Welcome back to Legal Geek. This week, we take a look at an appeal to the Supreme Court regarding whether the Batmobile is protectable by copyright, and the interesting bigger legal question this case poses.
https://archive.org/details/LegalGeekEp62
A few months ago, we noted that when Warner Bros. lost copyright in the Happy Birthday song, a small victory was won the same week when the company's subsidiary DC Comics won a Ninth Circuit Court of Appeals decision upholding a copyright in the Batmobile. DC Comics is fighting in court against a mechanic who was making and selling Bamtobile replicas for customers. That decision has now been appealed this week to the Supreme Court to review several questions regarding copyright law.
The Supreme Court grants certiorari in only a few cases a year despite receiving hundreds of appeal requests like this one, so the first question is whether the Court will take this case up for review. Some factors bend against such review, including there being no split among the different Circuit Court of Appeals that has been shown by the mechanic. The mechanic has argued that automobiles have been expressly excluded from what can be covered by copyright, but he cannot point to any decisions by other federal court supporting this. When there's no split or inconsistent application of law, the Supreme Court hesitates to get involved unless there's an important legal question posed for clarification or resolution by the highest court in the land.
Although not listed as one of the three questions directly posed to the Supreme Court for the appeal, the mechanic's attorneys implied that using copyright to protect automobile designs would unfairly deny what should be covered by design patents for only 14 years from ever falling into the public domain. Remember that copyrights last 95 years for companies and life plus 70 years for individuals. So the appeal document argues that the Ninth Circuit decision upholding copyright in the Batmobile would also result in Ford and other car companies covering their car designs for 95 years instead of the 14 years they are entitled to under patent law.
That's really part of a larger question that's started to gain more attention recently in IP law as design patents with limited terms overlap in places with trade dress protection or copyright protection, both of which provide longer or potentially perpetual protection. Should innovators and creators be limited to only one bite at the intellectual property apple, or can protection be extended by using the different types of IP protection? There's interesting policy arguments supporting both sides, and it's precisely the type of broad-sweeping important question that could lure the Supreme Court to take the case and opine on the bigger questions facing this part of the law.
Plus, there's the entertainment value of taking on a case about fancy movie cars like the Batmobile, as the appeal document includes a ton of pictures of different iterations of this vehicle. The Court decided the Spiderman web shooter case last term and had a bit of fun while doing it, so maybe it is DC's turn to see some legal spotlight for similar reasons.
Bottom Line: Even though the odds are strongly against the Supreme Court debating the copyright merits of the Batmobile, there's a very interesting big legal question to answer if they do take on the challenge. Let's hope Spiderman gets replaced with Batman on this year's Supreme Court docket.
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Feedback can be sent to me with future segment suggestions on Twitter @BuckeyeFitzy.
Thursday, January 28, 2016
Wednesday, January 20, 2016
Legal Geek No. 61: Will Sony wreck Youtubers with Let's Play Trademark?
Welcome back to Legal Geek. This week, we investigate the Sony trademark application for Let's Play, and whether Sony will be able to obtain and enforce such a trademark against Youtube content creators who have made Let's Play videos.
https://archive.org/details/LegalGeekEp61
Sony filed a trademark application in late October for Let's Play, specifically for services described as "Electronic transmission and streaming of video games and other audio or visual materials via global and local computer networks." A first Office Action containing a rejection from the Trademark Office was received at the end of December, which is when this application hit the public eye and news agencies. There are a number of grounds on which registration of a trademark can be refused, but instead of relying on the prior use of Let's Play by many Youtube video creators, the Trademark Examining Attorney went a different way.
Instead, the rejection is based on a likelihood of confusion with an earlier registered trademark for Let'z Play (with a Z), which was registered in 2013 by a small Georgia company. This is typical practice for Examining Attorneys because it is often easier for them to conduct searches of their internal systems to find conflicting similar marks than look for external evidence like the widespread use in Youtube videos. However, such rejections can often be overcome with arguments or minor amendments to the application.
That may not be an easy option for Sony here, as the prior registration is for very similar goods and services. The description of those services is highly similar to Sony's, specifically, "Entertainment services, namely to provide online and offline opportunities for video game enthusiasts to meet and participate in live video game tournaments and on-demand console gaming." There's enough overlap for the Trademark Office to deem these covering substantially the same services, leading to an alleged likelihood of confusion for consumers that would prevent the latter registration by Sony.
Speaking from experience in prosecuting my own client's trademarks, there's a potential important difference in Sony providing content to just be watched and the Georgia company letting consumers actively participate and play, and that could open a door for argument or amendment to the description of services that will allow this trademark application to be allowed. This refusal is not final and Sony will likely respond, and even in a close case like this, there's perhaps a 50/50 chance this rejection is overcome. The application could then be allowed.
But that won't end the process, as an allowed trademark is published for opposition before final registration, and the public has 30 days to file oppositions. Given the now-public nature and seeming outcry over this application, there's little doubt one or more oppositions would be filed based on Let's Play being generic or merely descriptive in this field, and that could very likely be a hurdle too high for Sony to clear. So even if the Examining Attorney at the Trademark Office doesn't do the legwork to find the online evidence to reject this application, it will find the opposition process difficult.
What's interesting is that Youtube Let's Play videos were around a lot in 2013 as well when the Georgia company registered its trademark, and it never faced any Office Action refusal or opposition. So hypothetically, Sony could buy out this company's rights and then try to enforce those, even if their own application submarines. Of course, such rights could still arguably be invalidated as being a generic term if litigation ever came of this.
Bottom Line: Sony may make it past the current refusal but it seems unlikely that a final registered trademark will result in the end. Nevertheless, even if they obtain some rights by their own application or by buying someone else's rights, Sony likely would just use this as a positive marketing tool rather than an offensive weapon against Youtube content creators, as such moves would risk losing the trademark in litigation challenges while also leading to a likely massive negative PR hit. And Sony appears to be savvy enough to understand that in trying to procure such intellectual property in the first place.
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Feedback can be sent to me with future segment suggestions on Twitter @BuckeyeFitzy.
https://archive.org/details/LegalGeekEp61
Sony filed a trademark application in late October for Let's Play, specifically for services described as "Electronic transmission and streaming of video games and other audio or visual materials via global and local computer networks." A first Office Action containing a rejection from the Trademark Office was received at the end of December, which is when this application hit the public eye and news agencies. There are a number of grounds on which registration of a trademark can be refused, but instead of relying on the prior use of Let's Play by many Youtube video creators, the Trademark Examining Attorney went a different way.
Instead, the rejection is based on a likelihood of confusion with an earlier registered trademark for Let'z Play (with a Z), which was registered in 2013 by a small Georgia company. This is typical practice for Examining Attorneys because it is often easier for them to conduct searches of their internal systems to find conflicting similar marks than look for external evidence like the widespread use in Youtube videos. However, such rejections can often be overcome with arguments or minor amendments to the application.
That may not be an easy option for Sony here, as the prior registration is for very similar goods and services. The description of those services is highly similar to Sony's, specifically, "Entertainment services, namely to provide online and offline opportunities for video game enthusiasts to meet and participate in live video game tournaments and on-demand console gaming." There's enough overlap for the Trademark Office to deem these covering substantially the same services, leading to an alleged likelihood of confusion for consumers that would prevent the latter registration by Sony.
Speaking from experience in prosecuting my own client's trademarks, there's a potential important difference in Sony providing content to just be watched and the Georgia company letting consumers actively participate and play, and that could open a door for argument or amendment to the description of services that will allow this trademark application to be allowed. This refusal is not final and Sony will likely respond, and even in a close case like this, there's perhaps a 50/50 chance this rejection is overcome. The application could then be allowed.
But that won't end the process, as an allowed trademark is published for opposition before final registration, and the public has 30 days to file oppositions. Given the now-public nature and seeming outcry over this application, there's little doubt one or more oppositions would be filed based on Let's Play being generic or merely descriptive in this field, and that could very likely be a hurdle too high for Sony to clear. So even if the Examining Attorney at the Trademark Office doesn't do the legwork to find the online evidence to reject this application, it will find the opposition process difficult.
What's interesting is that Youtube Let's Play videos were around a lot in 2013 as well when the Georgia company registered its trademark, and it never faced any Office Action refusal or opposition. So hypothetically, Sony could buy out this company's rights and then try to enforce those, even if their own application submarines. Of course, such rights could still arguably be invalidated as being a generic term if litigation ever came of this.
Bottom Line: Sony may make it past the current refusal but it seems unlikely that a final registered trademark will result in the end. Nevertheless, even if they obtain some rights by their own application or by buying someone else's rights, Sony likely would just use this as a positive marketing tool rather than an offensive weapon against Youtube content creators, as such moves would risk losing the trademark in litigation challenges while also leading to a likely massive negative PR hit. And Sony appears to be savvy enough to understand that in trying to procure such intellectual property in the first place.
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Feedback can be sent to me with future segment suggestions on Twitter @BuckeyeFitzy.
Monday, January 11, 2016
Legal Geek No. 60: Breakdown of Axanar Copyright Suit
Welcome back to Legal Geek. This week, we take a look at the reasons for the copyright lawsuit against the Star Trek fan film Axanar and provide analysis of the merits of the claims for both sides. For those not familiar with my Legal Geek segments, if you enjoy hearing rapid breakdowns of trending topics where the nerd world meets the legal landscape, check out my segments like this every week on the Current Geek show by Frogpants. Now, let's dive in,...
https://archive.org/details/LegalGeekEp60
Paramount and CBS, who jointly own IP rights to Star Trek, sued Axanar Productions and Alec Peters for copyright infringement. Why did this fan film production get singled out over others like Red Shirt Diaries and Star Trek Renegades?
It probably comes down to two factors: money, and the upcoming active use of the IP by both companies: Paramount with Star Trek Beyond, and CBS with the unnamed 2017 TV series. Axanar has raised $1.3 million, which is significantly larger than what other similar film projects have produced. For reference, Star Trek Renegades is the only thing in the ballpark money-wise, having recently Kickstarted for $400,000, but there's a ton of original Star Trek actors reprising roles in that production which may favor against stopping it with a lawsuit. That being said, I wouldn't be comfortable as Star Trek Renegades given what is now happening to Axanar, as it always comes down to money in the legal world. Otherwise, there's no reason to waste valuable resources on litigation.
But how will that all come out? Not well for Axanar, in my view.
First, Axanar is unabashedly infringing some Star Trek copyrights, including several characters like Garth of Izar and General Chang, the starship Enterprise, and several Klingon ships. That's enough to make a few actionable copyright claims, with damages of potentially $150,000 per creative item infringed.
Peters first noted that when his team met with CBS prior to production, the network would not offer any specific guidelines for what would make an acceptable fan film project. CBS apparently indicated he couldn't make money off the project, and Peters argues that he is not making money off the project so it has to be allowed. Copyright infringement and fair use is not such an easy equation, unfortunately. Merely making money or not does little to decide the issue.
Peters also argues that fan films like Axanar are fair use permissible despite the copyrights. Fair use is a four factor balancing test and it is possibly the most complex test in intellectual property law.
One factor is the purpose and character of the use, and fan films are more like disfavored commercial products than favored works like parody and commentary. Another factor is the nature of the copyrighted work, and specific film characters and specific starships in a fictional work is a highly creative work rather than less creative and less protected things like collections of facts. A third factor is the amount and substantiality of the portion taken, and with respect to the characters it's an absolute copy of all of the creative expressions and features of the character. The final factor is the effect of the use on the potential market for the original, and while Axanar argues this improves the market for Star Trek, it's a gray area when the original is also coming back on the market.
So all told, the first three factors strongly favor Paramount and CBS, and the final factor cuts down the middle. Even though Fair Use can be hard to predict, this seems like a rare clear-cut case where Fair Use does not apply.
The Bottom Line: Fan films are usually fun for consumers, but creators have rights that must be respected, and without the protections of Fair Use, Axanar is likely doomed unless a settlement on a license can be negotiated. If CBS and Paramount were willing to bring the lawsuit, it's not likely to make an easy settlement.
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Feedback can be sent to me with future segment suggestions on Twitter @BuckeyeFitzy.
Wednesday, January 6, 2016
Legal Geek No. 59: Big Win for Redskins and "Offensive" Trademarks
Welcome back to Legal Geek. This week, we put our sports nerd hat on, in the spirit of the NFL playoffs that start this week. The Washington Redskins won what might be the biggest victory for that organization in years. Ironically, it was a lawsuit the football organization was not even a party to!
https://archive.org/details/LegalGeekEp59
The Washington Redskins made headlines earlier in 2014 and 2015 when the U.S. Trademark Trial and Appeal Board revoked their federal trademark registrations on the basis of Section 2(a) of the Lanham Act. That statute prohibits several types of marks from registration, including those comprising immoral, deceptive, or scandalous material, as well as those that disparage or bring into contempt persons, institutions, beliefs, or national symbols. The TTAB specifically applied the disparaging part of this statute to take away the benefits of having a federal trademark from the Redskins football organization, because the team name and trademark is allegedly disparaging of Native Americans.
The Redskins and owner Daniel Snyder remained defiant, refusing to change the team name even though many college football teams have backed off on similar nicknames or mascots. Even in DC, the professional basketball team changed names from the Bullets to the Wizards because of negative connotations with bullets and assassinations. The Redskins decided to forge on even without the federal trademark rights behind them, but the winds of change blew in their favor right before Christmas.
The Federal Circuit Court of Appeals decided with a full panel of its judges in the case In re Tam that the federal government's ban on disparaging trademark registrations under Section 2(a) of the Lanham Act is unconstitutional because it violates the First Amendment freedom of speech. A band called The Slants challenged a refusal of a federal trademark registration based on this same disparaging rule, in this case applied as offensive to Asian-Americans.
But the Federal Circuit decided that even though rejected marks like The Slants convey hurtful speech, the First Amendment protects even hurtful speech. This changes long-standing precedent at the court that banning disparaging marks was fine for the federal government because denying federal registration does not stop trademark owners from actually using the mark, it just makes the marks harder to enforce and defend. The new opinion argues that the First Amendment has never been limited to situations where the government just outright bars speech. This is admittedly a gray area in Freedom of Speech law.
The Redskins are presenting similar arguments in appeals of the revocation of their own trademarks in the Fourth Circuit, a different federal court of appeals. It will be interesting to see if this different court follows this new decision of the Federal Circuit to force the U.S. Patent and Trademark Office to reinstate the federal registrations of Redskins.
Regardless of the outcome, the inconsistent application of the First Amendment to this portion of the Lanham Act in different circuit court jurisdictions and the recent switch in the application of the First Amendment may strongly encourage the Supreme Court to take this appeal to decide this issue uniformly for the country. That would potentially be a bigger deal for the Redskins organization than even reaching another Super Bowl.
The Bottom Line is, the Redskins might be fighting on the field against the Packers and other teams for playoff glory, but the real fight is in the legal arena where the Redskins have a chance to prevail once again thanks to The Slants.
Until next time, enjoy the playoffs and let's hope the Supreme Court takes on this fun First Amendment case highly relevant in the sports world.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
https://archive.org/details/LegalGeekEp59
The Washington Redskins made headlines earlier in 2014 and 2015 when the U.S. Trademark Trial and Appeal Board revoked their federal trademark registrations on the basis of Section 2(a) of the Lanham Act. That statute prohibits several types of marks from registration, including those comprising immoral, deceptive, or scandalous material, as well as those that disparage or bring into contempt persons, institutions, beliefs, or national symbols. The TTAB specifically applied the disparaging part of this statute to take away the benefits of having a federal trademark from the Redskins football organization, because the team name and trademark is allegedly disparaging of Native Americans.
The Redskins and owner Daniel Snyder remained defiant, refusing to change the team name even though many college football teams have backed off on similar nicknames or mascots. Even in DC, the professional basketball team changed names from the Bullets to the Wizards because of negative connotations with bullets and assassinations. The Redskins decided to forge on even without the federal trademark rights behind them, but the winds of change blew in their favor right before Christmas.
The Federal Circuit Court of Appeals decided with a full panel of its judges in the case In re Tam that the federal government's ban on disparaging trademark registrations under Section 2(a) of the Lanham Act is unconstitutional because it violates the First Amendment freedom of speech. A band called The Slants challenged a refusal of a federal trademark registration based on this same disparaging rule, in this case applied as offensive to Asian-Americans.
But the Federal Circuit decided that even though rejected marks like The Slants convey hurtful speech, the First Amendment protects even hurtful speech. This changes long-standing precedent at the court that banning disparaging marks was fine for the federal government because denying federal registration does not stop trademark owners from actually using the mark, it just makes the marks harder to enforce and defend. The new opinion argues that the First Amendment has never been limited to situations where the government just outright bars speech. This is admittedly a gray area in Freedom of Speech law.
The Redskins are presenting similar arguments in appeals of the revocation of their own trademarks in the Fourth Circuit, a different federal court of appeals. It will be interesting to see if this different court follows this new decision of the Federal Circuit to force the U.S. Patent and Trademark Office to reinstate the federal registrations of Redskins.
Regardless of the outcome, the inconsistent application of the First Amendment to this portion of the Lanham Act in different circuit court jurisdictions and the recent switch in the application of the First Amendment may strongly encourage the Supreme Court to take this appeal to decide this issue uniformly for the country. That would potentially be a bigger deal for the Redskins organization than even reaching another Super Bowl.
The Bottom Line is, the Redskins might be fighting on the field against the Packers and other teams for playoff glory, but the real fight is in the legal arena where the Redskins have a chance to prevail once again thanks to The Slants.
Until next time, enjoy the playoffs and let's hope the Supreme Court takes on this fun First Amendment case highly relevant in the sports world.
----------------------------------
Do you have a question? Send it in!
Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
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