Footwear designer Christian Louboutin, has just suffered another set-back in the company’s ongoing effort to own the red sole, this time in Louboutin’s native France. In 2008, Louboutin filed a lawsuit in Paris against Spanish clothing manufacturer and retailer Zara, after Zara sold a red-soled shoe. This May, the French Cour de Cassation (the French appeals court) irrevocably invalidated Louboutin’s trademark to the red sole in France. The decision appeared to rest on what some might consider a technicality, with the Cour de Cassation noting that Louboutin’s France trademark registration lacked a specific Pantone color reference, a standardized color reproduction code used universally in a variety of industries and in trademark registration[1]. Accordingly, the Cour de Cassation faulted the registration for its lack of precision and distinctiveness. Without the degree of precision that French law considers essential to a trademark, Louboutin was criticized for simply trying to maintain the registration of a “concept,” that of putting bright red soles on shoes produced by the same brand. A “concept,” said the Court, is not sufficient to justify trademark registration. Louboutin was also ordered to pay €2,500 (approximately $3,600) of Zara’s litigation costs for the failed legal action.
All posts by Lizbeth Hasse
CBS is Finally Off the Hook for the 8 year-old “Wardrobe Malfunction,” But Next Time will be Different
8 years later and it’s still hot news. This summer session, the Supreme Court, finally, officially, put the CBS Super Bowl “wardrobe malfunction” matter to rest. It let stand a 3rd Circuit Court of Appeals ruling that, in 2008, threw out the FCC’s $550,000 fine against CBS for its 2004 broadcast of a fleeting view of singer Janet Jackson’s breast.
That 2008 Appellate Ruling deemed the FCC’s fine for the network’s unplanned glimpse to be “arbitrary and capricious,” an unexplained departure from what the Appellate Court described as a 30-year FCC policy of exempting “fleeting” moments of indecency from the scope of the indecency broadcast ban [18 U.S.C. § 1464, prohibits the broadcasting of “any obscene, indecent, or profane language”].
Linsanity: From the Basketball Courts to the Trademark Office
“Linsanity” began in February when Knicks benchwarmer Jeremy Lin unexpectedly took the basketball world by storm. Lin had received no athletic scholarship offers out of high school, wasn’t drafted out of college, and was assigned to the Warrior’s D-league three times in his first season with the NBA. A soaring basketball career was not generally expected from this 2010 Harvard University graduate, but, after suddenly leading the Knicks to five victories in a row, Lin was promoted to the Knicks’ starting lineup. Lin even impressed veteran Lakers player, Metta World Peace (born Ron Artest), who ran by reporters shouting “Linsanity! Linsanity!” after, with less than a second remaining, Lin scored a game-winning three-pointer against the Toronto Raptors. So, on the Monday after the last game of his five-game winning streak, Lin did what any good manager would advise a rising star with a catchy moniker to do: he had his lawyers file a trademark application to register LINSANITY with the United States Patent and Trademark Office (USPTO).
Stealing Valor is Not Yet a Federal Crime
With all the clamor recently about some high-profile Supreme Court rulings– especially, those addressing immigration and healthcare legislation – one case about the exercise of First Amendment free speech rights received little public attention outside of the military communities.
On June 28th, the Supreme Court ruled that the government does not have the power to punish individuals for lying about their receipt of military awards. Such a law, the majority said in a 6 to 3 decision, is an unconstitutional infringement of free speech.
The Power of One: Some Issues in the Application of Complex Copyright Transfer Termination Rights
Authors – even the more successful composers, painters, writers, and other creatives – are familiar with the early career financial struggles that come with devoting oneself to creative work before that “big break.”
An author’s initial negotiations with publishers, producers and distributers often have a “David & Goliath” character, with the author concerned not to overplay his or her hand, or just truly lacking bargaining power.
Many early career artists don’t have lawyers, managers or representation; and publishers and producers are wary when the creator has no track record. The result can be contracts that turn out to be disappointing or seem unfair to the artist, especially in the case where a copyrighted work later proves to be a huge success for the publisher or distributer.
Even absent “exploitation” of the situation, an artist’s “deal points” can be kept low when authors, publishers and distributors all have difficulty anticipating the value or popularity of a new work. Recognition of these difficulties was one reason Congress included the author’s right to terminate a transfer of copyright in the Copyright Act of 1976.
The stated purpose of the termination right was (1) to safeguard authors and creators against transfers to entities that do little or nothing with the work, and (2) to address “the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited.”
When an author successfully terminates a grant, the un-contracted for domestic rights (i.e. U.S.) revert from the assignee publisher or distributor, as the case may be, to the author, often giving the author the opportunity to renegotiate the deal or even find a new licensee.
For works assigned by an author after 1978 (the year the 1976 Act took effect), termination can commence at the start of the 35th year after the date of transfer (during a five year window). Notice of termination must be served on the publisher or distributor (assignee) by the artist at least two years (but not more than 10 years) prior to the anticipated termination date.
Crunching the numbers, this means that 2011 was the last year termination notices were served for a termination to take place in 2013, the first year authors can effect termination (under the 1976 Act) based on proper earlier notice.
With the early instances of what are likely to be many exercises of the termination right, it is critical that both authors and publishers understand the statutory copyright assignment termination provision and how the courts will address the subject. Overall, the procedure for terminating a copyright grant under the 1976 Act is exacting and can be confusing.
The existence of the termination right and the potential consequences of an author’s reclaiming rights are just beginning to be encountered as exercise of the right becomes more prevalent. A recent district of California case, Scorpio Music S.A. v. Willis, has already addressed one question, which, on its face, looks fairly esoteric: where joint authors of a work transfer their respective copyright interests through separate agreements, can a single author alone terminate his separate grant of his copyright interest in the joint work, thereby recovering his unexploited rights (or renegotiating them)? Or must all or a majority of all the authors agree in order to terminate the grant? A California district court sided with the power of a single author in this case. The decision, while specific, gives some insight into the rationales courts may apply to address the odd and unexpected scenarios that exercise of this right may well create.
Last year Victor Willis, the original lead singer of the Village People, terminated grants he had made in 1977 – 1979 to music publishers of his copyright interests in 33 musical compositions, including in the hit songs, “YMCA”, “In the Navy” and “Go West.” Scorpio Music and Can’t Stop Productions, the two companies holding publishing rights to the Village People’s songs, went to court to stop Willis from regaining control over the rights in play. The publishers argued that Willis could not, by himself, exercise a termination right because the songs were created and licensed by several authors, not Willis alone. According to the publishers, the termination of the grant was improper unless a majority of the authors agreed. The district court rejected the publishers’ arguments and granted Willis’ motion to dismiss the publishers’ efforts to block him.
The District Court concluded that the language and purpose of the termination statute, coupled with copyright law governing the individual rights of joint authors, permit a single joint author who has separately transferred his copyright interest to terminate the grant that author made. This holding is limited to a very specific situation. The Court noted that if two or more joint authors entered into a joint grant of their copyright interests, a majority of those authors acting in concert would be essential to the proper exercise of the termination right. The Court explained that requiring a single co-author to get agreement from a majority of joint authors to terminate the co-author’s separate transfer would frustrate the purpose of termination rights; it would be harder for an author to terminate a grant than to transfer it.
This interpretation is consistent with the law governing joint authors. Under the Copyright Act, each co-owner of a joint work owns an equal undivided interest in that work and is allowed, in the absence of an agreement otherwise, to freely act alone to transfer his or her unencumbered rights to a third party. This can lead to chaos, so most often joint authors have copyright administration agreements or do not act alone.
Finally, the Court also addressed the economics of this termination. It refused to limit the single author’s termination to a portion of the intellectual property at stake equal to the percentage interest for which publishers agreed to pay the author in the first place (for Willis, a 12 -20% interest in various songs). The Court held that Willis would get back his copyright interests based on the rights he granted, regardless of the percentage compensation he received for the grant. The Court uses “YMCA” as an example. On the copyright registration Willis is one of three authors listed. The legal assumption is that 3 co-authors each hold 1/3 undivided interest in the copyright. Thus, according to the Court, the terminable rights of Willis would reflect that 1/3 interest, not the approximately 12% interest that he was paid.
No doubt the music industry was watching the Willis case closely as record companies are receiving more and more termination notices from musicians who had hit songs in the 1970’s. Artists such as Bob Dylan, Tom Waits and Tom Petty have conveyed termination notices. The Victor Willis opinion eliminates one argument licensees might have attempted in order to block certain terminations: i.e., arguing that record producers and sound engineers who are co-copyright holders should also be deemed joint holders of the particular termination right and (had Willis not prevailed) capable as majority holders of blocking a single joint author’s exercise of the right to terminate a grant of a copyright.
What comes next in this complicated area? Given the unknowns and the potential for errors and irregularities, it is not surprising that many copyright termination situations are mediated and also, that many artists simply fore go exercise of that right.
2nd Circuit’s Safe Harbor Ruling Influences 9th Circuit to Reconsider: What’s an ISP to do?
Many Internet Service Providers (ISP) assume that take-down requirements with respect to copyright claims are fairly standard and that they can readily avoid copyright liability for posts by users by following some simple rules. The activity in the Courts on the Circuit Courts on this issue shows otherwise.
Art Imitates Art: “Pictures Generation” Artist Richard Prince and Fair Use
The Fair Use doctrine allows others to use copyrighted material without the copyright holder’s permission under certain circumstances. It sets limits on the exclusive rights copyright law grants copyright owners: the rights to reproduce, distribute, perform, display and make derivative works.
Originally a judicially created exception[1], Congress incorporated the fair use exception as a defense into the Copyright Act of 1976 under section 107. While “codified,” the Copyright Act does not precisely define fair use; nor does it provide specific examples.
The Act only offers an open list of areas “such as criticism, comment, [and] news reporting” (which may or may not be Fair Use) and four general factors to consider: (1) purpose and character of the use, which encompasses “transformative use”; (2) the nature of the copyrighted work; (3) the amount of the copyrighted work used; and (4) the effect of the use on the market for the copyrighted work.
As a result, Fair Use is often criticized as unpredictable, even doctrinally incoherent, as courts have applied it over the past thirty years. The Cariou v. Prince copyright saga has not yet added certainty to the field.
It’s been three years since French photographer Patrick Cariou sued Richard Prince, Larry Gagosian, Gagosian Gallery and Rizzoli books for copyright infringement. Prince’s “Canal Zone” series used aspects of at least 31 of Cariou’s ethnographic-style photos of Jamaican Rastafarians without Cariou’s consent. For example, Prince takes a Cariou photo of a Rastafarian against a dense growth of plants and then covers the man’s eyes with blue circles and places an electric guitar in his arms. Prince claimed “fair use,” arguing that he had transformed the original works, as opposed to simply producing what the Copyright Act would consider protected derivative images.
The United States District Court for the Southern District of New York granted Cariou’s motion for summary judgment on the issue of copyright infringement, noting that the pieces had very little “transformative” element. It ordered Prince and the Gagosian Gallery to deliver for impounding all infringing copies of Prince’s work. The gallery and its owners were also found liable for copyright infringement because they had distributed images and sold paintings from “Canal Zone” and had failed to investigate and ensure that Prince had obtained the requisite licenses to use Cariou’s photos. The judged stated that the gallery “at the very least [had] the right and ability (and perhaps even responsibility) to ensure Prince obtained licenses” and “the financial benefit of the infringing use to the Gagosian defendants is self-evident.”
Prince appealed the 2011 District Court decision and is awaiting review by the Second Circuit U.S. Court of Appeals. Since then, museums across the country have filed amicus briefs with the Court of Appeals arguing that the District Court’s decision, holding the gallery and its owners liable, would force them to hire lawyers to analyze works in their collection containing borrowed images. Given the widespread practice of referencing other images in 20th-century art, the cost to the museums would be unsustainable. The less costly, but the more disturbing option, certainly antithetical to the First Amendment principles that underline Fair Use, would be for museums to self-censor.
Cariou’s legal argument rests largely on the claim that Prince’s work failed to comment on or satirize Cariou’s photographs and, therefore, is not transformative. Prince (somewhat arrogantly) testified that that he had no real interest in the meaning behind Cariou’s work, and that he used it strictly as “raw material.” Cariou’s attorneys argue that taking copyrighted work in order to create “something new,” without any aesthetic significance or expressive purpose for the particular appropriation, has no limits and would effectively eviscerate the rights of copyright owners. In fact, Prince was unwilling to explain his art in court and even refused to call his use of Cariou’s photo “satire”, which is typically protected under Fair Use. Prince only offered the following as an explanation: “Hey, this guy is playing the guitar.”
Is this then taking for the sake of taking like Cariou’s lawyers argue? The District Court already balanced the four Fair Use factors finding against Prince in 2011. But will the Second Circuit decide differently, perhaps by choosing to emphasize a factor other than transformative use?
Consider this argument about market effect for a moment. Richard Prince is what is called a “Pictures Generation” artist, a member of that “movement” of artists takes both the commercial and artistic images that surround them, appropriates those images into their own work, and then “subverts” them. The popularity and strength of the Pictures Generation is clearly seen on the price tags on their works that may sell for millions, especially the early works of James Rosenquist and David Salle. Patrick Cariou is not a Pictures Generation artist, but is rather, an ethnographic photographer. Cariou markets a fly-on-the-wall style of reporting, while Prince markets the skepticism of culture. As Michael Rips points out in his opinion piece for the New York Times, it is for this reason that “the markets for Mr. Prince and Cariou are not just distinct; they are conflicting.” If a Prince consumer would not have otherwise spent money on a Cariou-style photo, how could Prince cause economic injury to Cariou? Should Prince be required to turn over his profits or revenue as penalty for infringement? Or can he invoke the fourth factor of Fair Use – effect on the market of the original copyrighted work – to argue that the de minimus monetary effect on Cariou’s market supports his Fair Use defense? Or, if it is the artistic movement, the Pictures Generation, with which Prince is connected that gives value to the paintings, rather than to Cariou’s images, does the context give rise to a “transformative” use?
Whichever Fair Use factor one wishes to emphasize – transformative use or market effect – there is a shifting perspective in the art world, where artists can appropriate works and then sell versions or alterations to collectors for millions of dollars without any benefit accruing to the lesser-known artist. In other art news, Origami artist Robert Lang is suing abstract painter Sarah Morris in the Northern District of California, claiming that she used his designs in her paintings without asking permission. Morris took several of Lang’s crease patterns and changed lines, added colors to the shapes and made the resulting images into very large paintings. Morris argues that the change in context and meaning is transformative. Currently no court date has been set, but Lang says his case is about getting credit for his craft and deciding how his work is used.
France Gives the “Feu Vert” to Google Books
The United States has yet to reach an agreement over the Google digital books project, but France, a literary haven and copyright devotee, has forged ahead.
With what its supporters have praised as a tool for bringing out-of-print books into the hands of new readers, the Google digital books project has sought to digitally scan collections of current and out-of-print books to create a massive digital collection on Google’s database.
Universities and Professors Consider Possible Shifts in the IP Interest “Balance”
Who controls intellectual property that is the product of grant-funded faculty research and work in a university environment? Are the “inventions” of professors essentially the result of their positions and participation in a research environment and, as such, like those of an employee produced in the course of employment with a private company? Should written works of authorship – articles, scholarship, books, and textbooks – be treated differently from medical, biotech, or software advances that professors create or contribute to? What about the input from students, especially specialized graduate students, in the process? Should the contributions of third-party industry funds to research and development in the university setting be acknowledged with intellectual property interests? Are the creative products of professors ever “works for hire” for their universities? The American Association of University Professors (AAUP) doesn’t think so.
“Here’s Looking at You, Kid”: That’s Not London Fog in the Moroccan Mist
Burberry has made extensive social media efforts this year to tell the public how its iconic look and status developed over time. Companies, like Burberry, with a visual history to promote, are especially attracted to Facebook’s Timeline.
Timeline lets users post stories and pictures in chronological order. Visitors scroll down on a Facebook page and go back in time to the initial creation of a product.
The company can create a nostalgic connection between the visitor and the brand. The Facebook Timeline for this “156 year-old global brand with a distinctly British attitude” includes photos of Burberry’s first store opening in 1856, images of pilots wearing Burberry aviator suits, and pictures of its classic trench coat through the years.