This article was originally posted on The Tactical IP Blog

• Shut down the luge track to prevent any more deaths… check.
• Conduct an internal investigation… check.
• Let an “independent” authority do its own investigation… check.
• Make immediate modifications to the luge track to stop future accidents… check.
• Make a press release, expressing regret, but denying all responsibility… check.

All perfectly acceptable anticipated responses. So why is this an IP story, you ask? Well, when the above-described actions failed to push this embarrassing catastrophe under the rug, the IOC turned to their attorneys, asking what else could be done to hush the whole thing up. Video clips of Kumaritashvili losing control of his sled and crashing into a steel pole were popping up all over the internets, repeatedly showing the world what happened. The answer from their legal team: Those people are violating our copyright in that clip! We can use the Digital Millennium Copyright Act (DMCA) to have that material removed from the web — so no one else will see it!

Now, giving the IOC the benefit of the doubt, I’m sure their intentions in suppressing the accident footage were honorable. Don’t misunderstand me. I recognize that what happened was horrible, and Kumaritashvili’s family and teammates are likely still reeling from the impact of it all. If they have to see that clip everywhere they turn on the web, that’s not ideal — especially if any of the commentary employing the clip was in poor taste, which I’m sure some of it was.

Even where all of this is true, U.S. copyright law was not implemented to choke off the flow of facts and news reporting. In fact, § 107 of the Copyright Act specifically limits a copyright owner’s rights in these kinds of situations. The IOC cannot use DMCA takedown notices to silence the speech it does not like. In fact, sending those notices may end up costing the IOC, unless they can successfully make the case that they considered whether use of the clips could be fair use before making their demands. Just ask the artist currently known as Prince. This will be tough argument for the IOC, considering this isn’t the first time they’ve tried to misuse their copyrights.

Unfortunately, groups like the IOC don’t recognize that the appropriate response to inappropriate speech is not to look for the most expedient suppression mechanism — it’s more speech. The marketplace of ideas is perfectly capable of recognizing which commentary is a legitimate dissemination of news about the tragedy and which ones are morbidly childish. Sending out demand letters that essentially state “you have to pay if you want to show our Faces of Death video” is equally deplorable, no matter what the IOC’s intentions actually were.

The article was originally published on The Tactical IP Blog

As an example, when someone goes shopping for clothing, they are able to quickly pick out which garments are desirable, and which ones are not, simply by looking at the tag or emblem stitched on the left breast.  If you see a silhouette of a man riding on a horse and swinging a polo mallet, you immediately know something about the characteristics of that shirt, whether it’s from your own experience or from what you may have heard from other satisfied purchasers.  You know a little something about the quality and whether it falls into your intended price range – all without having to spend the time, effort, and expense of buying one of each brand of shirt and conducting your own comparative analysis.  You know, before even opening it, that when you take a sip from that can that has “Coca-Cola” printed on it, it will taste a certain way, and you likely made your purchase (or selected the one with “Pepsi” printed on it instead) based on that knowledge.

This special kind of nonverbal communication of information only works, however, if we let a single shirt maker to use the polo playing man silhouette.  If three different companies used the same symbol, no one would know which one is the good one and which one’s seams come undone after one washing.  This phenomenon is aptly named, in the parlance of trademark law, consumer confusion – where two or more companies use marks that are so similar that consumers have trouble associating a single producer with a particular product.  As a method of preserving the economic advantage embodied in this product/producer association, our federal government, and each state, has created a legal cause of action, which allows a producer to sue others who try to use her trademark in a way that creates consumer confusion.  It makes sense to put the job of enforcement into the hands of the parties whose interests are most closely aligned with the government’s, keeping the size of government down and minimizing taxpayer costs.  Toyota will be as motivated as the government, if not more, in preventing someone from selling lemons with a rounded “T” symbol on them.

The only potential problem with this enforcement schema is that some producers, usually because they are not informed, misunderstand the purpose of trademarks and try suing anyone who uses their mark, even when there is little or no danger for consumer confusion.  Usually, those mark owners believe that they “own” a particular word that they’ve used as a trademark, such that they can prevent the whole world from using that word without their permission.  This perception of trademark ownership, while completely incorrect, is unfortunately held by many.  As a result, many a demand letter is sent to an unhappy customer who wrote about their unpleasant experience with a particular company, for example, on their Facebook or Twitter page.  Preventing criticism couldn’t be further from the intended goal of trademark law, and many companies find out the hard way that trying to use your trademark rights to silence an unfavorable review only draws attention to a bad customer experience – one which is likely an anomaly.

As an entrepreneur, registering and enforcing your trademarks can be an incredibly powerful way of building your brand and, as a result, your business.  Just be careful to keep in mind the real reason why the government has given you the power to sue and try to use an attorney who is experienced in these matters, who can help you see the unintended consequences of filing an infringement suit.

This article was originally published on The Tactical IP Blog.

This 2 hour seminar will examine social attitudes toward law, lawyers, and legal institutions through the viewing and examination of Hollywood films.  Film depictions of law students, juries, and judges will also be considered.  Each seminar session will focus in as much depth as possible on a particular film or films and a particular problem or aspect of law, law practice, ethics, or the image and status of the lawyer in American culture raised by the film(s).  The majority of the films will be viewed outside the classroom and will be considered as texts providing contemporary depictions of the subject matter to be examined in class.  In addition, readings will be assigned for each film and will form the basis for class discussion.  The films will be reserved in the library.  This will be a paper course which may be used to satisfy the Upper Level Writing Requirement.

My understanding is that this course is just another excuse for chicks in law school to watch Legally Blonde (2001) for the 4,821st time.  What a great way to spend your tuition dollars at a professional school!

Normally, I’m not the one in this forum to bitch about the state of legal education.  Marco & Co. do it regularly enough that I don’t have to.  (See here, here, and here.)  On the whole, my law school experience was a good one.  I took as much advantage of our externship program as I could, and I went out of my way to take classes from adjunct professors who I knew actually practiced what they were preaching.  What I object to is courses that have students watch reruns of “L.A. Law” (1986), or other fictional portrayals, as a means for teaching about the practice of law.  Aren’t there other subjects that could be presented that have more merit?

One subject jumps quickly to my mind, and regular readers of this blog will recognize it immediately.  I would call it “Streisand 101,” taking its name from actress and singer, Barbara Streisand, who effectively demonstrated that simply filing a lawsuit can bring about the exact opposite result from what you hoped to achieve.  It would be a skills course, aimed at training young lawyers to talk their clients down from filing certain kinds of lawsuits — the kind that end up splashed all over blogs like this one, fueling negative publicity for the client.  The intent would be to teach how to 1) determine the unintended consequences of a particular cause of action; and 2) effectively communicate those consequences to the client, giving them the opportunity to back away before doing any real damage.  The primary pedagogical tools would be roll playing and reviewing news stories about past P.R. blunders.

Finding great teaching examples would be about as challenging as falling off of a log.  Just this week, outdoor clothing maker, The North Face (TNF), is in the news again, moving forward with their lawsuit against The South Butt (TSB).  (You can find my previous coverage of the case here.)  Before TNF filed their lawsuit, TSB had a whopping $5,000 in gross sales — after months of being in business.  Now, TSB’s selling that much every hour.  Their attorney claims that, with 14 new employees, TSB has created more jobs in its home state than the Obama’s $800 billion stimulus plan.  (Source.)

The only downside that I see to so educating the next crop of attorneys is that a huge source of entertainment will be snuffed out.  What will we read about for fun when Micheal Jordan’s attorney convinces him not to sue the people who congratulate him?

This article was originally published on The Legal Satyricon

If you look closely, you can see the heart.

Design patent protection is similar to copyright protection, in that the alleged infringer is in trouble if they’ve produced something that is substantially similar to the protected design.  However, while the government simply gives out copyright registrations, upon request, design patents are only awarded after an examination is done and it has been determined that the proposed design is novel (i.e., no one else has previously designed a product like this).

Gwyneth’s design

The prize for successfully prosecuting a design patent application?  Complete national monopoly for 14 years.  Since copyright protection lasts for a minimum of 70 years, some people would argue that a design patent is hardly worth the effort and cost.  The problem with that logic is that copyrights come with a whole boatload of limitations, leaving room for potential defendants to get away free.  As a key example, fair use and independent creation are no defense to a charge of design patent infringement.  Just ask Paris Hilton, who undoubtedly has just learned about this little wrinkle from her attorney.

This article was originally posted on The Tactical IP Blog

No.  It was those champions of copyright policy, the Rosemont Police.  As it turns out, Illinois has a relatively new anti-bootlegging statute, which criminalizes knowingly operating an audiovisual recording device in a movie theater without permission.  See 720 Ill. Comp. Stat. 5/21-10.

Now, don’t get me started about what a moron this woman is.  Clearly, she’s not the brightest crayon in the box, but I’m not sure she should be looking at three years in the state pen for being a moron.  Her conduct can arguably be defended as fair use, avoiding any civil liability for copyright infringement.  Even if it’s not newsworthy to the most of us, the reason that Ms. Tumpach gives for making the recording, i.e., preserving her sister’s birthday activities for posterity, likely does satisfy the first prong of a fair use analysis in her favor.  With a recording that comes in at a whopping four minutes, the amount-and-substantiality factor should go her way as well.  And it isn’t likely that Ms. Tumpach’s video will replace the needs of these screaming Twilight moms to see Jacob’s rippling six pack.

With respect to federal criminal liability, Ms. Tumpach’s activities don’t seem to satisfy those requirements either.  She didn’t make her video for personal commercial gain, and she hasn’t distributed anything.  So I’m scratchin’ my head, trying to figure out why this chick had to cool it in the clink for a few days and is now awaiting a full-blown criminal trial.  Has being a rude, inconsiderate, i’d-answer-my-cell-phone-if-it-rings-during-this-movie titwank finally become illegal?  She does admit to talking throughout the film, which in my book should be punishable — but more in the corporal variety, e.g., the slap-a-bitch treatment.

Now write the date and time down somewhere, because this may be the only time you’ll ever hear me make the following statement:  I don’t think that the state of Illinois has the power to enforce its bootlegging statute.  Normally, I’d say the federal government should get the hell out of the way, and let the states do their thing, but not this time.  You see, the United States Constitution provides the authority to the Congress to create legislation to protect the exclusive rights of copyright owners.  Any right that the states have to recognize or enforce copyrights has been expressly preempted by the federal government.

Making these criminal charges stick, solely based on the statutory language, may be a slam dunk for some prosecutor, but I’m not sure it would be constitutional.  What say you Blevins?  Would you throw the book at this chick?

UPDATE:  Cook County prosecutors have dropped the charges against Ms. Tumpach (source).  Summit Entertainment, the film’s producer, and Muvico, the theater involved, have both made press releases, declaring that, while they are happy that Ms. Tumpach got off with only an attorney bill and a couple of nights in a holding cell, they are committed to a zero-tolerance policy, recommended by the MPAA, for handling camcorder use.

This article was originally posted on The Legal Satyricon

The bottom line is that you can’t sue anyone for “stealing your idea” or “taking that movie plot you thought of.”  This concept is hard for some to grasp, and every so often, a big player in the IP world may take advantage of this common misunderstanding.  While perusing sites that sell graphic tees (one of my favorite forms of communication – e.g., here, here, or here), I came across an example of this that I think is worth sharing.

It seems that Ian Bogost, a video game professional, associate professor, blogger, and amateur t-shirt designer, decided that it would be clever to put a Spanish phrase, “Por favor manténgase alejado de las puertas,” on a t-shirt, adjacent to various theme park graphics.  If you’ve spent any time in a Disney theme park, you may recognize the foreign equivalent for “Please stand clear of doors,” which can be heard over and over on the monorail, as the automated recording paternally berates passengers.

When Mr. Bogost put his t-shirts up for sale on Zazzle, one of his designs was quickly yanked from the virtual shelves.  He was told that it was due to copyright infringement.  The response to his requests for additional information came as follows:

The Disney castle concept is the protected intellectual property of Disney Inc. and may not be used on Zazzle products without permission, regardless of who the original artist or photographer may be.  We are sorry for any inconveniences this may have caused. (Source.)

The above statement is legally incorrect.  Disney may have several registered copyrights in various depictions of a castle.  They more than likely have multiple trademark registrations that include a castle design.  They may even own the copyright in the architectural plans that were used to construct the castles that appear in their theme parks.  But no one owns the concept of a castle.  It is free for all the world to use.

Now, as an attorney, I have a duty to qualify that last statement.  While the concept of a castle may be free for all the world to use, you will want to consider your risk tolerance when you do so.  If you draw your own castle, and it looks too much like the Disney castle, they can certainly accuse you of copyright infringement – and when I say “accuse,” I mean “sue.”  They may not win, but they can certainly make life rough for you until they lose.  Disney can also “accuse” you of trademark infringement, or more likely, trademark dilution.

My guess here is that Zazzle got some communication from Disney, which threatened all of these causes of action, if Zazzle didn’t remove Mr. Bogost’s t-shirt design.  More than likely, Disney used some language that wasn’t quite so questionable, and Zazzle either misunderstood or misquoted them in responding to Mr. Bogost.  Could be that Zazzle has had a previous run in with Disney, over a completely different t-shirt design, and Zazzle has taken a proactive approach to avoiding similar disputes in the future.  Either way, that company’s not going to stick its neck out on Mr. Bogost’s account – it just doesn’t make business sense to do such a thing.  And Disney knows this.  As a result, they succeed in asserting that they own the “concept” of a castle – a dubious claim at best, from an academic perspective.

The article was originally posted on The Tactical IP Blog