Wednesday, October 27, 2010

Iraq-a-Whac-a-Mole and Generic TM's

Litigation against alleged wrongdoers online, particularly p2p web sites, has repeatedly been characterized as a game of Whac-A-Mole.  So has the war in Iraq, political campaigning, cybersquatting,  and more.  Speaking of the classic game, what is taking so long for a version of the game on the Wii?!  There is a live trademark on the term for computer and video games.  Like the other registered marks on the term, that one is owned by Bob’s Space Racers, Inc., the manufacturer of the arcade game and assignee of the "Whac-A-Mole" mark(s).  After reading another article about the RIAA's Whac-A-Mole litigation campaign against filesharing sites, I began to wonder whether it should start being referred to as a game of whac-a-mole.  In lawyer terms, I'm beginning to think that the trademark for Whac-A-Mole brand (video games, entertainment, etc.) has become generic and now serves as a reference to any evasive, repeated behavior by the same or similar entities. 

In trademark law, the Abercrombie spectrum places terms into categories based upon their strength and thus ability to distinguish a product or service's source, i.e. their distinctiveness, the main point of U.S. trademark law's use-based system.  Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F. 2d 4, 9 ("Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.").  A generic term is one that is not eligible for protection because it represents the genus, or entire class of product.  A mark can be generic from the start or become generic over time.  Famous examples include thermos, escalator, and zipper, all of which started out as trademarks and after years of their owners playing Whac-A-Mole trying to defend them, the public won.  The famous Xerox ad campaign, "you can't xerox a Xerox", continues to this day in a different form, urging the public to only use the term as an adjective describing the company’s products.

So what about Whac-A-Mole?  At its start, the term would probably be considered descriptive, since it describes the product: whacking a (fake) mole. 15 U.S.C. § 1052(e)(1) (prohibiting registration of a mark that is “merely descriptive” of goods),
Zatarain’s v. Oak Grove Smokehouse, 698 F. 2d 786, 793-93 (describing tests applied by courts to determine whether a mark is descriptive).  I’m going to assume that over the years, the game has secured enough of a place in popular culture to have acquired the secondary meaning in the eyes of the public necessary for a descriptive mark to receive protection. id. at 794 (describing common factors used to evaluate secondary meaning). 

So has it since become generic?  If so, perhaps Bob’s Space Racers can sue someone (the RIAA? the news media? a search engine?) for contributory genericide, sort of a twist on contributory trademark infringement.  Or dilution?  Maybe a bit of a stretch.  A leading case on generic marks states the test as follows: “We … hold that where the public is said to have expropriated a term established by a product developer, the burden is on the defendant [in a trademark infringement action] to prove genericness.” Murphy Door Bed Co. v. Interior Sleep Systems, 874 F. 2d 95, 101.  Wait a second.  Aren't I confusing apples and oranges?  The Zipper trademark became generic because competitors were making and selling zippers.  The RIAA isn't peddling arcade games that journalists are describing as Whac-A-Mole-like. 

Can a term become generic when its common use has become a metaphor?  A Google search for “whack a mole iraq” yields over 30,000 results.  If I created a computer game simulating the war and called it “Iraq-A-Whac-A-Mole” (catchy, isn’t it?), registration would be futile in light of the registered mark discussed above.  I’d probably receive a cease and desist letter and in my hypothetical world, sales would be in the millions, so of course I’d litigate.  I’d have some pretty strong evidence that “whac(k) a mole” has come to represent nothing more than the descriptive activity it conjures and would argue it has become a generic term.  cf. In re Bayer Aktiengesellschaft, 488 F. 3d 960, 967 (discussing and citing cases for the proposition that search results alone, out of context, provide little weight in deciding whether to grant a trademark registration).  Of course, Bob’s Space Racers would counter that the ubiquity of the term only serves to reinforce its strength and point to evidence that regardless of context, people think of the game when the term is used.  Whose side would you take?

Tuesday, October 26, 2010

The Blind Bystander Effect

The Bystander Effect is a name for the behavior of groups of people individually or collectively ignoring or choosing not to respond to a situation because each person assumes someone else will or already has.  Onlookers might not respond out of fear of the consequences or just not wanting to get involved.  The law (in the United States) even supports this response.  On day one of bar review, we were reminded of first year torts and that there's no legal duty to strangers.  There are exceptions, such as for certain pre-existing relationships, but generally a gold medal swimmer or anyone else is free to walk by a drowning child without diving in or calling for help.  The most famous example of the Bystander Effect is the murder of Kitty Genovese.  Thirty eight onlookers failed to call the police or react as Ms. Genovese was chased and stabbed to death in Queens in 1964.  As Malcolm Gladwell summarizes in The Tipping Point on page 28, “… the lesson is not that no one called despite the fact that thirty-eight people heard her scream; it’s that no one called because thirty-eight people heard her scream.” 

Recently, I was reminded of the bystander effect after sending a a request via email to a BCC’ed group of colleagues and receiving no response or acknowledgment (if you're reading this, don't worry about it, everything worked out just fine).  A closer analogy to the Genovese situation would have occurred if I had CC’ed the group instead, allowing each recipient to see all other recipients, and then received no response.  However, that would have introduced the complexities of the recipients’ relationships with one another, a situation I wanted to avoid.  It was also a personal matter and using CC would destroy the confidentiality of the recipients, deterring a response.  In other words, a recipient might spend more time thinking about the other members on the list and not on the question I posed, among other things.  Also, the message could have been sent to one or one hundred people, and I wanted to avoid any considerations of urgency or exclusivity.  Social secrets are the blessing and curse of humanity.  Using BCC seemed like a good way to procure an answer while keeping social ramifications to a minimum.

So what did I do wrong? Well, that’s a loaded question… Perhaps I’ll never know.  At least in this situation, there are just too many factors involved to pinpoint an answer.  First and most obviously, I might have selected the wrong recipients.  Perhaps they simply had no answers.  More cynically, maybe no one cared.  Perhaps I chose too many or too few people.  Given the personal nature of the request, my recipients might have felt uncomfortable extending our relationship to even offer a suggestion.  Also, people are busy and emails have a tendency of getting buried. Who knows.

The explanation I choose to believe is that a sort of “blind bystander effect” set in, where each person assumed that a) there were other recipients (it sure would have been tricky if I sent an email and BCC’ed only one person!), b) all the other recepients are similarly situated professionals, and c) someone else would provide an answer since it was the type of request professionals of the sort frequently receive.  The bottom line: when it’s personal, get personal and don't risk becoming a victim of the Blind Bystander Effect.

Tuesday, October 19, 2010

The Steinbrenner Letters

Techdirt alerted me to two recent NY Times article about love letters written by former New York Yankees owner George Steinbrenner.  Rest in peace, Mr. Steinbrenner.  The first NY Times article describes the history of the letters and provides a copy of one of the them.  The second article discusses the effects of the first article and the Yankees' continued objection to their publication.  In short, 77 year old Mary Jane Schriner once dated Steinbrenner and recently shared a series of letters he wrote to her in 1949.  A writer contacted her about publishing a memoir containing the letters and they contacted the team, which claimed that copyright in the letters would be violated if the letters were published.  I’m not saying this just because I’m a Yankees fan, but the team is right.

Without marching through a fair use use analysis under copyright law or the free speech concerns of potentially barring publication of the newsworthy letters, the Times' original publication of the letter is probably not an issue.  The continued availability of the letter online is a closer call that I’d leave for a case that I’d hate to love to see: New York Yankees vs. New York Times.  Perhaps a court could provide some insight into how “commercial” use under the first fair use factor applies online since the freely accessible digital version of the article on the Times web site shows ads, assuming that showing ads on a web site is "commercial" to begin with.  There’s also an interesting question about whether the continuing availability of the letter online substitutes, rather than complements, the original work under the fourth fair use factor.  (citations omitted because the Yankees game starts soon)

However, it seems doubtful the above case would ever happen. The second Times article quotes NYU Professor Diane Zimmerman noting the distinction between ownership of an intangible copyright and ownership of the physical object in which the expression is embodied.  The appropriately titled 17 U.S.C. § 202 makes this clear: "Ownership of copyright as distinct from ownership of material object."  So regardless of who has the actual letters, they can’t reproduce them or distribute copies without permission. See §106. While the Steinbrenner family owns the copyright (see below), if they can’t ever get the actual letters from Schriner or someone she sells them to, then the only way they could ever publish the letter’s contents would be via the scan on the Times’ or other web sites.  Based on the information in the Times articles, the team and family’s interest seems more about protecting the private nature of the letters.

Professor Zimmerman also referenced J.D. Salinger’s successful use of copyright law to prohibit the publication of copyrighted letters in a biography about him.  One out of context bit of dicta summarizes the case: "We seriously doubt whether a critic reviewing a published collection of the letters could justify as fair use the extensive amount of expressive material Hamilton has copied."  Salinger v. Random House, 811 F.2d at 100.  On the same page, the Salinger court goes on to note that discussing facts stated in Salinger's letters is fine (facts are not copyrightable), "[b]ut Salinger has a right to protect the expressive content of his unpublished writings for the term of his copyright, and that right prevails over a claim of fair use under 'ordinary circumstances.'  Harper & Row v. Nation Enterprises, 471 U.S. at 555, 105 S.Ct. at 2228.  Public awareness of the expressive content of the letters will have to await either Salinger's decision to publish or the expiration of his copyright, save for such special circumstances as might fall within the 'narrower' scope of fair use available for unpublished works, id. at 564, 105 S.Ct. at 223-33."  The Supreme Court in Harper & Row provides clear boundaries for such "narrower" scope: "The right of first publication encompasses not only the choice whether to publish at all, but also the choices of when, where, and in what form first to publish a work." id.  Now things are getting circular - what about the Times first publication of the letter?

On a side note, Salinger has been back in the copyright news trying (and so far succeeding) to prevent publication of a “sequel” based on Catcher in the Rye . While searching for a link to a good summary of that issue (here), I came across the fan site www.deadcaulfields.com.  If courts in the Second Circuit continue to side with the Salinger estate, and perhaps (explicitly) extend protection to the character of Holden Caulfield (see generally this brief), there could be some really interesting copyright cases when read in conjunction with the Harry Potter case.  Also, there’s the UDRP and trademark law but (trademark) fair use should get in the way of both.

Getting back to the letters, Mr. Steinbrenner is clearly the author and thus original owner of the copyright.  17 U.S.C. 201(a).  Upon his death, his interests passed to his estate, assuming he never transferred “all copyrights I might own or ever have created” in a contract during his life or in his will. The enforceability of a transfer of something you own but either don’t realize you own or forgot about is a task for a much more caffeinated brain, in addition to being an interesting side effect of our formality-free Berne convention world.  Looking to Section 303 of the Copyright Act, the copyright in the letters lasts 70 years from Mr. Steinbrenner’s death.  Even more important, game 4 of the Yankees vs. Rangers ALCS playoff just started and I'm missing the first inning...

Thursday, October 14, 2010

Innocent Infringers

I've been working through a laundry list of copyright cases from the past year that I haven't had a chance to dig into yet.  Today's choice was Maverick v. Harper and the "innocent infringer" defense. 17 U.S.C. 504(c)(2) gives courts discretion to reduce an award of statutory damages where "the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright..."  Section 402(d) bars the defense in situations where notice "appears on the published phonorecord or phonorecords to which a defendant in a copyright infringement suit had access..."

In the case, Harper asserted that she thought posting files to a shared folder on a p2p network was tantamount to listening to music on an internet radio station.  For a high-schooler who presumably grew up a "digital native", this seems entirely reasonable.  In any event, the end of the 5th Circuit's brief opinion states that "Harper cannot rely on her purported legal naivety to defeat the § 402(d) bar to her innocent infringer defense."  Of course, there is no mens rea element to copyright infringement, as the court reminds us in a footnote, and, sticking with the Latin, ignorantia juris non excusat.  There clearly was infringement here regardless of one's feelings of the underlying policy outcome.

When the opinion was first released and attacked, I dismissed it as another skirmish in the p2p wars.  The facts state that Harper obtained all the tracks online and not from ripping CD's she legally purchased.  Later, we are told that "[t]he district court acknowledged that Plaintiffs provided proper notice on each of the published phonorecords from which the audio files were taken.  It found, however, that regardless of Harper’s access to the published phonorecords, such access would not necessarily put her on notice of the copyrights: 'a question remains as to whether Defendant knew the warnings on compact discs were applicable in this [file-sharing network] setting.'"  In other words, opportunity to access does not equal notice and we shouldn't expect a minor to a) read and understand the meaning of copyright notices and b) realize they probably apply to other unrelated works regardless of the medium, so let's have a trial and duke it out.  To begin with, we're not even sure who originally ripped the CD's and uploaded them.  It seems highly unlikely given the number of songs in this case, but what about a scenario where one infringed song was originally leaked online by an insider?  Of course, the policy behind the innocent infringer defense would be completely subverted by an individual claiming that since they never owned or had access to a physical copy that they should automatically be deemed an innocent infringer.  Still, I was hoping for a better rationale.  Here's what we got:

"The [District] court discounted the [plaintiff's] argument 'that one need only have access to some CD and see that the recording is subject to copyright' for § 402(d) to bar the innocent infringer defense, because knowledge that some CDs are copyrighted does 'little to establish that, as a matter of law . . . an individual knew that she was accessing copyright material from an entity that did not have permission to distribute such material.'  In her brief opposing summary judgment and brief on appeal, and at oral argument, rather than contest the fact of “access,” Harper contended only that she was too young and naive to understand that the copyrights on published music applied to downloaded music."  As stated above, this didn't cut it.


The District Court's rationale makes sense logically and factually.  It is unfortunate that, in the Fifth Circuit's view, Harper's deficient legal strategy made this a slam dunk for the plaintiffs.  The court goes on to discuss the oddity that notice is no longer required under Berne yet it provides an incentive for publishers so they can assert the § 402(d) bar and win, so long as the defendant does not contest their (lack of) access to the work.  This brings us back to what was so confusing earlier.  What was there to contest anyway?  The facts are clear.  "Subsequent discovery indicated that Harper had downloaded all of the files from the Internet to the computer without paying for them, and that she had not copied, or 'ripped,' any of the songs from compact discs that she had bought legally."

I just downloaded the petition for cert. and imagine that the arguments are the same.  Last month, the Supreme Court asked the plaintiffs to respond to the petition for cert., despite having waived their right to do so.  Perhaps the Fifth Circuit's questionable analysis will help make the Supreme Court's ultimate decision to grant certiorari an easier one.  Although the Fifth Circuit found that the constitutional issues were not properly addressed in the District Court, perhaps the Supreme Court will find a way to address them.  We'll see.  The Court requested the response on or before October 15, 2010 (tomorrow).

Monday, October 11, 2010

----book

Tonight I had the pleasure of watching a great program on CNBC, “Executive Vision: Leadership in Action – Technology”. The panel discussion spanned nearly every hot topic in technology, including cybersecurity, global development, jobs, U.S. and/versus foreign education, IP, broadband infrastructure and [you name it]. You can find out more about the show and the series here.

One statement struck me: “Social networking has become like air, you don’t notice it until it’s missing.”  I’m sure others have made the same or similar observations; this time it came from Nicholas Negroponte.  I agree with his statement for the most part but come at it from a slightly different angle. In late 2008, when Facebook became (IMHO) overrun by apps and had recently opened registration to anyone (not just those with a .edu or school-specific email), I decided I’d had enough. After watching Myspace become totally overrun by spammers, I feared the worst for Facebook.  I'm fine with opening technology and opportunities to/for everyone, just make sure we’re taking manageable baby steps and not making a split in every direction.

As is often the case, I was wrong (for the most part.  There's still the whole privacy thing, although the Groups feature and the company's quick response to most privacy issues might be enough to get me back, not that they care...).  So would we notice if Facebook disappeared? Would I notice?  Obviously. I might be the only person in my age group (late 20’s) who is not on Facebook.  For me, the experience simply became too personal in two impersonal ways.  First, there was simply too much information that I did not care to know about others.   I don’t mean this disrespectfully, I just felt like certain tidbits were/are none of my dam business and I’d prefer to keep it that way!  Of course, I'd much rather see people in a position to share if they choose to do so, as opposed to the opposite default.  Second, the time I decided to jump off the cliff of what many friends have called Internet Suicide happened to be when Facebook apps were taking over the site (and taking our PII with them).  Perhaps I had just been too absorbed in reading about privacy online and spending too much time hacking through Terms of Use across various types of web site and realizing just how little power the user has.  But that’s another blog post for another day.

I use LinkedIn and it was nice to see the company’s CEO, Jeff Weiner, on the CNBC panel tonight.  He made some very articulate points about the importance of rejuvenating education in the U.S., and offered the interesting statistic that half of the site’s members come from outside of the U.S.  I didn’t DVR this episode and the CNBC site doesn’t offer a stream, so it’s either half of new members (in X time period) or half of total members.  In any event, I wonder whether we’ll continue to have different social networks for different reasons, e.g. Facebook for socializing, LinkedIn for business networking, and on down to our narrowest niche interests, or we’ll converge on one identity-based solution.  Also, as language translation tools proliferate, hopefully features like Facebook Groups can cross language boundaries.

Jumping to a related topic the panel sort of touched on, is there hope for reviving the idea of the identity layer of the internet or something similar? Or moving the idea of using real identity into (what some people call) the content layer of the net?  I’ll save a further discussion until I can complete part one of my homework from the show: researching India’s recently launched project to issue a biometrics-based universal identification system.  Part two is deciding whether it’s time to rejoin ----book.