Tuesday, November 24, 2009

Do you hear something? Is that my own horn? Why, yes it is. Toot!

I became a lawyer for a lot of reasons, which is a good topic for another post on another day.

But one of those reasons -- and not a small one -- I really like to win. I know it won't happen every time. But when it does, it feels so nice.

(Remind me to tell you sometime about the on-campus interview when I was a 2L, and the callback interview I got for saying just this.)

So I've got this client -- LodgingKits.com -- in the business of selling, primarily, kits for use in the lodging industry at the website (three guesses) http://lodgingkits.com.

A while ago, they were named as Respondents in a UDRP brought by Lodging Kit Co., which operates http://lodgingkit.com. (No hyperlink - I know it's petty, but I'm a litigator by penchant and training, which means there's a level of emotional investment with my client, which means the bad guys get no link love from me.)

Now, during the pendency of the matter, I felt the best interests of my client were served by my silence. Now that it's pretty much over (barring some sort of trademark enforcement litigation on Complainant's part that would be ridiculously ill-advised ), I'm feeling a little more unrestrained.

I don't want to get all ad hominem on the Complainant's counsel, which will require a fair amount of restraint on my part. I will, however, say that the most distinct impression I got from the complaint was that it was done by someone who had no experience with UDRPs and/or who had no interest in winning the case.

That is to say, I don't have the time to do a redline right now, but the Complaint was a barely modified version of the sample complaint available from the Nat'l Arb Forum. I kept thinking of all those comedy movies where someone's administering an oath, and says, "Repeat after me: I, state your name," and the oath taker dutifully repeats, "I, state your name."

The only assertion of rights on which the Complaint was based was a registration of the mark on the Supplemental Register. Which alone wouldn't necessarily be fatal -- which is to say, I could imagine a fact pattern where it would not -- but is generally so, given what the Supplemental Register is all about.

Certainly on the facts of this case, the registration Complainant was relying on was less than useless to them. They had sought registration, been rejected for descriptiveness, and then amended to the Supplemental Register - essentially conceding a lack of secondary meaning.

I don't need to recap the argument too thoroughly; you can read it yourself in an elegantly structured and eloquently argued (if I do say so myself) Response (on JD Supra, here). I ring the no-secondary-meaning bell a bunch of times, in different contexts.

Complainant came back with something only a tiny bit less inane, including an affidavit (without exhibits) and bald assertions attempting to overcome the gross failures of the original Complaint. I had the job on a flat-fee basis, and could have adequately answered the Additional Submission with relative ease. But it was just so... crushable. It was fat, slow one over the plate, and I just had to spend the extra couple of hours knockin' it all the way out. Which is to say, I returned a(nother) elegant and eloquent Supplemental Response (on JD Supra, here).

In any event, the decision came down squarely for my client, agreeing with my primary contention that Complainant had not established rights in the mark in question. I would have liked it if the Panel had agreed with me in all my contentions, but - as is not atypical - once it determined that Complainant had failed to satisfy the first requirement of the Policy, the Panel didn't pass on the other prongs.

Even so, it's a definitive win for me and the client, and it served the client's interests in the obvious way as well as more subtle ways.

I'm happy, client's happy. All manner o' things are well.

Now that's a good day.


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Friday, November 13, 2009

Wide and Shallow: Fonts and Typography

There are so many other blogs out there doing IP breaking news and current-events; I try to frame my posts here as more narrow but also perhaps deeper.

But it's my blog and I can do what I please (within legal limits and all that.) So, herewith a wider ranging and less deeply probing set of links and ideas.

Somehow or another I found my way to Twenty Tweetable Truths about Magazines, which was elegant and wonderful made me think about magazines and the fact that I still subscribe to one or two and that I use them differently from the way I use the internet and other media sources.

Because I found it (I remember now) through a design e-newsletter I receive, which pointed to the font used, it also made me think of the Pulp Fiction Kinetic Typology videos -- (the one linked is the one I like most, but there's lots out there.) (Be advised, of course, it's not exactly safe-for-work, language wise. Depends on where you work, I guess.)

That got me thinking about the copyright issues in those kinds of presentations. My instinct is that it's a fair use -- transformative use made of a published (but fictional) work, taking only a small-ish portion of only the audio track, with very low likelihood of market substitution. A different, slightly more subtle question might look at the trademark implications. I want this use to be acceptable under that rubric, because the results are so wonderful, but I'm going to have to think about it a bit before I commit (post) either way.

Of course, it never hurts to actually get permission - as is claimed by the makers of the best one I saw when surfing around yesterday - the Who's on First kinetic typography presentation.

One of my pet interests is the protectability of design elements - particularly fonts - which is, rightly, the subject of one of the "deeper" posts I claim above. But my explorations yesterday led me to a font called Liza Pro, which has (claims) over 4000 "contextual ligatures and alternates," and "advanced OpenType programming" (see the slideshow, which is so cool!) that made me think of fonts in a way that I hadn't before - as a computer program or even a straight-up "method" for contextually reimaging letters. So that'll have to go into the hopper when I think about IP protection of fonts.

(Also in that vein, when is a font not a font? When it's clearly just art: Steampunk, Erte. Although I'm vacillating on that point even as I type these words.)


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Friday, November 6, 2009

Art Galleries and Catalog Images

If you've ever received an art gallery catalog, I'm sure the same question has occurred to you that occurs to me every time. To wit, "on what basis do these galleries and auction houses
publish on-line or electronic catalogs of this visual art without permission from the copyright holder? Or even the print catalogs, really?" (For an example, go to the Christie's site and find your way to a catalog; I don't want to permalink anything, because they change.)

What, that's never occurred to you? Honestly? Yeah, me neither. But it did come up on a mailing list in which I'm involved. For a group of lawyers with IP backgrounds, I'll be honest, I was a little disappointed by some of the analysis. (Except for mine, of course. My analysis was brilliant!)

The various ideas that were floated included fair use and "public display." Fair use is relatively well known, and comes up on the internet a lot. Public display is what you might think, though it comes at it backward. That is, there is a right [under Section 106(5)] ostensibly exclusive to the copyright holder to display a work publicly, where both display and publicly are terms of art, subsuming everything you might normally think falls into those definitions and then a little bit extra. However, that right is limited by Section 109(c), which allows the owner of a lawful copy of a given work to display that work publicly, "either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located."

In other words, that really funny New Yorker cartoon you have on your office door? Section 106(5) would prevent you from putting it up there, except that 109(c) comes to your rescue.

Public display gets a little trickier when it comes to certain works of visual art that require some element of reproduction in the display. The way it's taught is in terms of some of the more modern art pieces that involve a video display element or the like; in such a situation, the public display right entitles the owner of the work (not the copyright, mind you) to engage the video display element even though there might be some otherwise-verboten reproduction involved. Public display doesn't generally include the broadcast of audiovisual media.

A more salient (and possibly more controversial) application would be where a piece of art requires, for security or conservation purposes, that it be displayed (for instance) via audiovisual reproduction. So some artist makes a painting on... I dunno, dry ice. The only way to see (for more than however long it might take to otherwise sublimate) it is to put it in some special freezer and point a camera at it and look at on a monitor. It's fairly uncontroversial, though not entirely uncontested, to say that the display of the work on that monitor by the owner is allowed under Section 109(c), even though that might involve a sort of reproduction.

All of which is by way of a tangent, really, just to explain the possibility raised by some that the electronic and/or paper catalogs were permitted under 109(c).

Which proposition, I should say, I think is a bit daft. First off, 109(c) is explicit in its limitation to "no more than one image at a time, to viewers present at the place where the copy is located." Second, if you think about it, that would be an exception that swallows the rule. On that understanding, pretty much any time someone made copies of something that other people wanted to see and distributed same, online or in print, the claim would be that it was distribution of the originally purchased copy of the work. Which is sort of one of the paradigm cases of infringement, isn't it?

So it's not Public Display. Fair Use, then? Again, I don't think so. Running through the four-factor test shouldn't be too difficult.

We just need to more clearly define the possible infringement.

(1) It's not at all transformative. You might argue that the catalog information on the page adds some sort of value or information, but that's a bit specious. (2) Except in rare instances, we're probably talking about something "fictional," which is to say that art is more fanciful than the reporting of facts (even photography). (2a) There is the mitigating factor that it's 'published,' but I don't think that really does too much work here. (3) The taking is of the whole of the creative/infringed work, and certainly the "heart" of it - if the catalog photo wasn't sufficient to reproduce at least the core of the painting in question, it wouldn't be much good as a catalog photo.

The only thing working in favor of Fair Use would be (arguably) the fourth factor. It's the one time an alleged infringer could make that "I'm doing you a favor" argument with a straight face. The purpose of a catalog is, ostensibly, to *assist* the copyright owner in gaining income and to *support* (or create) the market for the copyrighted work.

But the fourth factor is no longer the first among equals that it used to be, and even if it were, I think the other three win.

So, if it's not Public Display and it's not Fair Use, why aren't artists suing the various galleries left and right for copyright infringement?

I think there are two factors in play, one practical and one legal. The practical concern is on the lines of biting the hand that feeds you. The artists with a claim have that claim because there's a gallery (or auction house) out there trying to sell their work; It would be ungrateful, and more importantly unwise for the artist to turn around and sue the gallery for the catalog that represents that effort.

The legal doctrine on which these galleries and auction houses rely, I think, must be implied license. That is, once the artist or copyright holder gives the piece over to the gallery or auction house, then there is implied in that act the copyright holder's license to the gallery or auction house to make what reproductions might be standard in the industry, including reproduction in catalogs, etc.

It becomes a little more complicated when we consider that very often it's not going to be the original artist who's commissioning the gallery or auction house to make the sale. I don't really have a convincing argument for why the erstwhile buyer (now reseller) can grant the kind of license we've been talking about. You could make an argument if pressed - it would be what we in the trade call "not sanctionable" - to the effect that the original copyright-holder's implied license extended to include those reproductions necessary for resale.

That last argument is the best I can come up with, weak though it is. Either way. I'm confident that what's at work is not the 109(c) public display and not fair use. The implied license works well when the grant is from the original copyright holder. And then that last... But there it is.

Have a good one.


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