Intellectual Property

In considering how best to pursue intellectual property claims, it is helpful to have an understanding of the ways in which various forms of protection can overlap, and the advantages and costs of various available remedies. For example, while patent protection for an invention may be valuable, sometimes effective and less expensive relief can be obtained to protect some of the same interests using a trade secret theory. Certain rights may be most appropriately enforced via a copyright or trademark infringement or Lanham Act suit in federal court, but a state court action for unfair business practices or breach of contract may be simpler and more expeditious in some cases.  

I have substantial experience in all of these kinds of intellectual property litigation, and stay mindful of the costs, risks and rewards of various strategies for protecting or challenging intellectual property rights.  I was part of a team enforcing Colt Industries' trade secret and Lanham Act claims against a seller of counterfeit rifle parts, in which the other side also attempted to invalidate a number of Colt patents, a case that traveled all the way up from two different Federal Courts of Appeals to the United States Supreme Court and back. I have also litigated patent infringement cases involving athletic shoes, video anti-copying technology, and others. I have defended copyright infringement actions against a book publisher, and have represented software developers enforcing their copyright and contractual rights. I have been involved in a number of trademark infringement, Lanham Act and unfair business practices cases. I have  litigated trade secret claims involving the data contained in engineering drawings in several cases, as well as trade secret claims against employees accused of using confidential customer information or other confidential company information.  I have also dealt with intellectual property claims in the context of entertainment litigation and bankruptcy litigation.

I share an office suite with Wen Liu,  whose practice focuses on patent applications and other intellectual property protection and counseling.  Between the two of us, we are able to provide an array of services to clients including patent applications, trademark and copyright registrations, and intellectual property licensing and litigation. 

 COPYRIGHT POSTS

 

Tuesday, March 03, 2009

Fair Use

Is copyright law moving fast enough to keep up with the explosion of content on the web, and the ease with which it can be copied? An article in the ABA Journal, which is linked to the caption of this post, deals with the question of policing copyright violations pursuant to the Digital Millennium Copyright Act. The article discusses a recent California district court decision, Lenz v. Universal Music Corp, in which the the court held that before sending a takedown notice, a copyright holder has an obligation at least to consider whether the allegedly infringing material constitutes a fair use of copyrighted material. (The case involved a YouTube video of a small child dancing around with a few snippets of a Prince song playing in the background.) While it is easy enough to state the factors that a court is supposed to consider in determining whether a defense of fair use is available--including the type of use, the size of the portion used, and the effect of the use on the copyright's value (17 U.S.C. § 107)--these factors are not so predictably applied in practice. The court stated: "Undoubtedly, some evaluations of fair use will be more complicated than others. But in the majority of cases, a consideration of fair use prior to issuing a takedown notice will not be so complicated as to jeopardize a copyright owner’s ability to respond rapidly to potential infringements." I wonder how the court knows that.

The issue of fair use also comes up in the lawsuit that LA artist Shepard Fairey filed last month against the Associated Press, which claimed that his ubiquitous Barack Obama "Hope" poster infringed the copyright in a photo taken by an AP photographer. Fairey has apparently admitted that he copied the photograph, but relies on the type of use he made, as well as the alterations he made in the process of transforming the photograph into a painting, to justify a claim of fair use. I'm not willing to take a position on this case, except to say that it illustrates that the determination of the fair use defense is often a complicated, fact-intensive inquiry.

What is needed is a simpler way for copyright holders to be able to assert a good faith claim of infringement, and obtain the removal of offending works. What is also needed is a clearer mechanism for content posters to know whether they are entitled to use copyrighted works. (By the way, the illustration accompanying this post, juxtaposing the Mannie Garcia AP photo and the Fairey poster, came from the New York Times website. I say I am making a fair use of this material, but if the New York Times, or the AP, or Mannie Garcia, or Shepard Fairey has a problem with my using this illustration, please let me know and it will be removed immediately.)

Wednesday, March 03, 2010

Copyright Registration: conditional, not jurisdictional

On Tuesday, the Supreme Court handed down yet another decision that may be mainly of interest to civil procedure aficionados such as myself.  But since it deals with an issue that causes some confusion in copyright cases, and also because it allows a landmark agreement in the electronic publishing field to move forward, it probably deserves some attention.  In Reed Elsevier, Inc. v. Muchnick, the District Court had approved the settlement of a class action resolving a dispute between authors and online publishers.  The named plaintiffs in the case had all registered their copyrights in at least one article that was reproduced electronically without their permission.  The class also included, however, a number of authors who had never registered their works.  Because of these class members' failure to comply with the requirement of Section 411(a) of the Copyright Act that no civil action for copyright infringement may be brought without registration of the copyright, the Second Circuit Court of Appeal on it s own motion refused to approve the settlement of claims of those authors of unregistered works.  (It is interesting that although these authors objected to certain terms of the settlement, none of the parties to the case objected to the courts' ability to hear and determine the case.)

Under these unusual circumstances, the Supreme Court held that although Section 411(a) creates a condition to an infringement action, that requirement is not jurisdictional.  That means the court had the power to determine the claims of authors of unregistered works, even though these authors had not satisfied what appears to be an essential condition of bringing suit.  This result can be justified as a matter of statutory construction.  It can also be justified as a practical resolution of a dispute that all of the parties wanted the federal courts to resolve.  Does it make a difference for a copyright-holder considering an infringement action whether the registration requirement is jurisdictional or is just a condition of filing suit?  Probably not, unless the copyright holder can figure out some other way to piggy-back his infringement claims into a federal court action, as the non-registering authors did in this case.

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