Dune It Wrong

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?

Sand dune similar to the one that inspired Frank Herbert's novel, Dune, the subject of an NFT copyright lawsuit

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) 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.”

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 falls into this category – if it is was signed and consecutively numbered by the author – then burning the book would be unlawful.

Conclusion

Consulting with an attorney before making a significant purchase of intellectual property – or what you think is intellectual property – can be worthwhile at times.

Learn about trademark aspects of NFTs. 

Read about other non-AI-related legal issues.

Read more about Alejandro Jodorowsky.

Contact Thomas James, Minnesota attorney

Visit my extensive Copyright FAQs page.

Need help with a copyright matter? Contact Cokato, Minnesota attorney Thomas James at the Law Office of Tom James.

The Trademark Modernization Act

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.

Registered tradmeark symbol

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 goods or services that either have never been used or are not currently being used in connection with the mark. The TM Act provides new ways of clearing some of them out.

Expungement

The TM Act makes non-use a basis 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.

Reexamination

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.

Appeals

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 non-use 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. Read more about the new Office Action response deadlines.

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. You can also visit my extensive Trademark FAQs page.

The Top Copyright Cases of 2021

Cokato Copyright Attorney Thomas B. James discusses the top 3 copyrght cases of 2021: Google v. Oracle, Warhol v. Goldsmith, Design Basics v. Signature Construction

by Minnesota attorney Thomas James

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.

Google v. Oracle America

The Google logo featuring the word 'Google' in colorful letters

Google v. Oracle America, __ U.S. __, 141 S. Ct. 1183 (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.

Andy Warhol Foundation v. Goldsmith

Andy Warhol the artist whose work is at the center of Warhol Foundation v Goldsmith

Andy Warhol Foundation for the Visual Arts v. Goldsmith, No. 19-2420 (2nd Cir. 2021).

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 v. Signature Construction

Multi-story rectangular building

Design Basics v. Signature Construction, No. 19-2716 (7th Cir. 2021).

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 support an infringement claim. In other words, infringement of an architectural work requires a showing of extremely close copying.

Visit my extensive Copyright FAQs page.

Need help with a copyright registration or a copyright matter? Contact the Cokato Copyright Attorney Tom James.