Betty Boop Court Misses the Trademark

Controversy surrounds the 9thCircuit’s ruling in the Betty Boop case (Fleischer v. A.V.E.L.A.).  I felt reluctant to do a post on this case because there are already some sagacious posts on this topic by highly respected commentators:  Betty Boop And The Return of Job’s Daughters by Marty SchwimmerWho Knows Who Owns Betty Boop by Pamela ChestekBetty Boop as a Material Girl by Rebecca Tushnet and An Opinion That Cries Out For A 9th Circuit En Banc Review…Betty Boop and The Tangled Character Copyright and Trademark Chain of Title  by Kate Spelman.  I decided to take the plunge after realizing that my take is different from what I have read so far and because it’s such an intriguing topic.

I have a question and a comment about this case:

Question:  Does the court believe that trademarks should be limited in duration, like copyrights?

Comment:  The Betty Boop plaintiff loses because of the court’s completely inapplicable analogy.  The court generalized from a case in which the trademark owner failed to timely assert its rights in its mark to this case in which the trademark owner did timely assert its rights. 

Here is a brief summary of the case.  The Betty Boop cartoon character was created by Max Fleischer in the 1930s.  He sold the rights to her cartoon and character around 1946.  The Fleischer family revived the Fleischer cartoon business in the early 1970s, repurchasing intellectual property rights to the Betty Boop character.  A.V.E.L.A., the defendant, started selling Betty Boop merchandise sometime after the Fleischer family began to bring the Betty Boop character back into circulation.  Fleischer sued A.V.E.L.A. for copyright and trademark infringement.

The district court dismissed the case on summary judgment.  The 9th Circuit affirmed.  The 9th Circuit’s ruling on the trademark part of the case creates the most controversy.  The circuit court determined that the parties’ arguments were moot and that the controlling precedent was its decision in International Order of Job’s Daughters v. Lindeburg, a case which neither party cited.

Job’s Daughters is an organization that used its name and emblem as trademarks.  Lindeburg manufactured jewelry with the Job’s Daughters emblem without a license.  Job’s Daughters sued for trademark infringement.  The 9thCircuit held that Lindeburg did not use the Job’s Daughters name and emblem as trademarks, that consumers purchased the jewelry for its design and did not purchase it because it was sponsored by the organization the emblem signified.  Jewelry with the Job’s Daughter’s emblem was available from many different unlicensed sources and consumers did not ordinarily purchase jewelry from only “official sources.”  In addition, Lindeburg manufactured unlicensed jewelry with the Job’s Daughters emblem between 1954 and 1975 before Job’s Daughters finally took action.  Job’s Daughters did not police its trademark when it should have, and when it did try to enforce its exclusive rights in the mark, it was too late.

The Betty Boop court applied its Job’s Daughters ruling to the Betty Boop facts and determined “that A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product.”

It is true in Job’s Daughters that the consumers bought the unlicensed jewelry as a functional product.  This resulted from the failure of the trademark owner to enforce the mark, not because of the intrinsic functionality of the jewelry.  The court in Job’s Daughters should have determined that the trademark owner did not enforce the mark and let it go at that.  Instead, the court created a bad precedent which it used in the Betty Boop case.

This language from the Betty Boop case is particularly interesting for rights holders of properties that are subject to both copyright and trademark protection:

If we ruled that A.V.E.L.A.’s depictions of Betty Boop infringed Fleischer’s trademarks, the Betty Boop character would essentially never enter the public domain.

This quote above is based on Dastar Corp. v. Twentieth Century Fox Film Corp. In Dastar, Fox neglected to renew its copyright on a television series it created under license and based on General Dwight D. Eisenhower’s book about the World War II allied campaign in Europe.  The television series entered the public domain.  Fox later acquired rights to Eisenhower’s book, including the exclusive right to distribute and sublicense the television series on video.  Dastar used footage from the television series to manufacture its own video set of the allied campaign, without attributing any of it to Fox.  Fox sued Dastar for copyright infringement.  Fox tacked on a Lanham Act §43(a) (a.k.a. §1125(a)) claim for “reverse passing off,” which is the infringer passing off the trademark owner’s goods as the infringer’s own goods.  Ordinary “passing off” is when the infringer passes off his goods as the trademark owner’s goods.  Fox could not overcome the failure to maintain the copyright and tried to rely on a claim for an unregistered trademark to save the day.  Fox tried to regain its copyright in the television series, which it allowed to slip into the public domain, by using a trademark theory and the court didn’t buy it.  Dastar is another case with a very narrow range of supportable application.

Different types of intellectual property offer different protections.  Properly maintained trademarks do not enter the public domain.  Whether the expiration of a copyright causes a property that is also protected by a trademark to enter the public domain is hotly debated. Does the court mean to suggest that long time trademarks such as IBM and Sears should someday enter the public domain?

The court also failed to acknowledge that Betty Boop is essentially a cartoon character.  Cartoon characters differ from other trademarks in that the product, the cartoon, is the same as the trademark, the cartoon.  Thus, it misses the point to look at the functional aspect of a product derived from the cartoon.  I posted a paper on this subject entitled Trademark Protection for Cartoon Characters on my website.

Odessa’s Career Change

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Dee, my partner, and I welcome Odessa into our fold!  Odessa began life as a Guide Dogs for the Blind puppy.  Dee and I are Guide Dogs volunteers.  Last spring, Dee decided she wanted to raise a Guide Dog puppy.  She picked Odessa up from the Guide Dogs puppy truck in Tacoma, Washington on March 7, 2010.  Odessa, a black Labrador Retriever, was just 10 weeks old and completely adorable!

Guide Dogs for the Blind does what its name says, provide seeing eye dogs for blind and visually impaired people.  The main campus is in San Rafael, California.  There is also a campus in Boring, Oregon.  The dogs live with volunteer raisers for up to 18 months before they return to either the San Rafael or Boring campus for formalized training.  The volunteer raisers socialize the puppies and teach them basic commands.  After they return to campus, the dogs learn to work in harness.  Sometimes the dogs are not chosen to return to campus and instead are placed in pet homes.  This is called a “career change.”

We raised Odessa in our home from March until late November 2010.  Odessa is very smart, but very energetic.  Her wild streak made her a challenge to raise.  In November, she was transferred to a more experienced puppy raiser in the hopes that the experienced raiser could better help Odessa with her training issues.

Dee is partial to black Labs.  Her favorite dog, Certs, was a Lab-Australian Shepherd Mix.  Dee got Certs when he was 8 weeks old.  Certs was Dee’s companion and kept the world safe for her until his death at 16 years old.  Dee and Odessa formed a special bond.  It was tough to let Odessa go, but she did belong to Guide Dogs and had a higher calling.  We both believed Odessa would make a great Guide Dog.

Dee was ecstatic when she received a call saying that Odessa would not continue in the Guide Dog program and would we like to have Odessa as our pet.  We are sorry that Odessa did not progress in the program, but we are very happy to have her as our pet.  Welcome home, Odessa!

EULA Awareness

A EULA is an End User License Agreement.  It is the agreement that you are supposed to read, but don’t, before you click “I agree,” so that you can download software onto your computer from the Internet.  People don’t like to read EULAs because they’re tedious, especially when you’re anxious to download and use your software.  Another reason people don’t like to read EULAs is that EULAs tend to be long and complicated.  Someone recently wanted to save time and money and asked me to use an Internet legal document service to draft a EULA.  I declined.  I didn’t feel comfortable using agreement language when I had no way of verifying the reliability of the source.

All license agreements are contracts.  Contracts can be known by different names, such as commercial real estate leases or software licenses.  A EULA is a particular type of software license.  Licenses allow a rights holder to let other people use those rights without giving up complete control of the rights.

Every license covers an imaginary universe of what that license is about and things included in it.  This is called the “scope.”  The scope includes at least seven essential aspects:

  1. subject matter;
  2. activities permitted;
  3. field of use;
  4. exclusivity;
  5. territory;
  6. time; and
  7. sublicensing.

(Source:  Kenneth L. Port, Jay Dratler, Jr., Faye M. Hammersley, Terence P. McElwee, Charles R. McManis, Barbara A. Wrigley, Licensing Intellectual Property in the Information Age, Second Edition, Carolina Academic Press, 2005, pp. 12-14.)

It takes time to thoroughly discuss these seven areas of contract scope with a software developer.  Using shortcuts like stock forms available on the Internet does not do away with the need to discuss this important information.

Do lawyers use forms or model agreements to draft contracts?  You bet.  It happens all of the time.  For me, the reliability of the source is an important consideration in deciding what contract language to use.  When I am drafting a technology contract, I like to start with The Tech Contracts Handbook, by David W. Tollen, ABA Publishing, 2010.  This book does an outstanding job of describing various contract clauses and when to use them.  It is also written in plain English.  Non-lawyers appreciate that, but lawyers appreciate it, too.  The Tech Contracts Handbook website contains downloadable form contracts that aren’t in the book.

Someone also told me that EULAs have been around for awhile and that it should be a simple matter to get one off of the Internet.  EULAs have probably been around for a couple of decades.  What about commercial real estate leases?  Those have been around for hundreds of years.  It seems unlikely that anyone involved in negotiating a commercial real estate lease would suggest that her attorney just download one from the Internet.

Stuart A. Heller, a Seattle area attorney who calls himself, “The Leasing Lawyer,” recently gave an excellent presentation to the Solo & Small Firm Section of the King County Bar Association.  His presentation was called “Six Keys to Successful Lease Negotiation from Tenant’s Viewpoint.”  One of his main points was that the lease terms that are important to the tenant must be individually negotiated so that the tenant gets what she wants and needs to successfully operate her business from the leased premises.  The same is true for EULAs.  Each EULA must be individually tailored to the software provider’s unique situation to ensure that the software provider’s intellectual property is adequately protected.  An improperly drafted EULA is unlikely to achieve its objectives and is a wasted effort.

Coca-Cola Facebook Approach Does Not Fit in FranklinCovey Seven Habits Situation

I enjoyed reading blogger Ron Coleman’s  post, The seven habits of highly annoying lawyers. Ron created his own list of seven habits.  The “seven habits” phrase originated from The 7 Habits of Highly Effective People®, written by Stephen R. Covey and published by FranklinCovey.  It is a highly regarded book discussing “proven principles of fairness, integrity, honesty, and human dignity.”

FranklinCovey recently sent a cease and desist letter to Schlock Mercenary for publishing an ongoing, online webcomic called “The Seven Habits of Highly Effective Pirates.”  Ron’s post commented on the post of another legal blogger who thought that FranklinCovey’s cease and desist letter was unwarranted and that FranklinCovey missed the opportunity to put into play “think win-win,” one of The 7 Habits of Highly Effective People.  Under a comparison and competition based approach to life, one side wins and the other side loses and there is only so much pie to go around.

“Win-win sees life as a cooperative arena, not a competitive one….Win-win means agreements or solutions are mutually beneficial and satisfying.  We both get to eat the pie, and it tastes pretty darn good.” 

Unfortunately, trademark law does not operate on a “win-win” approach.  Trademark law arose out of unfair competition law.  Trademark law requires the trademark owner to use and protect the trademark or lose it.  This is particularly true in the 7 Habits situation.  7 Habits is probably a famous trademark, which entitles it to greater protection than ordinary trademarks, but also requires greater vigilance on the part of the trademark owner.

The Coca-Cola Facebook situation is an example of how a trademark owner created a “win-win” out of a trademark infringement and potential media disaster.  Michelle Golden  describes this situation on pages 68-69 of her book, Social Media Strategies for Professionals and Their Firms. Coca-Cola fans created a Coca-Cola Facebook page, included the Coca-Cola logo and posted content the corporation could not control.  Coke did not attempt to shut the page down, but instead, invited the two people who created the Facebook page to corporate headquarters.  There, Coke entertained them and began a collaboration with the fans to work on the page together.  Both the two fans and Coke executives are administrators of the page.  This is a “win-win.”  The fans get to keep their Facebook page and Coke gets to have a voice in the content.

Why won’t the same thing work for FranklinCovey?  Because FranklinCovey does not like the message about its mark.  Schock Mercenary’s message about the FranklinCovey trademark pokes fun at the mark and is undesirable for the corporation, whereas the Facebook message about Coca-Cola was a positive one that the company wished to encourage.  For FranklinCovey, there is no possibility of a “mutually beneficial and satisfying” solution when another is using its mark in such a manner.

Getting back to the famous trademark discussion in the fourth paragraph, as the owner of a famous trademark, FranklinCovey has the responsibility of policing its mark by refusing to let others “tarnish” it.  Tarnishment is “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”  Policing the mark means taking action to stop parodies or other undesirable uses of the mark.

“[A] ‘parody‘ is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.”

A parody is not categorically a fair use and can still create a likelihood of confusion.

Fixation in Copyright Does Not Extend to Wild Flower Garden

The Visual Artists Rights Act of 1990  (VARA) protects artists’ rights of attribution and integrity for a limited subcategory of copyrightable “visual art” works.  VARA is the United States’ attempt to comply with the Berne Convention for the Protection of Literary and Artistic Works, a treaty the United States ratified in 1989.  The Berne Convention protects authors’ and artists’ moral rights.  Moral rights include the right to claim authorship (attribution) and the right to prevent alteration of a work that would be prejudicial to the author’s honor or reputation (integrity).  The 7th Circuit recently declined to protect an artist’s moral rights claim under VARA for a flower garden he created.  Seventh Circuit:  No Moral Rights in Flower Gardens Under VARA, by Ray Dowd, briefly describes the court’s ruling and shows a picture of the garden.

Here is a short recap of Kelley v. Chicago Park District.  Chapman Kelley is an artist who originally was known for painting landscapes and flowers, but switched to planting large outdoor wild flower displays.  In 1984, the Chicago Park District Board of Commissioners granted him a permit to install a wild flower display across 1.5 acres of parkland in Grant Park.  The permit was extended a number of times through 1994.  After that, the display remained in Grant Park without a permit.  Problems caused by insects, rabbits and weeds beset the garden over time.  In 2004, Park District officials met with Kelley to discuss problems with the garden and decreasing the size of the garden.  The Park District then reduced the size of the garden and changed its shape.  Kelley filed suit under VARA.

The 7th Circuit’s decision in Kelley focused on “fixation,” which is separate from VARA, although the court discussed VARA first.  The circuit court disagreed with the district court’s VARA analysis and devoted the first half of its opinion to providing its own VARA analysis.  Since the court decided the case on the copyright “fixation” requirement and not on VARA, the VARA analysis is dicta and not authoritative.  However, the court’s VARA discussion contributes positively to the ongoing VARA discussion.  For example, the court disagrees with the First Circuit’s holding in Phillips v. Pembroke Real Estate, Inc. that “site-specific art is categorically excluded from VARA” and points out some of the inconsistencies in that opinion.  The court also emphasized that VARA protects a subset of works protected by the Copyright Act and that to receive VARA protection, a work must first be copyrightable under the broader Copyright Act.

A work must be fixed to receive copyright protection.

Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

The Copyright Act defines the word “fixed.”

A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission.

The court declared “a living garden lacks the kind of authorship and stable fixation normally required to support copyright.”  The court made two important points about fixation:

  • Fixation is an explicit constitutional requirement
  • Certain works of conceptual art stand outside of copyright protection

The Copyright Clause  of the United States Constitution speaks of “authors” and their “writings.”  There must be fixation for there to be a writing.  Since some art cannot be fixed in such a way, it does not qualify for copyright protection. 

A living garden like Wildflower Works is neither “authored” nor “fixed” in the senses required for copyright.

[A] garden is simply too changeable to satisfy the primary purpose of fixation; its appearance is too inherently variable to supply a baseline for determining questions of copyright creation and infringement.

The essence of a garden is its vitality, not its fixedness. It may endure from season to season, but its nature is one of dynamic change.

The court distinguished between a garden as a copyrightable work of art and a plan for a garden designed by a landscape designer.  When the landscape designer uses text, diagrams and drawings to plan a garden, the garden plan is embodied in a fixed and tangible copy that can be protected by copyright.

The court explicitly did not rule that only works that are static or fully permanent can be copyrightable or that copyrighted works cannot incorporate natural or living elements.

Changes in Corporate Structure Can Destroy Key IP Rights

What happens to a company’s IP portfolio when it merges with another company or otherwise reorganizes?  Say that Company A merges into Company B.  Shouldn’t someone, presumably company B, do an IP audit?  An IP audit identifies and evaluates a company’s IP assets, such as patents, copyrights and licenses.  An IP audit should identify the licenses that are important to the day to day operations of Company A.  For each such license, the IP audit should identify whether the license contains terms restricting its transfer or assignment.  Perhaps this is an obvious aspect of due diligence, but it sometimes gets overlooked, leading to a loss of value of or even the inability to enforce rights regarding a particular IP asset.

Owen J. McKeon describes a recent example of the failure to account for a patent during a corporate reorganization in Corporate Reorganization Absent Assignment or License of Patent Rights Results in Preclusion of Patentee’s Lost Profits Damages.  The plaintiff patentee is a company that sued another company for patent infringement.  The plaintiff patentee’s operations were transferred to a parent corporation in a stock acquisition and operations restructuring.  The parent corporation was not a party to the litigation.  The plaintiff patentee did not assign or license the patent to the non-party parent.  The patentee continued to operate as a business, but the non-party parent conducted all operations regarding the subject patent.  The court ruled that the patentee could not collect lost profits damages for any time after the reorganization date, as the non-party parent, not the patentee, incurred the business expenses and losses and enjoyed the profits associated with the patent after that date.  The plaintiff patentee could not enforce the patent after the reorganization date, but neither could the non-party parent, as no patent rights were transferred or licensed to it.  The upshot is that no entity on the plaintiff’s side of the suit could enforce the patent after the reorganization date.

Federal common law causes this licensing problem.  The U.S. Supreme Court declared in Erie R.R. v. Tompkins, “[t]here is no federal general common law.”  Undeterred by this pronouncement, the 6th Circuit proclaimed, “[f]ederal common law governs questions with respect to the assignability of a patent [or copyright] license.”  The 6th Circuit stated that despite the declaration in Erie that there is no federal general common law, “there are limited situations where there is a significant conflict between some federal policy or interest and the use of state law that require judicial creation of a special federal rule of common law.”  The court indicated that such a special rule is clearly justified in the area of intellectual property, because the reward of the exclusive right acts as an incentive to invent and create.

In Cincom Systems, Inc. v. Novelis, Corp, the case discussed immediately above, Cincom developed, licensed and serviced software for corporations.  It licensed some software to Alcan Ohio for use in a particular facility.  The license was non-exclusive and non-transferable.  Alcon Ohio underwent a series of reorganizations and name changes, eventually becoming Novelis.  Apparently the name changes did not affect operations and Cincom’s software continued to be used in the facility for which it was licensed.  Cincom learned of the corporate changes and sued Novelis, alleging violation of the software licensing agreement.  The district court entered summary judgment in favor of Cincom and the 6th Circuit affirmed.  The name changes violated the license and caused Novelis to infringe Cincom’s copyright.

In PPG Industries v. Guardian Industries Corp. the plaintiff PPG and Permaglass, Inc. developed similar processes for fabricating glass.  The two companies licensed their respective patents to each other.  PPG licensed two patents to Permaglass on a non-exclusive, non-transferable basis.  Permaglass granted an exclusive license in nine patents to PPG, reserving to itself a non-exclusive, non-transferable, royalty-free license.  PPG could assign to any successor of its entire flat glass business, but otherwise could not assign without the previous written consent of Permaglass.  The license granted to Permaglass was personal to Permaglass and was non-assignable except with the previous written consent of PPG.  A termination clause provided that if a majority of the voting stock of Permaglass became owned or controlled by an automobile manufacturer or a glass manufacturer or glass fabricator other than the present owners, the license granted to Permaglass would terminate. Permaglass subsequently merged into Guardian, the defendant.  Guardian’s primary business was fabricating and distributing automobile and truck windshields.  When PPG discovered the merger, it filed suit against Guardian for patent infringement.  PPG claimed that Guardian infringed all eleven patents, the two PPG patents and the nine Permaglass patents.  The district court ruled that there was not a transfer or assignment under Ohio and Delaware merger statutes.  The 6th Circuit reversed, stating that “[q]uestions with respect to the assignability of a patent license are controlled by federal law.  It has long been held by federal courts that agreements granting patent licenses are personal and not assignable unless expressly made so.”

The result in PPG highlights the need to include a thorough IP audit in the due diligence process.  It is not enough for the potential target to provide an attachment with copies of the patents, as Permaglass did for Guardian.   The acquiring company must examine the licensing documents itself.

Patient Privacy Not Protected in Facebook Placenta Photo Case

A Kansas federal district court judge recently enjoined a community college nursing program from expelling a student for posting a photo of herself examining a placenta on Facebook.  Three other nursing students likewise posted photos of themselves examining the placenta on Facebook.  All were expelled from the nursing program.  The woman from whom the placenta came was not shown in the photos.  An instructor allowed the photos to be taken, but denied that she was informed that the photos would be posted on Facebook.  One of the nursing students challenged her explusion in federal court.  The judge found that there were no patient privacy rights involved.  Debra Cassens Weiss describes the facts in greater detail in In Facebook Age, Do Photos Carry Expectation of Privacy?  Placenta Opinion Raises the Issue.  Nursing Student wins Facebook placenta photo case by Matt Campbell is another detailed article and includes a picture of the Facebook photo posted by the challenging student.

I will depart from much of the other discussion about the case and make these two arguments:

  • The woman the placenta came from is personally identifiable to a point where her privacy should be protected.
  • The supervisor had no authority to consent to the students taking the photos.

First off, what is a placenta?  I have been involved in whelping a few litters of puppies over the past 20 years.  When I first read about this case, I had a hard time believing that anyone would want a photo of the human equivalent of the little sack you tear off of the puppy when it is born, but that’s what they took a photo of.  “The placenta is an organ that connects the developing fetus to the uterine wall to allow nutrient uptake, waste elimination, and gas exchange via the mother’s blood supply.”  Unlike dogs, where the puppy is usually born while still in the placenta, in humans the placenta is usually expelled 15 to 30 minutes after the baby is born.

The court specifically found that “no patient privacy rights were implicated in this photo,” due to the fact that the supervisor “ensured that all patient identifying marks which might be captured by a photograph be removed before the photo was taken.”  The court indicated that whether it was a “fresh” placenta is irrelevant, as the freshness could not be determined from the photo.  Perhaps you can’t tell from the photo whether it is fresh, but the students and supervisor probably knew how fresh it was and that certainly is another identifier that can be used to narrow the identity of the woman it came from.  The court also stated that one of the defendants “testified to some attenuated theory involving the number of births that day at Olathe Medical Center (allegedly only one), which would enable the patient to be identified.  The theory is too remote and speculative.”

In Northwest Memorial Hospital v. Ashcroft, the hospital sought to quash a federal government subpoena of medical records of 45 women on whom a particular doctor performed late term abortions using a controversial method.  The 7th Circuit Court of Appeals upheld the district court’s order quashing the subpoena.  It found that the government failed to adequately account for the privacy interests of the women whose records it sought.  The court of appeals indicated that even if the medical records were redacted to remove personal identifying information, if the women’s medical records were made part of the trial record, some of the women would be fearful that others would have enough information to be able to determine their identity and “expose them to threats, humiliation and obloquy.”  The court of appeals thought that the medical histories and accumulation of information “can make the possibility of recognition very high.”  The court of appeals also stated that:

Even if there were no possibility that a patient’s identity might be learned from a redacted medical record, there would be an invasion of privacy.

That is because the woman who is the subject of the records knows those are her records, even if others do not, and would still feel that her privacy was invaded.

The court’s ruling in the placenta case is just the opposite.  I think the 7th Circuit has the better argument, as it would be a small matter for someone searching publicly available records to narrow down where the placenta came from to a few women.  More importantly, the women who gave birth at that facility on or shortly before the day the photos were taken know who they are and know that some part of a very private moment was made public without patient consent.

My second argument, that the supervisor did not have the authority to consent to the students taking the photos, is an argument about confidentiality.  The court in the placenta case used the word “confidentiality” only once:  “While this Court recognizes and understands the significance of not only patient confidentiality, …”  Despite this comment, patient confidentiality was not recognized by the court at all. 

Under Kansas law, a patient of a treatment facility has a privilege to prevent treatment personnel from disclosing that the patient has received treatment or from disclosing confidential communications made for treatment purposes.  Moreover, “the treatment personnel shall claim the privilege on behalf of the patient unless the patient has made a written waiver of the privilege.”  It seems to me that the supervisor should have refused the students’ request to photograph the placenta and claimed the privilege on behalf of the patient.  In any event, this decision failed to adequately consider the important rights of a person not named in the lawsuit, the patient.

Aside from the above arguments, are we willing to tolerate this type of insensitivity from our health care providers?  When I begin to feel like I am being treated in an impersonal manner or sense a lack of respect, I find another health care provider.  How many women across the country are going to refuse to allow nursing students to attend their deliveries as a result of this case?

Fair Use in AP Fairey Dispute but not in Cooks Source Magazine Controversy

In writing posts for this blog, I receive helpful feedback from Dee, my partner, and staff members at LexBlog.  In response to my post AP and Fairey Fair Use Dispute Resolved, one of the LexBlog staff members asked me how the AP/Fairey fair use situation differs from the Cooks Source Magazine controversy.  The specific question was whether my argument in the AP/Fairey post that Fairey created the market for the AP photo is valid when the editor of the Cooks Source Magazine was severely criticized online for copying a web article, editing it to improve it and publishing it in the magazine without permission.  The editor of Cooks Source Magazine arguably created a greater market for the web article.  The argument that the editor of Cooks Source Magazine helped the writer by copying her online article is invalid as a defense to copyright infringement, so why is a similar argument in the AP/Fairey case not also invalid?

For readers unfamiliar with the Cooks Source Magazine controversy, Caitlin Fitzsimmons provides a nice description in Cooks Source Magazine Forced to Close, Following Facebook Backlash.  Monica Gaudio posted a story called A Tale of Two Tarts  on the Gode Cookery website.  She discovered that Cooks Source Magazine republished the article without her permission.  When Ms. Gaudio contacted Judith Griggs, the editor of Cooks Source Magazine, about the infringement, she was told that content on the web is in the public domain and she should compensate Ms. Griggs for editing the story.  This account of the story was posted by Ms. Gaudio on her blog under Copyright Infringement and Me.  Ms. Griggs and the magazine became the subject of enough negative reaction on the Internet that the magazine lost advertisers and was forced to go out of business.

Ms. Gaudio points out on her blog that the Gode Cookery webpage displays a copyright notice.  A writing on the Internet is protected by copyright law even though it does not display a copyright notice.  Copyright is created by the act of fixing an original work in any tangible medium of expression, such as posting an article on a website.  The use of a copyright notice has the benefit of eliminating the innocent infringer defense.  For example, the copier cannot credibly argue that she thought the copied work was in the public domain if it contains a copyright notice.  Most of the material posted on the Internet is not in the public domain.  The general rule for copying material from the Internet is that if you didn’t write it, the copyright belongs to someone else and that if you want to repost it or republish it without infringing the copyright, you need to get permission.

Getting back to the question from the first paragraph, how is it that creating the market for a copyrighted work is a valid argument in the AP/Fairey case but not in the Cooks Source Magazine controversy?  There are some important differences between the two cases.  Firstly, the Cooks Source editor admitted copying Gaudio’s article and did not claim fair use.  Instead, she reportedly made the outrageous claim that material posted on the web is in the public domain.  Secondly, in a fair use case, the statute requires the court to consider “the effect of the use upon the potential market for or value of the copyrighted work.”  So in a fair use case, arguing that the copier created the market for the original work is a valid argument, as the court is required to examine the market for the original work.

What makes a case a fair use case?  It starts off with the alleged infringer claiming fair use.  Fair use is not merely copying, but creating a derivative work.  A derivative work is based on a preexisting work and involves recasting, transforming or adapting the preexisting work.  Creating a derivative work is one of the exclusive rights reserved to the copyright owner.  Fair use is a defense to copyright infringement, hence the name of the fair use statute:  “Limitations on exclusive rights:  Fair use.” 

Fair use is not an available defense for the Cooks Source editor, as she argued that the web article was in the public domain.  The fair use defense does not apply unless there is first an infringement.  If something is in the public domain, it is not copyrightable and the Copyright Act does not apply.  There can be no copyright infringement of a work in the public domain.  In the AP/Fairey case, Fairey made an AP photo of Obama into a stylized poster.  Whether Fairey’s transformation of the AP photo into a new work was sufficient to gain the protection of the fair use statute is the unanswered question from the AP/Fairey case.

AP and Fairey Fair Use Dispute Resolved

The dispute between artist Shepard Fairey and the Associated Press over Fairey’s use of an AP Obama photo to create his “Hope” poster generated intense debate over the question:  “What is fair use?”  On a human interest level, the opposing forces of the AP, the giant content owner, versus Fairey, the artist, made for a good story.  Fairey deserves respect for asserting his fair use rights, for filing the declaratory judgment lawsuit and for not backing down.  The declaratory judgment action was reported in AP Says it Owns Copyright to Street Artist’s Obama HOPE Image, by Debra Cassens Weiss. The AP gets credit, too, for having sense enough not to be as heavy-handed as it could have been in pursuing its claim of copyright ownership.

Fairey and the AP recently settled their dispute.  Copyright Dispute over AP Photo in Obama Poster is Resolved with Deal to Collaborate, by Debra Cassens Weiss, sets out the nutshell version of the settlement.  Both sides maintain the validity of their positions. 

Fair use can be a confusing concept.  It started out as a common law doctrine, but was codified in §107 of the Copyright Act.  Fair use purposes include criticism, comment, news reporting, teaching, scholarship and research.  The list is not exclusive.  Four factors are considered in evaluating whether the use is a fair use:

  • the purpose and character of the use
  • the nature of the copyrighted work 
  • the amount and substantiality of the portion used in relation to the copyrighted work as a whole
  • the effect of the use upon the potential market for or value of the copyrighted work

This dispute focused on “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.”  The greater the portion of AP’s photo that Fairey used, the less likely that Fairey would succeed in his fair use claim.

How much of the AP’s photo did Fairey use?  He used the whole thing.  The focus of the dispute involves just one of four factors, but all factors “shall” be considered, according to the statute.  Another of the fair use factors is “the effect of the use upon the potential market for or value of the copyrighted work.”  What was the effect of Fairey’s use on the potential market for or the value of the AP’s photo?  Arguably, Fairey’s use created the market value for the original.  The original is not an interesting photo.  A photo that probably would have been stuck in the archives somewhere, never to be seen again, has repeatedly circulated around the world due to Fairey’s poster and to the Fairey/AP dispute.  Associated Press Settles Copyright Lawsuit Against Obama ‘Hope’ Artist, by David Kravets, compares the images involved.

In the future, Fairey and the AP will share rights in the Hope image, they will collaborate on new images that Fairey will create from AP photos and Fairey will get a license from the AP to use its images.  Although neither party conceded its position, the settlement seems like a recognition that Fairey created whatever market exists for the AP photo and that Fairey could have avoided the dispute by obtaining a license.  The AP website contains information on how others may obtain rights to use its photos.  Many of the photos are available royalty free. 

Not All Organizational Secrets are Trade Secrets

Tech group wants Boy Scout ‘perversion files’ blocked is an article written by Nigel Duara that recently appeared in the Seattle Times.  The article describes how TechAmerica, a leading technology trade association, wrote a brief supporting the Boys Scouts of America in its attempt to prevent its “perversion files,” also called “ineligible volunteer files” from being made public.  The perversion files monitor those who violate the rules of the Boys Scouts of American and include files on suspected pedophiles.  The Boys Scouts uses this information to try to prevent those individuals from volunteering again.  The current controversy arose when “[a] Multnomah County Circuit Court judge ruled that 20 years worth of Boy Scouts’ ineligible volunteer files, from 1965 to 1985, could be used in court, and in June ruled that they should be opened to the public.”  The Boy Scouts appealed.  TechAmerica wrote a brief supporting the Boy Scouts, arguing that opening the files to the public eliminates judicial protection of trade secrets.  TechAmerica seems to consider the perversion files a trade secret of the Boy Scouts.

What is a trade secret?  Washington State, which adopted the Uniform Trade Secrets Act, defines a trade secret as “information, including a formula, pattern, compilation, program, device, method, technique, or process that:  (a) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and (b) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”  According to the U.S. Supreme Court, ‘[t]he maintenance of standards of commercial ethics and the encouragement of invention are the broadly stated policies behind trade secret law.”

Do the perversion files actually derive independent economic value from not being generally known to other persons who can obtain economic value from their disclosure or use?  Do the perversion files give the Boy Scouts an economic advantage over its competitors?  Is this situation akin to a business protecting its source code by keeping it secret?  How does keeping the perversion files from the public maintain standards of commercial ethics and encourage invention?

Not all information a company or organization wants to keep secret rises to the level of trade secrets as defined above.  It seems that TechAmerica’s real argument is that corporate secrets should be protected, period.  That is not and never has been the law.