Stomping Out the Copyright Registration Challenge Varmint

Last week I gave a copyright registration presentation at the King County Bar Association Intellectual Property Section meeting:  Copyright Registration – Simple Forms Conceal Complex Legal Issues.

Copyright registration forms are designed so that they can be filled out without the help of an attorney.  We’re all adept at filling out forms.  But in the copyright registration context, I believe it’s important to take a long range view of the information we insert into the boxes.  Take authorship, for example.  If there’s a single author, authorship is not an issue.  But what happens when there are multiple authors, such as when an independent contractor creates code for a startup, but later becomes an employee of the startup?  Absent a written agreement addressing the issue, if the work being registered includes content from both the independent contractor period and the employee period, the person who wrote the code is a co-author with the startup.

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TTAB Likelihood of Confusion Ruling Precludes District Court Relitigation

B&B Hardware, Inc. owns the federally registered trademark SEALTIGHT for aerospace industry fasteners.  Hargis Industries, Inc. tried to register the trademark SEALTITE for construction industry fasteners with the United States Patent and Trademark Office (PTO).  B&B filed an opposition to Hargis’ trademark registration application.  The Trademark Trial and Appeal Board (TTAB) determined that registering Hargis’ SEALTITE would likely cause confusion with B&B’s SEALTIGHT trademark and refused to register Hargis’ mark. 

Concurrently with the TTAB proceeding, B&B sued Hargis for trademark infringement.  The district court refused to accept the TTAB’s likelihood of confusion ruling.  The case was sent to the jury, who found no likelihood of confusion.  The Eight Circuit affirmed the district court decision.  The Supreme Court recently ruled that the TTAB’s likelihood of confusion ruling should have precluded the issue from being relitigated in the district court.

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Availability to Provide Services is Not Trademark Use in Commerce

What is “use in commerce” for federal trademark registration application purposes?  David Couture filed a federal trademark application for PLAYDOM on May 30, 2008.  He submitted a screen shot of his single page website to demonstrate his use of the mark in commerce.  The website stated “welcome to We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested:”  (Opinion pdf page 2).  The website also indicated that it was “under construction.” 

The U.S. Patent and Trademark Office (PTO) registered the PLAYDOM trademark on January 31, 2009.  Services were not provided under the PLAYDOM mark until 2010.  Is offering a service, without actually providing the service, use in commerce for the purpose of meeting federal trademark registration application requirements?

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High Degree of Consumer Care Key to Overcoming Trademark Registration Rejection

I often receive questions about the differences between trademark classes and whether a particular mark can be registered if someone else is using it for different goods and services.  Classes are used to designate the fields of goods and/or services covered by trademarks.  Trademarks are examined for the likelihood of confusion.  The likelihood of confusion is whether consumers are likely to confuse the source of the goods and services associated with the two marks.  This case discusses the Federal Court’s decision to allow the registration of similar marks for different goods and services.

The United States Patent and Trademark Office (PTO) trademark examiner rejected St. Helena Hospital’s trademark application for TAKETEN for the hospital’s 10-day residential health improvement program.  St. Helena identified its program as “health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program” (Class 44).  The examiner thought that St. Helena’s TAKETEN mark created a likelihood of confusion with TAKE 10!, a mark registered for “pre-recorded videocassettes featuring physical activity and physical fitness promotion programs” (Class 9) and for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness promotion programs” (Class 16).

St. Helena appealed the trademark examiner’s rejection of the mark to the Trademark Trial and Appeal Board.  The Board affirmed the examiner’s rejection.  St. Helena then appealed to the Federal Circuit Court of Appeals.  The Federal Circuit reversed the Board’s ruling, based on the dissimilarities between the mark owner’s good and services and the high degree of consumer care associated with St. Helena’s services. 

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Prevailing Party Did Not Prevail Enough for Attorney’s Fee Award

Yellow Pages Photos sued Ziplocal and Yellow Pages Group for copyright infringement.  The jury found that Ziplocal willfully infringed 123 copyrights owned by Yellow Pages Photos.  The jury awarded Yellow Pages Photos $123,000 in statutory damages against Yellow Pages Group for willful infringement, $1 in actual damages against Ziplocal, $0 in statutory damages against Ziplocal and $100,000 in actual damages for Ziplocal’s contributory willful infringement.  The total jury award against Ziplocal was $100,001.  Yellow Pages Photos brought a post trial motion against Ziplocal for attorney’s fees and costs. 

The Copyright Act provides in 17 U.S.C. §505 that “the court in its discretion may allow the recovery of full costs by or against any party.”  Under §505, “the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”  The district court refused to award attorney’s fees under the Copyright Act.

An award of fees to either side would run afoul of any perceived even-handed approach. The jury’s verdict speaks for itself that Ziplocal committed both willful infringement and willful contributory infringement. Nevertheless, the jury did not award a great amount of damages. While the Plaintiff vigorously and successfully defended its copyright, the damages sought based on the number of works at 10,200 far exceeded those actually recovered for the less than 200 works. The disconnect between the damages sought and the damages awarded weigh heavily against an award of fees. The Court exercises its discretion to deny attorney’s fees under the Copyright Act in this very contentious case.

The district court did award Yellow Pages Photos attorney’s fees and costs against Ziplocal for breaching Yellow Pages Photo’s End User License Agreement (EULA).  Florida state law applied to the EULA breach and the district court did not have discretion under state law to deny the fee award.  The jury awarded $0 to Yellow Pages Photo’s for Ziplocal’s breach of the EULA.

This case is Yellow Pages Photos, Inc. v. Ziplocal, LP, No. 8:12-cv-755-T-26TBM, U.S. District Court, Middle District of Florida.

No Record But Still the Same Old Tune

The district court eloquently described the case’s status and defendants’ post-trial motion following a jury verdict in favor of the plaintiffs.  My favorite sentence in this passage is “Ultimately, the goal is to make a dispute understandable to a lay person.”:

While the world has moved beyond the free-MP3-download craze, the parties in this case have not. This hard-fought litigation spans 7 years and 628 docket entries. Numerous substantive motions were heard. And decisions by this Court did not deter the parties from revisiting the same issues time and again. As trial approached, the parties launched salvos of motions in limine seeking to resurrect discovery disputes, relitigate prior motions, and level an impressive array of claims and defenses. 

A primary function of pre-trial litigation is to distill claims. Ultimately, the goal is to make a dispute understandable to a lay person. Despite this Court’s efforts to winnow the issues, the parties insisted on an 82-page verdict sheet on liability and a 331-page verdict sheet on damages that included dense Excel tables, necessitating at least one juror’s use of a magnifying glass. While the jury did its best, their assignment was beyond all reasonable scale.

To understand how this happened, one must look at the impetus for this litigation. Robertson created a business model designed to operate at the very periphery of copyright law.  While Robertson’s business practices sometimes infringed copyrights, many of the Plaintiffs’ claims were just too big to succeed. Plaintiffs’ evidence on their most significant theories of liability—red flag knowledge and willful blindness—was sparse. And Robertson—by his words, actions, and demeanor—came across as unworthy of belief. That led the jury to rely on something other than the evidence in reaching portions of its verdict. For the following reasons, Robertson’s motions are granted in part and denied in part.

(Opinion pdf pages 1-2).

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Sports Tape Competitor Can’t Make Invalid Copyright Claim Stick

Lumos designed, developed and distributes KT Tape, its brand of kinesiology tape.  Lumos created and published a general instructional video describing the use of its tape in 2009.  Lumos published its collection of short instructional videos showing how to apply the tape for various conditions, such as finger jams and inner knee pain, in January 2012.  Lumos registered its copyrights in the videos with the U.S. Copyright Office on October 24, 2012.  Lumos filed a single work application for the collection of videos.  Lumos later filed a supplemental registration to remove the general instructional video from the copyright registration.  The Copyright Office granted both Lumos’ original and supplemental registration applications.

Lumos filed a copyright infringement suit against LifeStrength, the manufacturer of a competing kinesiology tape, for infringing Lumos’ instructional videos.  Lumos alleged that twenty of LifeStrength’s videos infringe by coping the organizational structure of Lumos’ videos; making identical use of non-essential and unique wording throughout the videos; listing nearly verbatim potential causes of injury found in the same order at the beginning of each video; using nearly identical disclaimer language; and suggesting nearly identical complementary treatments.  In response to Lumos’ motion for partial summary judgment, LifeStrength argued that Lumos’ copyright registration is invalid for failure to meet the single work registration requirements.  The district court agreed with Lumos that LifeStrength is an infringer and granted Lumos’ motion for partial summary judgment.

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Aereo Publicly Performs and Infringes Copyrighted Works

Aereo’s network receives broadcast television programming through thousands of dime-sized antennas. Aereo makes that programming available to subscribers by streaming the programming over the Internet.  Each subscriber is assigned a dedicated antenna that is not available to any other subscriber for the duration of the selected program.  A personal copy of the selected program is made for each subscriber.  Only the subscriber can access her personal copy.  When the broadcast companies sued Aereo for copyright infringement, the district court denied the broadcasters’ motion for a preliminary injunction.  The Second Circuit affirmed, ruling that Aereo does not publicly perform the transmitted works because the stream to the subscriber is a private transmission.  Read more about the Second Circuit’s decision in my post Unauthorized Streaming of Television Broadcasts Not Infringing.

Copyright owners have the exclusive right to publicly perform the works that they own.  The U.S. Supreme Court majority saw this case as reducing down to two questions:  “First, in operating in the manner described above, does Aereo ‘perform’ at all? And second, if so, does Aereo do so ‘publicly’?” (Opinion pdf page 8).  The Court ruled that Aereo’s activities are both a performance and a public performance.  Aereo infringes by violating the copyright owners’ exclusive right of public performance.

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Raging Bull Copyright Owner KO’s Film Studios

The Copyright Act statute of limitations is 3 years.  (17 U.S.C. §507(b)).  The statute of limitation is rolling, in that each new infringement starts a new statute of limitations period running.  The copyright term for works created after 1922 and before January 1, 1978 is 95 years.  Laches is an equitable doctrine that prevents the plaintiff from recovering when the plaintiff has unreasonably delayed in filing suit, resulting in undue hardship to the defendant.  Does laches entirely prevent a copyright owner from claiming copyright infringement when the copyright term has not expired?

No, is the U.S. Supreme Court’s answer to this question.  Paula Petrella, the copyright owner of the 1963 screen play upon which the movie Raging Bull is based, filed suit for copyright infringement against MGM and others.  MGM argued that laches entirely precluded Petrella’s copyright infringement claim against it and the other defendants.  The district court and the Ninth Circuit Court of Appeals agreed with MGM and the other defendants.  The U.S. Supreme Court reversed and remanded.  I agree with the Supreme Court’s decision.  What is the purpose of our lengthy copyright term if the copyright owner can’t enforce the copyright throughout the entire term?

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No Copyright Infringement for Photos Registered After Suit Filed

Louis Psihoyos is a professional photographer.  John Wiley & Sons, Inc. is a textbook publisher.  Wiley discovered that it published some of Psihoyos’ photos in its textbooks without a license from Psihoyos.  Wiley requested licenses from Psihoyos after the fact.  Psihoyos sued Wiley for infringing the copyrights on eight photos.  Although Psihoyos won the case overall, some of the photos he alleged were infringed were excluded from consideration by the jury.

This case emphasizes the importance of making sure that the infringed works are registered before the complaint is filed, making sure that the infringed works identified in the complaint are the works that were actually infringed and making sure that the registration certificates provided to the court by the copyright owner are for the works that were actually infringed.

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