And that raises the question, asked by the Wall Street Journal Law Blog, whether wholesale copying of a filed complaint--alleging copyright infringement, no less--is itself copyright infringement.  Copies of both complaints are posted there.

This may be a bit of "inside baseball" to non-lawyers, but the blog post, and in particular the extensive comments thread, expose a heated debate that goes beyond the copyright question and touches on significant questions of legal ethics.  For example, many lawyers use form books or keep form files of different pleadings that they can lift from when preparing a new filing.  This can be very useful and efficient both for the lawyer and the client, and is probably not very controversial when you're talking about a simple appearance form or routine discovery requests.  However, what about a 40-page complaint?  Even if it contains similar factual allegations and legal theories, don't the lawyer's ethical obligations -- to investigate all the facts he or she alleges, for example -- require some modicum of originality?  And what about the bill the lawyer sends to the client? Is it OK to do wholesale copying if you only charge your client for the time it takes you to change the caption and the signature block? 

As to the copyright question, I tend to agree with Keith Henning at the copywrite blog.  He references an article by Professor Davida H. Isaacs applying a fair use analysis to the copyright question (see Davida H. Isaacs, The Highest Form of Flattery? Application of the Fair Use Defense against Copyright Claims for Unauthorized Appropriation of Litigation Documents, 71 Mo. L. Rev. 391 (2006)) as well as Professor Nimmer, but ultimately concludes that the allegations of fact in a complaint typically do not contain the level of originality required for copyright protection.  I don't think wholesale copying of this type is a good (or ethical) practice, but I'm not sure that it is copyright infringement.

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Is YouTube guilty of massive copyright infringement?  Or is it protected by the so-called "safe harbor" of the Digital Millennium Copyright Act, 17 U.S.C. 512(c)?  Yet another lawsuit now seeks to determine the answer to that question. 

(For a good primer on the DMCA's Safe Harbor provisions, see this very helpful FAQ at the internet law collaborative Chilling Effects Clearinghouse.)

The first big copyright challenge to YouTube's business model came last summer with a lawsuit filed by Robert Tur, a Los Angeles photojournalist whose video footage of the beating of Reginald Denny in the post-Rodney King verdict riots in 1992 became world-famous.  See Robert Tur v. YouTube, Inc., No. 2:06-cv-04436-FMC-AJW, United States District Court for the Central District of California, July 14, 2006.  Tur alleged that his Denny footage, along with copyrighted footage of the OJ Simpson chase and other events was posted on YouTube without his consent and viewed more than 1,000 times.  YouTube has defended by claiming that it is an Online Service Provider (OSP) protected by the DMCA safe harbor because it is not aware of and does not receive a financial benefit from the presence of infringing works on its site and its notice and take-down provisions meet the statute's requirement that infringing works be quickly removed.  YouTube filed a motion for summary judgment on the basis of this defense, which is currently set to be heard on May 21.  Tur has also filed a motion for summary adjudication on more narrow grounds, specifically challenging YouTube's claim that it does not receive a financial benefit from the presence of infringing works on its site.  This motion is also currently scheduled to be heard on May 21. 

The second front opened up in March of this year, when Viacom filed suit against YouTube and its parent Google, alleging massive copyright infringement of hundreds of thousands of Viacom properties.  See Viacom International, Inc. v. YouTube, Inc., No. 1:07-cv-02103 (LLS), United States District Court for the Southern District of New York.  Like Tur, the Viacom case will likely turn on whether YouTube's business model fits within the safe harbor provisions of section 512(c).     

Most recently, just days after filing its Answer in the Viacom lawsuit, and while it awaits the summary judgment ruling in the Tur case, YouTube and its parent Google were hit with another legal challenge to its highly successful but highly controversial business model.  This time it comes in the form of a class action complaint filed by the Football Association Premier League Limited (the top division of English soccer) and Bourne Co. (an independent music publisher in New York). 

Many of the contours of this lawsuit are similar to Tur and Viacom, but the class action approach is a new angle.  For one thing, you too might be a class member if you own the copyright or relevant exclusive rights in a registered copyright or certain sound recordings that have appeared on YouTube any time after December 15, 2005.  Obviously, that potential class is enormous, and probably renders many of YouTube's most fervent devotees potential plaintiffs against it.  I'm not going to try to address all the class certification issues that may come up, but suffice to say that will be a battle in itself.

One of the main substantive challenges brought by the plaintiffs in all three of these cases focuses on YouTube's claim that it does not derive a financial benefit attributable to the presence of infringing material on its site.  YouTube sells advertisements that run along side its video clips, including infringing clips, but these ads are not directly triggered by or connected to any particular video clip, infringing or otherwise.  There can be no doubt that YouTube has made huge amounts of money from these ads, and the plaintiffs all argue that YouTube would not be making the money it has but for the presence of so much infringing material on its site.  This could ultimately be a decisive factor in these cases, in part because a court could find YouTube outside of the safe harbor without having to address the propriety of its notice and take-down procedures.

It will be interesting to watch if any more suits are filed, or if other potential plaintiffs will wait for a key ruling in one of these cases.  The Tur case could lead the way depending on how the court rules on YouTube's pending summary judgment motion.  While the Central District of California's ruling will not be binding on the Southern District of New York, it will likely carry significant weight. 

Almost certainly aware of this, and obviously interested in the pending motions on YouTube's assertion of the DMCA's safe harbor defense, last week Viacom and NBC Universal asked permission to file an amici curiae ("friends of the court") brief in support of Tur's claims on this issue.  According to the court's electronic filing database, however, on Tuesday the court denied this request, finding that the brief was not offered to aid the court in its decision-making (as required for submission of such briefs), but was in reality "an effort by parties engaged in similar litigation against Defendant, to intervene in this case for their own benefit."  Like the rest of us, Viacom and NBC will just have to watch from the sidelines.

We'll be watching these cases closely, and should have more analysis of some of the specific legal issues later. 

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Mike Kahn had a post recently about the growing split among courts in different Circuits regarding whether use of a competitor's trademark in metatags or keywords was a "use in commerce" under the Lanham Act.  Discussing a recent Northern District of California case that found such a use to be actionable, Mike argued persuasively that if the trademark does not appear in the sponsored link or anywhere else in relation to the competitor's products or services, it is not "used" as defined under the Act. 

Today a judge in the Eastern District of New York weighed in on Mike's side of the argument.  In Site Pro-1, Inc. v. Better Metal, LLC, No. 1:06-cv-06508, EDNY, May 9, 2007, the court found that the defendant's use of the plaintiff's trademark in both metatags and key words in a sponsored search on Yahoo! did not violate the Lanham Act because the trademark did not appear on the defendant's sponsored link, or website, or anywhere else in connection with any products or services offered by the defendant: 

"The key question is whether the defendant placed plaintiff's trademark on any goods, displays, containers, or advertisements, or used plaintiff's trademark in any way that indicates source or origin.  Here, there is no allegation that Better Metal did so, and therefore no Lanham Act "use" has been alleged.  Indeed, the search results submitted as an exhibit to the complaint make clear that Better Metal did not place plaintiff's SITE PRO 1 trademark on any of its goods, or any advertisements or displays associated with the sale of its goods.  Complaint, Ex. B.  Neither the link to Better Metal's website nor the surrounding text mentions SitePro1 or the SITE PRO 1 trademark.  The same is true with Better Metal's metadata, which is not displayed to consumers."

As with Mike's analogy to beer billboards near baseball stadiums in St. Louis and Milwaukee, the court found such use to be simply the latest version of side-by-side advertising.  Quoting another district court case from within the Second Circuit, Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 431 F. Supp. 2d 425, 427 (SDNY 2006), the court concluded: 

" . . . this use is more akin to the product placement marketing strategy employed in retail stores, where, for example, a drug store places its generic products alongside similar national brand products to capitalize on the latter's name recognition.  The sponsored link marketing strategy is the electronic equivalent of product placement in a retail store."

Once you get past the initial reaction that use of one party's trademark to drive traffic to a competing website somehow just seems wrong, this holding makes sense and is more consistent with traditional trademark principles.  This reasoning has not yet taken hold outside of the Second Circuit, however, so for now, at least, the geographic divide on this issue continues. 

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Since Professor Lessig and a large bi-partisan group of others issued their call to the Repubican and Democratic National Committees to require television networks to make the video recordings of all Presidential Debates available to the public for free -- either by placing the videos in the public domain or issuing them under a Creative Commons (Attribution) license (see earlier post here) -- several candidates and two networks have weighed in.

According to Lessig's blog, Democrats Barack Obama, John Edwards and Chris Dodd have all written strong letters to the DNC announcing their support for this proposal.  Apparently there is nothing yet from any of the Republican candidates, and Democrat Hillary Clinton has also remained silent. 

Among the networks, CNN has come out in support of this proposal and has announced that it will place no restrictions on presidential debate footage:

Due to the historical nature of presidential debates and the significance of these forums to the American public, CNN believes strongly that the debates should be accessible to the public. The candidates need to be held accountable for what they say throughout the election process. The presidential debates are an integral part of our system of government, in which the American people have the opportunity to make informed choices about who will serve them. Therefore, CNN debate coverage will be made available without restrictions at the conclusion of each live debate. We believe this is good for the country and good for the electoral process.

By contrast, Lessig and USA Today's OnPolitics blog are reporting that Fox News Channel will not follow CNN's lead and will not make its video footage available for all to use. 

No word  yet from either the RNC or the DNC.  Check with Lessig for regular updates -- he's keeping a good scorecard . . .

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