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By now, everyone has heard about the One Billion dollar copyright infringement lawsuit Viacom filed against YouTube and its owner, Google. The lawsuit stems from the fact that clips from a number of Viacom’s programs are regularly appearing on the YouTube website.

YouTube allows its users to post video clips onto the YouTube website, and categorize the clip by providing terms which enable the clip to be displayed when a viewer conducts a search. While some users post videos clips they themselves create, other users are posting clips from television programs and motion pictures, including programs owned by Viacom such as Sponge Bob Square Pants, The Daily Show with Jon Stewart, The Colbert Report, South Park, and MTV Unplugged.

One of Viacom’s chief complaints is that YouTube has not instituted filtering technologies to prevent the uploading of clips from Viacom’s programs despite promises from its executives. Viacom also complains that because YouTube users are able to re-post removed clips almost as soon as they come down. This and other factors cause Viacom to lament that “no matter how much a copyright owner expends to protect their rights, there will always be a vast collection of infringing videos available on YouTube to draw users to its site.”

As an attorney who regularly represents content owners, I understand Viacom’s concerns. Viacom believes that if clips from one or more of its programs are available to users for free on YouTube, this may lessen the demand for those programs on either Apple’s iTunes or on one of Viacom’s own sites. Is YouTube taking advantage of some loopholes in the now 9 year old Digital Millennium Copyright Act (“DMCA”), or is the DMCA doing what its supposed to do and content owners are trying to run rough shot over what may be fair use.

Under the DMCA, a “Service Provider” may be entitled to immunity from claims of copyright infringement in four areas: 1) transitory communications; 2) system caching; 3) storage of information on systems or networks at direction of users; and 4) information location tools. While each area would appear to have some application to YouTube’s business, the information storage category is likely to be of primary focus if Viacom’s suit progresses.

Under the information storage safe harbor, the Service Provider:

1. Must not have actual knowledge that the material is infringing;
2. Must not aware of facts or circumstances in which they would be aware of that the material is an infringement;
3. Upon becoming aware of the existence of such infringement material, acts promptly to remove or disable access to the infringing material.

In addition, in order to be entitled to copyright infringement immunity under this provision, the Service Provider must not receive a financial benefit directly attributable to the infringing material where it has the right and ability to control it. Additionally, the Service Provider must, upon notification of a claim of infringement, quickly removes or disables access to the infringing material.

The areas that will receive the most attention in determining whether or not YouTube should be entitled to the protections of this safe harbor is whether YouTube receives a financial benefit directly attributable to the infringing material, and YouTube’s knowledge that the material is, in fact, infringing.

YouTube sells advertising on its site, and reaps a financial benefit from high user traffic. However, as far as this writer is aware, YouTube does not include advertisements either before, after or within the video clips themselves. Rather, YouTube runs banner ads where YouTube gets paid based on the number of times any particular ad is viewed. Under Ninth Circuit case law this may be enough to establish a “financial interest.” (See, A&M Records, Inc. v. Napster, Inc; Fonovisa, Inc. v. Cherry Auctions, Inc. See also Perfect 10 v. Google, Inc.)

Does YouTube know that material on its system is infringing. Viacom claims that YouTube does. In an Op-ed piece in the Washington Post, Viacom’s general counsel claims that YouTube users use the site to view infringing material and “[i]f the public knows what’s there, then YouTube’s management surely does.” Other critics claim that YouTube must be aware that infringing material is on its system and this generally knowledge should strip it of safe harbor protection. While it would be safe to presume that YouTube knows that there is some content on its system which infringes the copyright held by a third party. However, its almost certain that YouTube does not know which of each piece of content stored on its system is infringing and which is not.

Viacom and others insist that YouTube could install filtering software that would flag files which contain certain keywords tending to be associated with clips from television shows such as “The Daily Show” or “The Colbert Report.” However, if YouTube did install such filters, it would then have to manually review each file to determine whether or not fair use or some other applicable exemption would be applicable. Not to mention the resources YouTube would have to devote to this, what if YouTube’s definition of fair use deviated from that of its users. Why should the fight about fair use be between the user and YouTube.

As a result of YouTube and other similar companies, content owners are required to be extra vigilant in policing their rights. That vigilance comes with a price tag. However, at the end of the day, content owners can have infringing content removed from YouTube very quickly. (Based on personally experience, YouTube is by far the quickest to respond to a take down notice.)

The DMCA is performing as its supposed to do. Content owners have the ability to initiate the removal of allegedly infringing content, the posting party has the ability prevent its removal by claiming fair use or some other exception, and if the content owner still feels strongly about removing the content, the DMCA allows the content owner to take the poster to court. It may be somewhat expensive for a content owner to patrol sites like YouTube and send out take down notices, but if the burden were on YouTube, posts like the pro Barack Obama clip incorporating Apple’s 1984 Super Bowl television ad might not have made it up. (Oor the various clips responding in kind)

Protecting the public’s right to use a third party’s material for criticism or comment are the hallmarks of fair use, and must be protected. The question the Viacom litigation poses is who will bear the price associated with protecting this right.

And the Oscar goes too …. This phrase means only one thing to most people: the annual award given to those celebrated actors and actresses at the Academy Awards each February. The eight and a half pound gold plated statue standing thirteen and a half inches tall is as well known as any celebrity, and its name has become synonymous with the show itself. Although the origin of the name is in dispute, the statute has been called Oscar since the 1930’s.

The Oscar name is a registered trademark of the Academy of Motion Picture Arts and Sciences, and they have vigorously protected the use of their famous mark. Recently, the Academy filed suit against an Italian broadcaster who used the word Oscar in the title of several of their award programs. These shows were broadcast in Italian to subscribers living in the United States. The Academy filed a motion for summary judgment based on the broadcaster’s trademark infringement. This motion was denied by the United States District Court, Central District of California. The judge held that the mark Oscar may be generic in Italian and may not be entitled to trademark protection.

Under trademark law, the quality of a mark’s distinctiveness determines the scope of its protection. Courts have developed four categories to determine a mark’s distinctiveness and, consequently, its strength as a trademark. These categories are (i) coined or arbitrary, (ii) suggestive, (iii) descriptive, and (iv) generic marks. Trademarks that are coined or arbitrary receive the highest protection. Marks such as Kodak or Exxon are examples of coined trademarks. Marks such as Apple for computers or Grey Goose for vodka are examples of arbitrary marks. These marks receive the highest protection since they are inherently distinctive.

One step below coined or arbitrary marks are suggestive marks. Suggestive marks are also inherently distinctive. They are considered weaker than coined or arbitrary marks because the marks suggest some characteristic or quality of the goods or services. With suggestive marks, an individual must use imagination to understand the significance of the marks. Examples of suggestive marks are Greyhound for buses or Mustang for cars. Unlike arbitrary marks, these marks suggest a quality of the goods and services. The suggestion of these two marks denotes speed and quickness.

Falling below suggestive marks are descriptive marks. These are marks that merely describe the good or services. Examples of descriptive marks are Computer Land for a computer store or Park N Fly for airport parking services. These marks are considered weak marks and are only entitled to trademark protection if they have acquired a secondary meaning in the marketplace. An example of a descriptive mark that has acquired secondary meaning is International Business Machines (IBM). IBM is clearly descriptive of its goods and services, but the trademark has acquired secondary meaning through its branding and long history in the marketplace allowing for trademark protection.

The weakest marks and those that are entitled to no protection under trademark law are generic marks. Generic marks describe the general class of goods or services. Simply, the everyday common words for goods and services, such as car or food, are not entitled to trademark protection.

In this case, the judge recognized that Oscar was a strong mark in the United States and should be protected. The judge, however, refused to grant the summary judgment because evidence was presented to show that Oscar in Italian may be a generic term for an award. Since the broadcast was in Italian, the judge found it difficult to prevent an Italian broadcast from using a term that was generic in their own language even if the broadcast was aimed for viewers in the United States. The judge stated, “If the viewers of [the broadcast] perceive the word ‘oscar’ as being a generic term for an award when used in the Italian language, then the Italian award programs using the word ‘oscar’ may not even bring about a mental association with the Plaintiff’s Oscar mark.”

Despite Oscar being a strong mark in the English language, this ruling states that the mark may not be protected against uses in other languages where the mark is a generic term in that language. Since the use of the term Oscar in Italian would evoke the generic sense of the term, it does not infringe on the Academy’s trademark rights.

Last year’s Ninth Circuit’s decision in Funky Films, Inc. v. Time Warner Entertainment is a reminder just how complex and complicated it can be proving copyright infringement. Funky Films involved a claim that the award winning Home Box Office mini-series “Six Feet Under” infringed Funky Films’ screenplay “The Funk Parlor.” At issue on appeal was the district’s court conclusion that “The Funk Parlor” and “Six Feet Under” were not substantially similar.

In order to bring a claim for copyright infringement, a plaintiff must establish (1) ownership of a valid copyright, and (2) copying of protected elements of the plaintiff’s work. Ordinarily, ownership is established by way of a copyright registration certificate and tends not to be the subject of much debate. Courts spend most of their time and effort analyzing the elements of the infringement prong. Absent evidence of direct copying, “proof of infringement” involves fact-based showings that the defendant had “access” to the plaintiff’s work and that the two works are “substantially similar.”

In Funky Films, the district court assumed that the defendant had access to the plaintiff’s work. Ordinarily, in order to establish “access” a plaintiff must show that the defendant had an opportunity to view or copy the plaintiff’s work. This opportunity must be a “reasonable opportunity” and not a “bare possibility” in the sense that anything is possible.

Access can be established by way of circumstantial evidence. A court will consider either (1) a particular chain of events which establishes a link between plaintiff’s work and the defendant’s access (e.g., dealings with a movie studio or record label), or (2) that the plaintiff’s work has been widely disseminated.

After establishing access, a court will turn to whether the two works are substantially similar. In the Ninth Circuit, substantial similarity is inextricably linked to the issue of access. This is known as the “inverse ratio rule” and requires lower standard of proof of substantial similarity when a high degree of access is shown.

Proof of substantial similarity is satisfied by a two part test of extrinsic similarity and intrinsic similarity. The extrinsic test is objective in nature and requires the plaintiff to identify specific criteria which it alleges have been copied. The intrinsic test is an examination of an ordinary person’s subjective impression of the similarities between the two works, and is the exclusive province of the jury. Since Funky Films addressed the district court’s grant of summary judgment, the court’s focus was the extrinsic test.

Applying the extrinsic test the Ninth Circuit found that at a very high level of generality, both works shared certain plot similarities. However, this would not be enough to support plaintiff’s burden as general plot ideas are not protected by copyright law. After substantial review of the plot, characters, themes, setting, mood, pace, dialogue, and sequence of events of the two works, the court found no similarities and upheld the district court’s grant of summary judgment.

The Ninth Circuit’s decision in Funky Films is a reminder that satisfying the extrinsic test can be difficult and require substantial proof. The extrinsic test often requires analytical dissection of a work and expert testimony. In cases such as Funky Films the focus is not on basic plot ideas for the stories, but articulable similarities between protectable elements (e.g., not scenes a faire) of the two works.

Last week Keith Urban, the Grammy nominated country singer from Australia, sued Keith Urban, a New Jersey painter, for use of the website www.keithurban.com. The suit filed in federal court alleges that Keith Urban, the painter, is infringing on the singer’s trademark rights by misleading internet users into believing that the website is owned by the singer. The website, which has been owned and registered by the painter since 1999, sells oil paintings through the website. Upon entering the site users see the following: “You have reached the site of Keith Urban. To those who don’t know, oil painting is one of my hobbies.” Users are then directed to a link which displays several paintings. The singer claims this use infringes on the Keith Urban trademark by violating the Anticybersquatting Consumer Protection Act, the Federal Trademark Dilution Act, and federal unfair competition laws. This article will examine the claims against the painter under the Anticybersquatting Consumer Protection Act.

The Anticybersquatting Consumer Protection Act (ACPA), established in 1999, provides trademark holders protection from cybersquatters. Cybersquatting is registering and using a domain name in bad faith with the intent of profiting from the goodwill created by another’s trademark. Cybersquatters often seek to sell the domain name to the trademark holder at an inflated price. In the early days of the internet, who ever registered a domain first had rights to that domain name. Many individuals bought names hoping to later sell them for exorbitant sums of money. For example, the generic domain name business.com sold for 7.5 million dollars in 1999. Concerned about this environment as it relates to federally registered trademarks, Congress passed the ACPA. The ACPA gives trademark owners legal remedies against defendants who cybersquat.

In this case, Keith Urban, the singer, alleges that the Keith Urban, the painter, is cybersquatting on the domain name www.keithurban.com. In order to receive relief, the singer must show that the painter:

1) has a bad faith intent to profit from the registered trademark (Keith Urban); and

2) registers, traffics in, or uses a domain name that is identical, confusingly similar, or, in cases of famous marks, dilutive of a mark that is distinctive or famous at the time the domain name was registered.

The Act defines many non-exclusive factors that show bad faith. These include offering to sell or transfer the domain name for financial gain; acquiring similar domain names relating to the same mark; diverting consumers from the owner’s online location to a site accessible under the domain name that harms the goodwill of the mark; supplying false information when registering the domain name; and not using the site for a bona fide noncommercial or fair use purpose.

The court will consider these factors to determine if the painter acted in bad faith in obtaining the domain name. Examining the website, it appears that the painter uses his domain name for commercial purposes, specifically to sell paintings as well as advertisements. Also, the web site does not state that the painter is not the famous singer. In fact, the web page subtly implies that the painter and the famous singer are the same. The message that states, “To those who don’t know, oil painting is one of my hobbies” implies that the owner is someone well known. This creates the appearance that the singer is the owner of the site and also paints as a hobby. The web page also stresses that the paintings are available for sale in a “very limited edition.” This language may cause unwitting fans to purchase limited art work of their favorite singer. These factors show bad faith.

On the other hand, no evidence suggests that the painter is seeking to sell the domain name for a profit. The painter is selling his art but on a very limited basis. The painter does not disclaim that he is not the singer, but he also does not proclaim this fact. A more significant factor favoring the painter is that he registered the domain name in 1999, and the domain name he registered was his actual name. Based on these facts, the court will determine if the painter acted in bad faith.

In addition, the singer must prove that his trademark was famous or distinctive when the painter registered the domain name. The painter registered the domain name in May, 1999. Although the singer was well known in Australia at this time, he was not well known in the United States. In October 1999, he released a self-titled album which produced three top ten country singles over the next two years. In 2001, he won awards for top male country vocalist cementing his status as a star in the music industry. The singer, however, must prove that his trademark Keith Urban was famous at the time the painter registered the domain name in May, 1999. This will be difficult for the singer to establish considering the above facts. If the singer is unable to prove this he was in fact famous at the time of registration, he will not be eligible for relief under the ACPA even if the painter acted in bad faith.

This is not the only recourse for the singer. The singer has also sued the painter on other federal trademark grounds as well as for unfair competition. Although the singer might prevail on these claims, the painter’s registration and use of the domain name before the singer’s mark became famous will be difficult to overcome.