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In Jarvis v. K2 Inc. (April 30, 2007), the Ninth Circuit held that a retailer’s use of collage advertisements containing copyrighted photos was not covered by the “collective works” privilege and, thus, the retailer could be liable for copyright infringement.

Jarvis, a professional photographer, and K2, a sporting goods maker, entered into a series of agreements from 1999 to 2002. Under these agreements, Jarvis submitted photographs to K2 in exchange for compensation. K2 could publish the images provided by Jarvis in its marketing materials and on its website so as to market its business. The agreement called for K2 to include an attribution credit for each use of Jarvis’ images. Under the last agreement between Jarvis and K2, K2’s rights to use the photos expired in May 2003.

Jarvis provided more than 4,000 slides to K2, the bulk of them during 2000-2001. 24 of Jarvis’ images were incorporated into four “collage” advertisements that were initially published as magazine inserts prior to May 2003. These collage ads combined edited versions of Jarvis’ images with other images, marketing graphics and promotional slogans.

The relationship between Jarvis and K2 eventually soured and K2’s contractual rights to use Jarvis’ images expired. Nevertheless, K2 scanned the previously used collage ads and displayed them on its website after May 2003. Jarvis filed a lawsuit against K2 alleging, among other things, copyright infringement for the use on its website of the 24 photographs in K2’s collage advertisements.

The trial court granted summary judgment in Jarvis’ favor as to most of his other claims and awarded him damages. However, the trial court ruled that the collage advertisements, which contained 24 images that would have otherwise infringed on Jarvis’ copyrights, constituted “collective works” and thus were privileged under 17 U.S.C. section 201(c). Jarvis appealed this finding to the Ninth Circuit.

Jarvis argued that a 2001 agreement with K2 applied to the images in the collage ads and did not permit the images to be used in any way by K2 after May 2003. He argued that the trial court erred in ruling that the collage ads were protected as “collective works.”

The Ninth Circuit recognized that the 2001 agreement authorized K2 to “publish” Jarvis’ images and that K2 acted within its rights when it first used the collage ads prior to May 2003 for the magazine inserts. Although K2 conceded that its display of the collage ads after the May 2003 termination date was not authorized by the agreement, K2 argued that the collage ads fell under the “collective works” privilege of section 201(c).

Section 201(c) provides in pertinent part: “In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” The Ninth Circuit, however, rejected K2’s argument (and the finding of the trial court) and held that the ads were not “collective works,” but rather, improper “derivative works.”

The Ninth Circuit recognized that section 201(c) protects only collective works. A “collective work” is defined as “a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” (See 17 U.S.C. §101.) A “derivative work,” on the other hand, is defined as “a work based upon one or more preexisting works, such as a translation, musical arrangement . . . art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adopted. A work consisting of editorial revisions, annotations, elaborations, and other modifications which, as a whole, represent an original work of authorship, is a `derivative work’.” (Id.)

Using these statutory definitions, the Ninth Circuit found that the collage ads were derivative in nature rather than collective works. Jarvis delivered all of his images to K2 in the form of identical square slides. K2’s collage ads did not merely compile these slides as a typical album might. Rather, K2 “shrank, expanded, distorted, overlaid and otherwise edited the original images, while also combining them with photos taken by other photographers, additional graphics, the K2 logo and marketing slogans.”

The Ninth Circuit found that the changes K2 made to Jarvis’ images were examples of “recasting, transforming or adopting” and “editorial revisions, annotations, elaborations or other modifications” that define “derivative works.” The Ninth Circuit recognized that Jarvis delivered the images to K2 in one form and they were subsequently used in the collage ads in a different (though still recognizable) form. K2’s ads did not simply compile or collect Jarvis’ images, but rather, altered and infused them with other images and artistic elements into new works that were based on, i.e., derivative, of Jarvis’ original images.

K2 attempted to argue that its collage ads “in no way transformed or altered [Jarvis’] preexisting photographs.” The Ninth Circuit rejected this argument by finding that “even a cursory look at the ads which `transformed or altered’ Jarvis’ photographs in a variety of ways, demonstrates the weakness of this claim.”

K2 also argued that the collage ads that appeared on its website were the same ones that had been used as original magazine inserts. The Ninth Circuit found this to be irrelevant since “a derivative work remains derivative when it is scanned and placed on line just as a collective work would remain collective if it were transferred from one medium to another.”

Having found that K2’s four collage ads were derivative rather than collective works, the Ninth Circuit ruled that K2 had infringed on Jarvis’ copyrights as to the 24 images that were used in K2’s collage ads. The Court remanded the matter to the trial court to determine the amount of Jarvis’ damages. The Ninth Circuit further noted that because some of the images used in the collage ads appeared to have been registered by Jarvis before their infringement, Jarvis may be entitled to statutory damages and attorney’s fees under sections 412 and 504(c)(1). Jarvis could also show that K2’s infringement was “willful” under section 504(c)(2) thereby increasing the amount of available statutory damages.

The Ninth Circuit’s ruling in the Jarvis case requires that advertisers pay special attention to their use of copyrighted images in “collage” type advertisements. If copyrighted images are modified, transformed or included with other artists images, the advertiser may be unable to take advantage of the collective works privilege of section 201(c). This could expose the advertiser to substantial damages for copyright infringement.

Its that time again; time to upgrade your computer operating system and associated programs. Microsoft’s new operating system, Vista, is coming pre-installed on new computers and laptops, along with new versions of Microsoft Word, Excel and Outlook. Along with Vista, other business software manufactures are taking this opportunity to roll out upgrades and offer entirely new programs.

Anytime a company decides to upgrade or purchase a new program which has to be rolled out to a significant number of users, the company’s IT department faces a very big task – to install numerous copies of the program in as time efficient manner as possible. The IT department may face even greater challenges where users of a particular program are not assigned to one specific computer workstation but need to have access to the program on multiple computer work stations. To deal with this situation, instead of individually installing the program onto each machine, the IT department may use hard drive imaging-copying the complete content of a master hard drive on to the hard drive of individual computers. Where a company has purchased a limited number of licenses to a program, but must install it on a larger number of computer stations, an IT department may configure access to the program such that only a particular number of users have access to it at any one time. Depending on the type of software license the company acquired, this could be the prelude to a Copyright infringement lawsuit.

Software can be licensed to users in a variety of different manners. Some software companies license software for a flat fee and allow for an unlimited number of users on an unlimited number of computers. Others may supply the software for free but require the licensee to subscribe to a service contract. Others grant a license on a per user or per computer station basis. Where a company has acquired a license which allows the software to be installed on an unlimited number of computers, over installation is not an issue. Likewise, where a company has acquired a license which allows use by no more than a particular number of users at any one time, regardless of the number of computer stations on which the software is installed, as long as the software is configured to limit access accordingly, over installation may not be an issue. However, where a company is granted a license on a per computer station basis, over installation, regardless whether or not the program is configured to limit access, can be very problematic.

In Wall Data Incorporated v. Los Angeles County Sheriff’s Department the L.A. county Sheriff’s department faced a similar problem. It had acquired 3,663 licenses to a particular computer program for use in the jail facility. Because of the mobility of the officers working in the jail facility, the Sheriff’s department determined it needed to have the program installed on 6,007 computer stations. The Sheriff’s department configured the program such that only 3,663 users were allowed to access the program at any one time.

The license grant in the Sheriff’s license agreement provided as follows:

Wall Data … grants you (“You”), the end user, a non-exclusive license to use the enclosed software program … on a single Designated Computer for which the software has been activated. A “Designated Computer” is either (i) a stand-alone workstation, or (ii) a networked workstation which does not permit the Software to be shared with other networked workstations. You may not use the Software in any other multiple computer or multiple user arrangement. You may not use the Software other than on a Designated Computer, except that You may transfer the Software to another Designated Computer and reactivate it for use with such other Designated Computer not more than once every 30 days, provided that the Software is removed from the Designated Computer from which it is transferred.

On appeal, the Ninth Circuit upheld the lower court’s trial verdict of copyright infringement in favor of Wall Data. The Court found the license agreement to be very specific regarding the number of computers on which the program could be installed and that it did not allow for over installation. The Court stated that the Sheriff’s department should have negotiated for the flexibility it desired rather than buying a few licenses and installing the program on practically all its computers. The over installation of the program in violation of the terms of the license grant constituted indefensible copyright infringement.

The lesson to be learned is not to brush aside the shrink wrap license agreement that comes with pre-packaged computer software, or click “OK” on the click wrap license agreement that comes with downloadable software. Be sure to read and understand them first before you take any action which you may later regret.

There always has been a few simple things to do when a named partner leaves a law firm: change the name of the firm, stationery and business cards, and send a notice to clients. Today, additional tasks include changing web page domain names, email addresses, and websites. Is that enough? One intellectual property attorney in Pennsylvania thought not and filed suit against his former firm alleging violation of federal and state unfair competition and trademark law and the federal Anti-Cybersquatting Consumer Protection Act, among other causes of action.

The plaintiff, and departing partner, was M. Kelly Tillery (“Tillery”). Tillery brought his suit against his former law firm, now renamed Leonard & Sciolla (the “Firm”). Tillery was once a named partner of the Firm. The Firm changed its name, letterhead, business cards, and advertisement. The Firm also changed its domain name to remove reference to Tillery and edited its website to remove Tillery’s name and delete the link to his resumé. Nevertheless, Tillery sued, claiming he had a protectable trademark in his name and that the Firm infringed his trademark because the Firm retained the old domain name “leonardtillery.com.” Even though the Firm changed its domain name to “leonardsciolla.com,” it continued to maintain the domain name “leonardtillery.com,” but created a link redirecting users from that domain name to the new website with the new domain name. Tillery argued that continuing to utilize the domain name “leonardtillery.com” constituted a violation of his trademark rights. The source code of the Firm’s website still contained Tillery’s name, including in old press releases as well as cashed web pages stored by Google included his name and photographs.

Tillery brought a motion for preliminary injunction. The United States District Court, Eastern District of Pennsylvania denied the preliminary injunction on the grounds that Tillery did not prove a likelihood success, but addressed several issues of interest to practicing attorneys. (Tillery v. Leonard & Sciolla, 437 F.Supp.2d 312.)

Personal names can become protected trademarks, but are considered “descriptive” and, as such, the owner must be able to establish a showing of distinctiveness and secondary meaning. A name acquires secondary meaning “‘when the name and the business become synonymous in the public mind’ and secondary meaning ‘submerges the primary meaning of the name of the word identifying a purpose, in favor of its meaning as a word identifying that business.’” (Tillery, supra, 437 F.Supp.2d at 321, citing to McCarthy on Trademarks, 13.3.)

Tillery failed to satisfy his burden in connection with the motion for preliminary injunction. The evidence established that Tillery only used his name in conjunction with the names of his partners and never used his name alone to market his services. Tillery also had not submitted any survey evidence to establish evidence of secondary meaning. Tillery did not cite, and the court could not find, any authority granting trademark protection to a lawyer’s name used solely in connection with the provision of legal services.

The Court, in further analyzing Tillery’s claims of trademark protection, conducted the analysis required by Checkport Systems v. Checkpoint Software Tech., 269 F.3d 270, 280 (Third Cir., 2001) to analyze the likelihood of confusion. These factors are similar to the factors described by the Ninth Circuit in AMF Incorporated v. Sleekcraft Boats, 599 F.2d 341, 348-49 (Ninth Cir., 1979). The Court’s analysis of those factors further established that Tillery did not have a likelihood of success.

The Court further determined that Tillery had failed to establish any irreparable harm. In fact, in the balancing of the equities, the Court found that the Firm’s continued maintenance of the domain name “leonardtillery.com” as well as redirecting any emails sent to its employees at that same extension would burden the Firm far greater than any burden upon Tillery. Tillery could not explain how he was harmed when an employee of the Firm received an email addressed to that person ending with “@leonardtillery.com.”

The Court’s decision in Tillery v. Leonard & Sciolla provides guidance to law firms in the ever-changing area of law firm management concerning appropriate steps to take upon the departure of a named partner and what, if any, residual rights it may have in its past use of domain names and email extensions. The California Rules of Professional Conduct address the issues related to the use of a former partner’s name in the firm name, but are silent as to the more modern uses in connection with websites and domain names. Care should be taken to promptly evaluate these issues upon the departure of a named partner.

On March 29, 2007, the Ninth Circuit issued its opinion in the case Perfect 10, Inc. v. CCBill LLC, et al. in which it attempted to clarify when immunity is available to internet service providers for copyright infringement under the Digital Millennium Copyright Act (“the DMCA”), 17 U.S.C §512. Perfect 10, the publisher of an adult magazine and a related subscription website, brought a lawsuit claiming that CCBill and CWIE violated copyright laws by providing services to other websites that posted images stolen from Perfect 10’s magazine and website. CWIE provides web hosting and related internet connectivity services to the owners of various websites. CCBill allows customers to use credit cards or checks to pay for subscriptions or memberships to various websites. The U.S. District Court granted summary judgment in favor of CCBill and CWIE as to the copyright claims finding that they qualified for the “safe harbor” provisions from copyright infringement liability under the DMCA.

The Ninth Circuit began by recognizing that the DMCA created specific “safe harbors” to “provide protection from liability for: (1) transitory digital network communications; (2) system caching; (3) information residing on systems or networks at the direction of users; and (4) information location tools.” While the safe harbor provisions limit liability, they “do not affect the question of ultimate liability under the various doctrines of direct, vicarious and contributory liability.” The Ninth Circuit recognized that to be eligible for any of the four safe harbor provisions, a service provider must first meet the threshold requirements set out in section 512(i). Specifically, a service provider such as CCBill or CWIE must have “adopted and reasonably implemented, and informed subscribers and account holders, of . . . a policy that provides for the termination in appropriate circumstances of subscribers and account holders . . . who are repeat infringers.” (17 U.S.C. § 512(i)(1)(A).)

The Ninth Circuit observed that the DMCA does not define “reasonably implemented,” but held that “a service provider ‘implements’ a policy if it has a working notification system, a procedure for dealing with DMCA – compliant notifications, and if it does not actively prevent copyright owners from collecting information needed to issue such notifications.” While the DMCA allows a service provider to implement a variety of procedures, a policy implementation is reasonable if under “appropriate circumstances” the service provider “terminates users who repeatedly or blatantly infringe copyright.”

In turning its attention to these factors, the Ninth Circuit addressed Perfect 10’s claim that CCBill and CWIE prevented the implementation of their policies by failing to track webmasters who repeatedly infringed. The Ninth Circuit disagreed and found that CCBill/CWIE had implemented a policy of tracking repeated infringers. The Court recognized that CCBill and CWIE posted a “DMCA Log” which attempted to identify those webmasters who were repeat infringers. The DMCA Log, although having some gaps, indicated the email address and/or name of those webmasters who routinely infringed. Therefore, there was no triable issue of fact that CCBill and CWIE implemented a repeat infringer policy.

As to the issue of reasonableness, the Ninth Circuit recognized that “[a] service provider reasonably implements its repeat infringer policy if it terminates users when ‘appropriate’.” The Ninth Circuit again recognized that the DMCA does not define when it is “appropriate” for service providers to act. The Court emphasized, however, that service providers do not need to “affirmatively police its users for evidence of repeat infringement.” This is premised on the fact that the DMCA provides that a service provider is not liable for monetary relief “if it does not know of infringement.” The Court also observed that the DMCA provides that a service provider is not liable “if it acts ‘expeditiously to remove, or disable access to, the material’ when it (1) has actual knowledge, (2) is aware of facts or circumstances from which infringing activity is apparent, or (3) has received notification of claimed infringement meeting the requirements of § 512(c)(3).”

The Ninth Circuit found that Perfect 10’s claimed notice of infringement did not give rise to a triable issue of fact since it did not substantially comply with the notice requirements of section 512(c)(3). The Ninth Circuit ruled that compliance is not “substantial” if the notice complies with only some of the requirements of § 512(c)(3)(A). The Court held that the DMCA requires “substantial compliance with all of section 512(c)(3)’s clauses, not just some of them.” The Court rejected Perfect 10’s claims that it had substantially complied with 512(c)(3) since it claimed that its notices were provided in a “combination of three sets of documents.” The Ninth Circuit recognized that each of these communications contained more than mere technical errors, rather, one or more of the required elements were entirely absent from the notices. The Ninth Circuit recognized that substantial compliance with section 512(c)(3) is necessary because of the drastic consequences of accusations of alleged infringement: i.e., a user could have content removed or may have his access terminated entirely. Since Perfect 10 did not provide effective notice, the Ninth Circuit held that actual knowledge of infringement could not be imputed to CCBill/CWIE based on Perfect 10’s communications.

In granting summary judgment, the District Court had held that notices of infringement sent to CCBill and CWIE by other, non-party copyright holders were not relevant to the issue of Perfect 10’s claims of copyright infringement. However, the Ninth Circuit disagreed and ruled that CCBill/CWIE’s actions toward copyright holders who were not parties to the litigation was “relevant in determining whether they reasonably implemented their repeat infringer policy.” The Ninth Circuit recognized that a “policy is unreasonable only if the service provider fails to respond when it had knowledge of an infringement.” Thus, the Ninth Circuit held that the District Court on remand must consider whether CCBill and/or CWIE “implemented its repeat infringer policy in an unreasonable manner with respect to any copyright holder other than Perfect 10.”

Finally, the Ninth Circuit held that a service provider “may lose immunity if it fails to take action with regard to infringing material when it is ‘aware of facts or circumstances [“red flags”] from which infringing activity is apparent.’” Perfect 10 argued that CCBill/CWIE were aware of a number of “red flags” since it provided service to various websites such as illegal.net and stolencelebritypics.com. The Ninth Circuit rejected this argument, however, ruling that there was nothing in these titles to put CCBill/CWIE on notice of apparent infringing activity since these “titillating” titles “may be an attempt to increase their salacious appeal rather than an admission that the photographs are actually illegal or stolen.”

Perfect 10 also argued that CCBill was not entitled to immunity because it interfered with “standard technical measures” by blocking Perfect 10’s access to CCBill-affiliated websites in order to prevent Perfect 10 from discovering whether those websites infringed on Perfect 10’s copyrights. The Ninth Circuit remanded to the District Court to determine “whether access to a website is a ‘standard technical measure’ and if so whether CCBill interfered with [Perfect 10’s] access.”

CCBill argued that, because it provides a hyperlink so that a user may access a client website after it processes that user’s credit card, it fell under the “information location tools” safe harbor of section 512(d). The Ninth Circuit found that even if the hyperlink provided by CCBill could be viewed as “information location tool,” the majority of CCBill’s activities fall outside of the safe harbor. The Ninth Circuit recognized that section 512(b) provided immunity only for the infringement “by reason of the provider referring or linking users to an online location containing infringing material or infringing activity.”

The Ninth Circuit’s opinion in Perfect 10 requires copyright holders to remain vigilant and observe strict compliance with the notice of infringement requirements in the DMCA. Otherwise, a service provider can claim that it did not have actual knowledge of the infringing activity because of the defective notice. A copyright holder then risk being thrown out of court for failing to comply with these notice requirements if a service provider can establish immunity under the “safe harbor” provisions of the DMCA.

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.