Tuesday, December 30, 2008

Deceptive Hot Dogs: Food Trademarks

Found in a complaint in a recently filed trademark case:
    "The hot dog, synonymously identified over the years by a host of names including frankfurter, sausage, frank, wiener, dog and others, has a rich and long history in the United States."


Ok, I confess, I have no reason for posting this other than the fact that it amuses me that the attorney who wrote this sat down to write out synonyms for hot dogs. Some other synonyms include:


Wednesday, December 17, 2008

Barbie v. Bratz: Scope of employment and tainted copyrights

Think that idea that you put together in your free time is free for you to use? Think again. While not binding in any court here in Minnesota, the legal battles between Barbara Millicent Roberts (Yes, that's her full name) and Cloe, Sasha, Yasmin, and Jade recently took a turn for the worse for Bratz manufacturer MGA Entertainment Inc. and are a good example of why creative professionals need to understand what their employers view as their work responsibilities, and why companies hiring creatives need to make sure they know the origins of those great ideas coming from new employees.

After a large number of Mattel employees, including Bratz designer Carter Bryant, defected and came to work at MGA and MGA launched its Bratz line, Mattel filed suit claiming the Bratz dolls were designed on their dime and therefore they held the copyright for their design. After a jury trial that resulted in a jury finding that the original four Bratz dolls where the property of Mattel, District court Judge Stephen Larson ordered MGA to stop producing MOST of its dolls and accessories and to stop selling them in February 2009 (with remaining stock to be recalled and destroyed). Additionally, Judge Larson (who earlier this year wrote a decision involving the heirs of Superman co-creator Jerry Siegel) ordered that early drawing produced by Carter Bryant that were created while he was employed at Mattel be turned over to Mattel.

This case illustrates two interesting issues in copyright law. (1) if you are an employee, work performed in the course of your employment is the property of your employer; and (2) ownership of a copyright includes the right to make derivative works.

Scope of Employment
Under U.S. Law, works created in the scope of your employment are considered to be the property of your employer. Seems fairly cut and dried, but for Carter Bryant the issue was a little more convoluted. Mr. Bryant's design responsibilities at Mattel were limited to hair and fashion design. After leaving Mattel in 1998 for a stint in retail sales, Bryant claims to have conceived the dolls, he then returned to Mattel in 1999, only to defect with other Mattel employees in 2000. While eventually coming to the conclusion that the original Bratz were developed during Bryant's employment with Mattel, it is interesting to note that the jury felt that these designs fell into the scope of his employment of hair and makeup design.

Derivative Works
In his ruling, Judge Larson said "Mattel has established its exclusive rights to the Bratz drawings, and the court has found that hundreds of the MGA parties' products, including all the currently available core female fashion dolls Mattel was able to locate in the marketplace, infringe those rights," Even though only four dolls were found by the jury to be the original property of Mattel, the fact that hundreds of subsequent derivative products were created based on those products means that ownership in the copyrights belong to Mattel.

This result of this case illustrates that while internal segmentation of job responsibilities exist in large corporations, companies may not rely on such designations when it comes to claiming ownership of multi-billion dollar product lines, and that once the door is open and a product line has been tainted with an infringing copyright, the entire product lines might end-up being destroyed and the manufacturing floor will go silent.

Tuesday, December 9, 2008

Now on Twitter

Just added myself to Twitter. Want to know how that goes? Log on to find out.

Tuesday, November 18, 2008

SPNN Presentation

I had the opportunity the other night to cover for another attorney in a presentation at the Saint Paul Neighborhood Network (SPNN) regarding copyright law, release forms, and fair use in video production. I typically enjoy these programs, as I always learn new things based on the questions I receive. As I experienced when I conducted a similar presentation last year to a national association of public media, the questions were well thought-out and addressed the many of central legal issues that new comers and old hands alike run into when creating video productions. Unfortunately, many of the questions necessitated the maddeningly frustrating answer of "it depends." This a problem that aggravates many clients, because obviously if they are paying for your expertise, they expect concrete, text book response. Unfortunately, to fully resolve most people’s questions related to fair use and privacy rights requires a fuzzy answer, as various criteria must be weighed against one another and more than likely the answer is unclear absent taking the most conservative of courses. While the fuzzy answers may frustrate, they often provide a “teaching moment” for the client which can be used in the future to avoid problems. This type of educating of clients is important and clients looking to hire attorneys should look for this when working with their attorneys, so that the next time the issue comes up, they can sharpen the boundaries around some of these fuzzy legal issues.

Thursday, November 6, 2008

Election Judge

I had the fortune to serve as an election judge last Tuesday. Even though the day is long (16 plus hours), performing that service is one that I enjoy every time I do it. Not only is having the opportunity to serve the community a positive experience, but having the opportunity to see my neighbors come through the door to exercise their civic voice is a joy that I can recommend to everyone. This year was no exception and in many ways it was even more enjoyable as the number of first time voters was high.

In many ways the outcome here in Minnesota is illustrative of the importance of exercising that civic voice. The presidential race was one in which, through the power of many first time voters, an "improbable" candidate was elected and a milestone in our nations history has been reached - regardless of your opinion of the outcome, there can be no denying that this election was different.

In contrast, even though the presidential election was decisive in Minnesota, the race for the Senate remains hinged on a scant few hundred votes. I mention this, because this result also illustrates that while your vote is often just one of many and it is easy to feel that it does not matter, the closeness of this election highlights that if just a small number of people can have an impact.

Thursday, October 30, 2008

Liability for Withholding Passwords

Update (6/8/10): Terry Childs was found guilty of one felony count of denying computer services.

Does your company have a clear policy concerning who may receive admin passwords? The city of San Francisco apparently has some problems in this area.

Terry Childs

IT manager Terry Childs was arrested earlier this year for refusing to provide administrative passwords for the city's computer network. The city alleges that he was setting up a network that he could take over remotely and take down at his whim - Mr. Childs claims that the policies of the city did not allow him to provide the passwords to his managers and that once he turned them over to the Mayor, the management simply didn't understand the technology enough to understand how to use them.

Apparently out of fear that his release will result in a melt down of the city's computer network, the judge in the case has set bail at 5 million dollars, as opposed to a lower bail such as one million as is common for murder suspects.

Password Policies

While the facts are clearly in dispute, the case demonstrates: 1) the need to thoughtfully consider your password policies and those of companies you are dealing with, 2) the need to have clear documentation on systems available for others to understand how your systems operates, and the need to consider whether to make sure that your contracts address liability issues related password and access issues.

For a good article discussing the case go to www.infoworld.com

Friday, September 26, 2008

Jacobsen v. Katzer - Open Source infringment

In August, the Court of Appeals for the Federal Circuit issued a ruling (Jacobsen v. Katzer) that has been widely discussed as acknowledging the rights of developers of open source software. This opinion, while not necessarily binding in Minnesota, is helpful in illustrating important issues that relate not only to open-source software licensing and development but to general contracts that apply to everyone.

The dispute involved an open-source developer and a company that used the open-source code as a part of their own software. Despite a license that required that the open-source developer be credited and copyright information retained in subsequent use of the code, the defendant stripped out this information. The issue was whether failing to provide this information caused the subsequent software to be an infringement of the plaintiff’s copyright, or whether it was simply a breach of contract - the difference meaning considerably different remedies.

The opinion contained an extensive discussion on the importance of “conditions” verses “covenants” in copyright agreements. The court found that the language found in the agreement requiring that copyright information for the open-source developers be provided in subsequent iterations of the code was not simply a promise (covenant) to do something, but rather it was a conditional requirement for the license. The court also noted that while copyright law only protects economic interests (rather than moral rights), the requirement of attribution and copyright notification in open-source licenses is in fact related to the economic interest of promoting the open-source community and in promoting the services of many of its participants.

While this opinion is useful to illustrate many important principles, it must be kept in mind that it does not provide a blanket cause of action for infringement merely because software contains open-source code. What it does do is to show the importance of controlling the origination of code and providing appropriate attribution. Additionally, while not as clear in the opinion, businesses licensing software or other intellectual property should pay attention to the specific language and terms of the agreement, as it can be paramount in controlling whether the agreement is controlled under copyright law verses contracts.

Thursday, June 5, 2008

Copyright Basics

Every once and a while it is good to go back to basics.

What is a copyright?
A copyright is a set of rights (often referred to as a "bundle of rights") afforded to the owner of original works. Under federal law these rights include the right to reproduce the work, prepare derivatives of the original, and the right to perform the work publicly. By controlling these rights the owner may receive income from licenses in the form of royalties or directly from the sale of these rights.

How do I get a copyright?
Under current U.S. law all that is required to get a copyright is that the original work be "fixed" in a "tangible form." For example, if you are a writer, once the words appear on the page (or on computer disk) you have a copyright. There are no registration requirements to obtain the copyright, however, in order to enforce the copyright the work must be registered with the Copyright Office at the Library of Congress. Additionally, the work must have been registered in order to seek statutory damages or attorney's fees in the event that you are forced to litigate to protect your rights. If you choose to register your work you must first determine what Copyright Office classification fits into, fill out the appropriate form and submit copies to the Library of Congress along with a registration fee of twenty dollars.

What do they mean by "original?"
In the United States a work must be "original" in order to be protected by federal copyright. This originality does not simply mean that the work be new, but rather that the work has a "modicum" of creativity and not be merely the result of the "sweat of the brow." While the degree of creativity needed is debated, the central premise remains: compilation of data is not sufficient to create a copyright without some additional efforts. For example, the leading case on the subject held that merely compiling information for a phonebook does not give someone the right to a copyright in the compilation of the phone numbers.

How long does a copyright last?
Under the Sonny Bono Copyright Extension Act which was enacted last year, the term of a copyright authored by an individual is the life of the author plus seventy years. In cases involving joint works, work for hire, anonymous or pseudonymous works, the copyright exists for whichever expires first; 95 years from the works first publication, or 120 years from the year of the work's creation. This only applies to works created after January 1, 1978.

What about the © symbol?
While it is not required under current U.S. copyright law, having ©, "copr," or "copyright" located on the work is a fairly good idea since it gives the viewer notice that you are claiming your copyright. The notice should also contain the year of the creation of the work and the name of the copyright holder. For example the copyright notice for this document is "© 2008 Kenneth L. Kunkle" In rare situations involving creation of works by citizens of some South American countries, the phrase "All Rights Reserved" must also be placed on the work. For the copyright on a sound recording (i.e. record, C.D., or tape) the proper symbol is (P) with the name and the year listed in the same way as with the © symbol. However, the (P) symbol only applies to the sound recording and not the underlying work or any cover art or liner materials.

Friday, May 30, 2008

Poor Man's Copyright

A frequent comment I hear when talking with musicians is that they think mailing a copy of their music to themselves will work just like a copyright registration, but cheaper. This is sometimes known as a "Poor Man's copyright." While this might (and I use the term loosely" be helpful from an evidence standpoint, it doesn't really help with who created it and it will likely run into all kinds of evidentiary problems. Writers are much better off going ahead and filling out the copyright application. By filing a registration you set yourself up to collect attorney's fees and potentially higher damages if you have to file a lawsuit. By the way, in order to even get into a court on a claim of copyright infringement you have to file a registration, but if you wait to long to register you may lose out on some forms of damages.

The better advice is to always put together a song writer split agreement - i.e. write what contribution (or percentage) of each song each person contributed. In a band setting it is good to have all members sign off, even if they did not contribute.

It is much easier to do things right the first time then to get into a fight over it later.

Tuesday, May 27, 2008

Morals Clause

What does a "morals clause do?


The basic idea is simple - if you are in the public eye and you do something stupid and doing that stupid thing makes the purpose of the contract frustrated, then the other party can say I'm canceling the deal. For example, lets say the Queen of England enters into a contract with a department store to endorse its new clothing line "Queen." She might have a clause in her deal that says something like
    Queen agrees to conduct herself with due regard to public conventions and morals, and agrees that she will not do or commit any act or thing that will tend to degrade her in society or bring her into public hatred, contempt, scorn or ridicule, or that will tend to shock, insult or offend the community or ridicule public morals or decency.

She then gets arrested for soliciting men in a downtown Minneapolis hotel. The Department store has an interest in protecting its image and can cancel the deal by invoking the morals clause. A few real life examples include: Kate Moss - Chanel - photographed allegedly snorting cocaine - Michael Nade (“All My Children”) - ABC - cocaine arrest Sidney Ponson - Baltimore Orioles - third arrest for alcohol-related violations But wait, if you think this is a concern just for those big name types, think again, these clauses can pop up all kinds of places, from local TV weathermen, to mechanical contractors.

Reverse Morals

So is turn about fair play? Some folks think so and are putting "reverse morals clauses" into their deals so that if the company is tainted by scandal, they endorser can get out of the deal. Same concept applied to other types of arrangements such as naming rights, think Enron, but the same applies to smaller deals as well.

Thursday, May 22, 2008

Non-compete is based on customers, not location.

While worker non-competes have are generally construed against the employer, the standard of enforceability in the sale of a business in more liberally interpreted in favor of the party seeking to enforce, as it is focused on whether the restriction is reasonable to protect the goodwill of the business that was sold.

When selling his optometry business, Jay Peterson agreed not to “participate, compete or be engaged in the business of optical goods . . . within a five-mile radius of . . ." the location of his former business. After a dispute arose concerning the terms of the sale, Peterson opened a new practice ten miles away, which would have been fine except for the fact that he then took out advertising in the newspaper located in his old town encouraging clients to come and see him at the new location. In February, the Minnesota Appellate court ruled that the Peterson could be prevented from placing those advertisements even though the business itself was outside of the designated geographic area. Interestingly, the court noted that while they felt a limited restriction was appropriate, it should not be seen as placing a general ban on advertising that may have incidental exposure to the geographic area. In relevant part the court noted -

. . .the Court will not restrain publications with large circulation areas that happen to enter the five mile area (e.g. Minneapolis Star and Tribune). We agree with the district court's reasoning. Advertising in the Yellow Pages and the Internet, which have large circulation areas that only incidentally enter the restricted geographic areas, therefore, would not be prohibited by the non-compete agreement. Rather, the prohibition is limited to advertisements "specifically targeted" at persons in the restricted geographic areas.

Sealock v. Petersen, No. A06-2479 (Minn. App. 2/5/2008) (Minn. App., 2008).

This case provides a nice illustration of how you should look at the intent of the agreement to not solicit customers, rather than trying to circumvent the intent based on the literal geography of the agreement. However, in this age of mass circulation, this decision highlights a distinction that the court is willing to make between specifically targeted marketing efforts and marketing nets cast by much broader means.