Formally known as Thomas B. James or Thomas James, Tom James is an attorney at the Law Office of Tom James in Cokato, Minnesota. Copyright, trademark, business law, nonprofit organization, appeals and appellate practice. Admitted to practice in Minnesota, the Federal and 8th Circuit Courts of Appeals, and the United States Supreme Court. Also a continuing education instructor.
The crypto group Spice DAO shelled out €2.66 million – about $3 million – for a rare book. The group announced that it had plans to digitize the book and distribute it to the public, produce an animated series based on the book for a streaming service, “support derivative projects,” and burn the book as an “incredible marketing stunt.” What could possibly go wrong?
Dune is a widely-acclaimed 1965 science fiction novel by Frank Herbert. It is set in the future, at a time when feudalism exists on an interstellar scale. A wildly popular novel, Herbert wrote five sequels to it.
In 1974, director Alexander Jodorowsky resolved to adapt the book to film. The plan, however, ultimately was scrapped for lack of funds. It is not hard to see why. Jodorowsky envisioned an hours-long film with a score by Pink Floyd and appearances by such luminaries as Orson Welles and Mick Jagger. Weird artist Salvador Dali signed on to play a part, reportedly asking to be paid $100,000 per minute of screen time.
Before the project was scrapped, however, Jodorowsky compiled a book of concept art to present to studio executives. It included a storyboard sketched by the famous French cartoonist Moebius, along with set and character designs. Only a limited number of copies of it were made, and it is believed that only ten copies still exist today.
In November, one of these copies went up for auction at Christie’s. Appraisers expected it to sell for around $40,000. In the past, a copy of the book sold for $28,000 at auction. The crypto group Spice DAO, however, shelled out €2.66 million – about $3 million – for it. The group announced that it had plans to digitize the book and distribute it to the public, produce an animated series based on the book for a streaming service, “support derivative projects,” and burn the book as an “incredible marketing stunt.”
What could possibly go wrong?
It was a grand plan, except for one thing: Buying a copy of a book does not transfer the copyright along with it.
In general, you are free to do anything with the physical copy of a work you purchase – read it, decorate your restaurant or coffee shop with it, shred it, let your children color it. You are not free, however, to do anything you want with the intangible property embodied in it. When you buy a book, you do not acquire a right to make copies and distribute them to the public. You also do not acquire the right to make derivative works (new works based on the original work) or the right to “support derivative projects.” For these things, you would need to acquire either a license or outright ownership of the copyright from the copyright owner. If you don’t, then you may be liable for copyright infringement.
What about burning the book?
As I said, buying a copy of a book generally gives you the right to do whatever you want with the physical copy (as distinguished from the intangible property embodied in it.) I imagine many college students and zealous guardians of public morals will be delighted with this news, if they do not already know it.
There is an important exception to this rule, however. The Visual Artists Rights Act of 1990, 17 U.S.C. § 106A (“VARA”), is a U.S. law that gives the author of a work of the visual arts the rights to (a) claim authorship of the work; and (b) to prevent the use of his or her name as the author of any work of visual art which he or she did not create. In addition, the author of a work of the visual arts has the right to prevent the use of his or her name as the author of the work in the event of a distortion, mutilation, or other modification of the work. Further, the author has a right to “prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.” Id.
VARA is clear that these rights are personal to the author. Even if you acquire both a physical copy and ownership of the copyright, you do not acquire the right to destroy a work of visual art, if it is protected by VARA.
For purposes of VARA, a protected “work of visual art” is a drawing, painting, print or sculpture existing either in a single copy or in a limited edition of 200 or fewer copies that are signed and consecutively numbered by the author.
If the copy at issue here fall into this category – if it is was signed and consecutively numbered by the author – then burning the book would be unlawful.
Consulting with an attorney before making a significant purchase of intellectual property – or what you think is intellectual property – might cost you a couple hundred dollars. In some cases, though, it can be well worth it.
Not many people are aware that tucked into the 5,593-page Act are two major pieces of intellectual property legislation: the Copyright Alternative in Small-Claims Enforcement Act and the Trademark Modernization Act. Since the TM Act just went into effect, it seems appropriate to address it first.
The Consolidated Appropriations Act of 2021 was signed into law on December 27, 2020. Most people have heard of the provisions relating to COVID-19, such as rental and other kinds of financial assistance, and Title XIV of Division FF of Section 2 (COVID-19 Consumer Protection Act). Most people are probably also aware that it contains the usual annual appropriations for things like the promotion of women’s interests. Not as many people are aware, however, that tucked into the 5,593-page Act are two major pieces of intellectual property legislation: the Copyright Alternative in Small-Claims Enforcement Act (“the CASE Act of 2020”) and the Trademark Modernization Act (“the TM Act of 2020.”) I will be talking about the CASE Act in later articles. Since the TM Act just went into effect, it seems appropriate to address it first.
Injunctions against infringement
In order to obtain an injunction, it is necessary to convince a court that you will suffer irreparable harm unless the court issues one. That can be difficult – and expensive – to do.
Historically, courts relieved some of the burden on trademark owners by applying a rebuttable presumption of irreparable harm upon a showing of likelihood of confusion. The United States Supreme Court, however, disrupted that practice in some circuits in 2006. In eBay, Inc. v. MercExchange, 547 U.S. 388 (2006), the Court held that an injunction against patent infringement cannot be granted unless the plaintiff makes an evidentiary showing that irreparable harm will ensue unless an injunction is granted. A split in the circuits resulted with respect to the question whether the requirement also applies to injunctions against trademark infringement. Some courts continued to apply the presumption; others did not.
The TM Act resolves the split. Now, 15 U.S.C. § 1116(a) requires courts in all jurisdictions to apply a rebuttable presumption of irreparable harm upon a finding of likelihood of confusion with a federally registered trademark, when an injunction is sought under the Lanham Act. In the case of a motion for a preliminary injunction or TRO, the presumption arises upon a showing of likelihood of success on the merits of an infringement claim brought under the Lanham Act.
The rebuttable presumption applies not only to infringement claims, but also to claims for injunctive relief with respect to false advertising, unfair competition, trademark dilution, or cyberpiracy under Section 43 of the Lanham Act.
By codifying this rebuttable presumption in the Lanham Act, the TMA removes uncertainty in the law and makes it easier for trademark owners to establish entitlement to injunctive relief.
Throwing out unused trademarks
If you’ve ever conducted a trademark search at the USPTO website, you’ve probably noticed an overabundance of registrations. In many cases, a trademark is registered in more categories of products and services than is really needed. Trademarks are often registered for good or services that either never have been used, or are not current being used, in connection with the mark. The TM Act provides new ways of clearing some of them out.
The TM Act makes non-use a grounds for cancellation of a trademark registration. Cancellation of a trademark upon proof of abandonment is not new. The ability to remove unused goods or services from the coverage of the registration is. Moreover, an expungement does not require proof that the registrant has stopped using the mark since it was registered. To the contrary, it allows claims that a trademark has never been used (or has never been used for specified goods or services) to be made.
It is now possible to initiate a proceeding (called an “expungement”) to cancel a registration or narrow the categories of goods and services on the grounds of non-use.
Anyone may file an expungement petition. It may be brought between three and ten years after the registration. Until December 27, 2023, petitions to expunge trademarks may be brought with respect to registrations that are more than three years old, even if they are more than 10 years old. Thereafter, a petition may be brought only if the registration is between three and 10 years old.
The TM Act also makes it possible to petition the Trademark Office to reexamine the registration of a trademark. Under the TM Act, it will now be possible to seek the cancellation of a trademark on the grounds of that it was not actually used in commerce prior to the registration date. There is a 5-year limitations period for filing such a petition, measured from the date of issuance of the registration.
Who may initiate a proceeding
Anyone may initiate a proceeding. In addition, the USPTO may commence one on its own initiative. The filing fee is $400 per class of goods or services.
The director’s determination with respect to an expungement or reexamination petition may be appealed. A party seeking to challenge the determination must first seek review from the Trademark Trials and Appeals Board (TTAB). Further review may then be sought from the Federal Circuit court of appeals.
Madrid Protocol registrations
A foreign or Madrid Protocol registration under Sections 44(e) or 66 cannot be cancelled on this new ground of non-use if the nonuse was due to special circumstances excusing the non-use.
Office Action response deadlines
Currently, trademark applicants have six months to respond to an Office Action. The TM Act authorizes the USPTO to specify a shorter time period.
The USPTO has announced that people (other than Madrid Section 66(a) applicants) will have three months, instead of six, to respond to office actions. For $125, you can request a 3-month extension. This shorter time period, however, will not be implemented until December 1, 2022.
Third-party evidence in examinations
Finally, the Act facilitates the submission and consideration of evidence submitted by third parties during the examination process. In the past, opponents of an application for registration typically initiated an opposition proceeding to contest a registration application. Under the new provisions, we are likely to see more attempts to forestall registration even before the application is published for opposition.
The Law Office of Tom James
Need help with a trademark matter? Whether it’s an application to register a trademark, an expungement or re-examination petition, an opposition proceeding, or an appeal, Cokato Minnesota attorney Thomas James at the Tom James Law Office can help you.
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Enroll in attorney Tom James’s 90-minute on-demand course, “Trademark Law: Key Concepts” at Udemy to learn the basics of U.S. trademark law.
I initially had set out to put together a “Top 10” list. Really, though, I think the list can be boiled down to three. Admittedly, this is only my personal opinion. Time will tell. Nevertheless, for what it’s worth, here is my list of the 3 Top Copyright Cases of 2021.
This United States Supreme Court decision is the culmination of many years of litigation between tech giants Google and Oracle.
At issue was Google’s copying of 11,500 lines of code of the Java SE API. Illustrating the murkiness of the “fair use” concept, the United States Supreme Court declared that this was fair use.
The case highlights the relatively weak protection that copyright offers for computer programs. The functional aspects of a computer program are better protected by patent than copyright.
It is dangerous to read too much into the decision, though. It does not mean that computer program copyrights are worthless To the contrary, the case was decided on the basis of fair use. Google’s copying of the code was infringement. “Fair use” simply means that a court came to the conclusion that a particular defendant should not be held liable for a particular kind or instance of infringement. Another court could come to a different conclusion in a different case involving different parties, a different kind of computer program, and a different kind of use of it.
This case is notable primarily because of the celebrities involved. Lynn Goldsmith took a photograph of Prince in her studio in 1981. Andy Warhol created a series of silkscreen prints and pencil illustrations based on it. Goldsmith sued for infringement of the copyright in the photograph. The district court found in favor of Warhol, citing the transformative use doctrine. The Court of Appeals reversed, asserting that the district court misapplied the four “fair use” factors.
Reversals of “fair use” findings on appeal are not uncommon. They illustrate the nebulous nature of the four-factor test that courts use to evaluate fair use claims.
Design Basics holds registered copyrights in thousands of floor plans for single-family homes. The company attempts to secure “prompt settlements” of infringement claims. The court ruled against the company on an infringement claim, finding that these designs consisted mainly of unprotectable stock elements, much of which were dictated by functional considerations and existing design considerations.
Architectural designs are protected by copyright, but the protection is thin. Only a “strikingly similar” work can give risk to an infringement claim. In other words, infringement of an architectural work requires a showing of extremely close copying.
The facts about racial and ethnic disparities in copyright registration ownership are hard to come by. Findings in a George Washington University Faculty Research Paper, however, are a bit surprising. Black authors and creators, it seems, are actually over-represented here. Apparently, it is authors of Hispanic origin who are under-represented.
Regardless of the reason for the meeting, it is good to see that it is bringing attention to the long-standing economic unfairness of the U.S. system .To give you an idea of what the problem is, think about this: The registration fee for a single work is $125 ($65 or $45 if you file online). A lucky few score jobs as technical writers or creators of other kinds of content. Their copyrights are almost always owned by their employers as “works made for hire.” This can shift responsibility for fees to the employer. The down side of “work for hire” is that the real artists and authors lose ownership of their creative works.
For freelance writers and creators, the going rate for article writers is $0 to $20 per article. Meanwhile, due to the proliferation of free music on the Internet, the average songwriter can expect to make $0 or less per song. Only a tiny percentage of songwriters make enough money to cover the cost of registering a copyright in a song. As for painters, well, there’s a reason “starving artist” is such a familiar expression. Group registration is sometimes possible, and when it is, some money can be saved that way. In many cases, however, this option is not available.
The United States and most other countries, by treaty, do not require a work to be registered in order to get copyright protection. A copyright arises as soon as a creative work is fixed in a tangible medium of expression. That’s great, but owning a copyright won’t do you much good if you need a registration certificate to enforce it. As I said in an Illinois Law Review article, the United States should eliminate its pre-litigation registration requirement.
Maybe the diversity, equity and inclusion movement will finally bring Congress around to doing something.
You might have noticed that Spotify has removed a lot of comedy performances recently. You might be wondering what is going on. Did Jim Gaffigan offend someone? Are Kevin Hart and John Mulaney defecting to form an underground comedy railroad with Dave Chappelle? No, it isn’t either of those things. Yes, somebody probably was offended, but that is not the reason behind Spotify’s decision. It’s copyright.
The problem arises from the fact that when a company licenses the right to share recorded performances, it is really licensing the rights in at least two different works: the sound recording and the underlying composition. The performance and the thing performed. When a person writes a song, he or she owns a copyright in the composition. If someone makes an authorized recording of a performance of it, then that person owns a copyright in the sound recording. The songwriter owns the copyright in the music; the producer and performing artists own copyright in the sound recording.
In the music world, different agencies manage the licensing of these two kinds of copyrights. SoundExchange manages a lot of the licensing of sound recordings; agencies like ASCAP and BMI handle the licensing of musical compositions. Historically, performing rights organizations like ASCAP and BMI have focused on music. They have not collected royalties on behalf of spoken word creators. Recently, however, new organizations have sprung up to fill this need. One of them is Spoken Giants. The organization reportedly has acquired an impressive roster of clients – Jeff Foxworthy, Lewis Black, Patton Oswald, Tom Segura, the estate of Don Rickles. According to their website, the company represents tens of thousands of works.
Spotify has removed a lot of spoken word content because an impasse has been reached in negotiations over spoken word copyright licensing. The Copyright Royalties Board, pursuant to a consent decree, sets songwriter royalty rates for various kinds of uses of musical compositions, which agencies like ASCAP and BMI use when administering music licenses. Until recently, however, no one has gone to bat for writers of spoken word performances. There are no governmentally established royalty rates for them. They must be privately negotiated. Spotify has pulled many spoken word performances from its offerings because a negotiated agreement has not been reached yet.
Should your dad be shaking in his boots?
The U.S. Copyright Act allows for the recovery of statutory damages even if no actual damage can be proven to have resulted from an infringement. Liability for infringement can exist even if no one profited from it or intended to profit from it. This would seem to make everyone potentially liable for repeating a joke they heard someone else tell. Is it true? Can a person be sued for repeating a joke someone else made up?
Copyright protection for jokes
In theory, it is possible for a joke, or at least a particular telling of it, to be protected by copyright. There are some important limitations on liability, however.
First, of course, there can be no infringement if there is no copyright. It must be established that the joke is, in fact, protected by copyright. A copyright in a work does not exist unless and until the work is fixed in a tangible medium. If you hear someone telling a joke that nobody has ever recorded or written down, and the telling of the joke was not recorded, either, then no copyright exists. No copyright, no infringement.
Originality and creativity
Copyrights cannot be acquired by copying someone else’s work. If, for example, Paula, without securing an assignment of the copyright or at least a performance license, repeats a joke she read in a book, and Henny hears and repeats it, Paula should not win if she sues Henny for infringement. The owner of the copyright in the book might have a claim, but Paula would not.
The independent creation doctrine is another obstacle to copyright protection for jokes. If two people independently create the same joke, and neither one copied the other – not even subconsciously – then they each own a copyright and neither one is guilty of infringing the other.
If a joke is so old that the copyright has expired, then it is in the public domain. In that case, anyone can use it any way they want. Currently, the term of most (not all, but most) copyrights is 70 years plus the life of the author. In many cases, this would easily put your dad in the clear.
By the way, if you are looking for some good medieval humor, try Poggio Barcciolini’s Facetiae.
Expression vs. facts
Copyright only protects expression; it does not protect facts or information. Consequently, the facts stated in a joke, if any, are not protected by copyright. For example, consider the joke, “There is a scale that measures not only weight but also body fat, bone mass, and water percentage. Now you can choose four different reasons to be ashamed.” Most of that joke conveys factual information. That part is not protected by copyright. The only question is whether the punch line is.
Idea vs. expression
Since copyright only protects expression, it makes sense that an idea also does not get copyright protection.
The distinction between an idea and an expression might be the biggest obstacle to copyright protection of a joke there is. A situation with humorous implications is considered an unprotectable idea. This was established in the case of Nichols v. Universal Pictures Corp, 45 F.2d 119 (2d Cir. 1930). There, a writer sued a production company for creating a comedy show involving a Jewish man marrying an Irish-Catholic woman, with characters demonstrating stereotypical characteristics of members of those demographic groups. Although the writer had created a story based on the same premise, he lost the case. The court ruled that the ideas on which a story was based are not protected by copyright.
This can present a formidable problem for comedy writers. Even if they come up with a great idea for a joke or comedy routine, they will not be able to prevent other comedians from using it, so long as these other comedians come up with sufficiently different ways of telling it.
The idea-vs-expression dichotomy is made even more difficult to surmount by virtue of the merger doctrine. This is a legal principle that says that if there are limited ways to express an idea, the idea will merge with the expression of the idea and the expression will receive no copyright protection. The classic examples are a recipe or a set of rules for a game. A recipe is an idea. A set of rules for a game is also an idea. Therefore, to the extent a recipe merely states what is needed to know to make the concoction, it is not protected by copyright.
To the extent a rules list merely explains how the game is played, it is not protected by copyright. In these cases, the idea is said to have “merged” with the expression, so the expression does not receive copyright protection. The only expression in a recipe or a set of game rules that gets copyright protection is that which is not necessary to the preparation of the dish or the playing of the game. (This probably explains why so many recipe publishers include extraneous anecdotes and fluff in them.)
You can imagine how this could present a problem for a gag-writer. Jokes express ideas, hopefully amusing ones. For this reason, a bare-bones pun, or a one-liner like the ones that Henny Youngman and Rodney Dangerfield would tell, are less likely to be protected by copyright than are comedy routines that involve a lot of extraneous detail.
The Fair Use Doctrine is a defense to copyright that may present an obstacle to the enforcement of a copyright in a joke sometimes. In general, the doctrine says that people may use copyrighted material in commentary, reporting, teaching, research, and sometimes other uses, if four broadly worded factors weigh in favor of allowing such use without liability for infringement:
The purpose and character of the use
The nature of the work
The amount and substantiality of the portion copied
The effect of the use on the market for the work.
Unfortunately, “fair use” is not a well-defined concept. Courts are not always in agreement about how to balance these factors. Appellate reversals of district judge opinions on the matter are not uncommon.
Recognizing the rights of comedy writers does not have to mean the death of fun. For one thing, it is important to keep in mind what “infringement” means and what it does not mean. There are lots of uses a person can make of copyrighted material without putting himself or herself at risk of being sued for infringement. If you buy a copyrighted painting or print, you can display it in your home, so long as you do not open your home to the public and you do not charge a fee for your guests to view it. The same is true of a movie on DVD. You can play a DVD recording that you purchased as many times as you want to in your own home, so long as you do not invite the public in and so long as you do not charge a fee.
Similarly, there should be no problem with re-telling a joke to family and friends in private. Although even limited reproduction and distribution of a copyrighted work can result in infringement liability, an unauthorized performance or display only becomes infringement, in the United States, when it is a public one. Re-sharing a joke in a public forum could be a problem, if none of the obstacles to infringement enforcement that I have discussed in this article apply. Re-telling a joke to members of your family or a small circle of friends for no fee, on the other hand, is not likely to get you into hot water.
You can claim a copyright in fiction, but no one can claim a copyright in facts. What happens if somebody copies something you claimed to be fact but it turns out to be fiction? Can you sue for infringement?
It is black letter law that copyright only protects expression. No one can claim a copyright in facts. As long as you use your own words, you are free to repeat factual information that someone else has reported, even if the report is protected by copyright.
What happens, though, if the information you copy, although purportedly factual, turns out to be fictional?
Logically, you might think that the copying could be infringement In some cases, depending on what and how the material is copied, it might be. Under the copyright estoppel doctrine, however, copying material that the author/publisher represented to be factual is not infringement even if the purported facts are not true.
The Ninth Circuit recently had occasion to expound upon this principle.
Corbello v. Valli
Corbello v. Valli et al., Case No. 17-16337 (9th Cir., September 8, 2020) was a copyright infringement suit brought by the estate of a co-author of an autobiography of Tommy De Vito, one of the original members of the Four Seasons. The work was never published, De Vito, however, gave a copy of it to Frankie Valli. Valli was working on Jersey Boys, a Broadway play based on the band’s history. The plaintiff claimed that various scenes in the play were copied from the unpublished autobiography.
After trial, the jury found that infringement had occurred. The judge, however, entered judgment as a matter of law for the defendants, holding that the alleged infringement involved historical facts. As such, the judge ruled, they were not protected by copyright.
On appeal, the plaintiff argued that the copied scenes included embellishments that were not historical facts. As such, counsel argued, they should be treated as fiction rather than facts. The Court disagreed. It didn’t matter if the scenes presented in the autobiography were actually true or not, the Court ruled. Under the doctrine of copyright estoppel, which the Court renamed “the asserted truth doctrine,” neither actual facts nor material that is presented as factual are protected by copyright.
Copyright estoppel is a well-established copyright defense. It holds that if an author represents a work to be factual, or historically accurate, then he or she cannot later claim, in court, that the work, or parts of it, are fictional. The principle is predicated on the idea that readers of purportedly nonfiction works should be entitled to rely on the author’s representations about the truthfulness of the matters asserted in them.
Because the term estoppel is bound up with the concepts of culpability and detrimental reliance, the Court decided the term does not accurately reflect the nature of the defense in copyright law. In copyright law, a defendant may invoke the defense without having to make a showing that the author intended to make a false representation on which other people would rely. It also is not necessary to prove that any particular person was actually deceived. It is enough to show, simply, that the author intended readers to think the work was factual.
Published vs. unpublished works
Because a showing of detrimental reliance is not necessary, it does not matter if the work is published or unpublished. The pertinent question is simply whether the material, as written, purports to be factual.
Truthfulness as a literary device
Sometimes a work of fiction will be presented in what looks like a traditional nonfiction format. A short story writer, for example, might choose to tell the tale through a series of imagined newspaper articles. A screenplay might include a scene where a fictional news anchor reports a plot development as if it were a breaking news story. Orson Welles gained notoriety for using truthfulness as a literary device in his radio play, “War of the Worlds.” He told the fictional story through a series of what sounded like actual news broadcasts. Fictional works that use truthfulness as a literary device do not come within the meaning of “purported facts.”
The question in all cases is how the work, taken as a whole, is presented. Although many people mistook Welles’ play for actual news broadcasts, he included multiple disclaimers during the broadcast to the effect that it was just a fictional story made up for entertainment purposes. It was not presented as fact.
The Court correctly observed that material may be excluded from copyright protection when it is presented as factual even if people are not likely to believe it. The alleged “facts” reported in a purportedly autobiographical account of being abducted by aliens, for example, may be repeated without fear of copyright infringement liability. The pertinent question is not whether the information presented in a work is, in fact true. What matters is whether it is presented as a true statement of fact.
Corbello is only precedential in the Ninth Circuit. Nevertheless, because it builds logically upon a cogent exposition of the asserted rights doctrine (nee copyright estoppel), courts in other jurisdictions are likely to consider it persuasive.
The key take-away: Copyright protects expression, not ideas, facts, or purported facts.