Legal Geek No. 90: How the Dr. Seuss/Star Trek mashup was Killed

Welcome back to Legal Geek. This week, we review a Kickstarter mashup book project involving Star Trek and Dr. Seuss, and whether it properly died on the Kickstarter vine thanks to intellectual property infringement allegations.

https://archive.org/details/LegalGeekEp90

A team of comics and science fiction writers teamed up under the company ComicMix LLC to launch a book project called "Oh The Places You'll Boldly Go," a book about Trekkie characters using Seuss-style rhymes and drawings. The Kickstarter campaign dropped sample rhymes like:

"You can get out of trouble, and that's knotty, because in a pinch you'll be beamed out by Scotty."

The book was in the process of raising nearly $30,000 on Kickstarter in the month of September, and predictably, that raised the hackles of one of the intellectual property owners being parodied. This time, it was the estate of Dr. Seuss, known as Dr. Seuss Enterprises, which objected to this book as a slavish copying of copyrighted works of the author and also as trademark infringement based on a likelihood of confusion with one of Seuss's best selling books, "Oh the Places You'll Go."

Paramount and CBS have not joined the case on behalf of Star Trek's intellectual property. As you'll recall, they are still in their own legal battle we've covered here with a crowdfunded fan film called Axanar.

The lawsuit filed in California did not slip through unnoticed, and powerful lobbying organizations like Popehat called for an attorney in the area to represent the creators of the book pro bono, AKA for free, to defend what many believe to be clear fair use under copyright law.

Fair use as a copyright infringement defense is a four factor balancing test, as we've covered before. Here, there are arguments cutting both ways on some of the factors. Seuss Enterprises believes that this work would undercut a part of the market for their own original works, while ComicMix does not see any harm to Seuss's marketplace. The purpose and character of the use is believed by Seuss Enterprises to be commercial and therefore disfavored, while ComicMix looks at this as a transformative parody work typically protected by fair use. As to the amount or substantiality of the portion of Seuss's work taken, Seuss Enterprises shows some highly similar drawing panels in the complaint, but ComicMix believes it has only used an oft-parodied style rather than lifting any particular story arcs from Seuss or a pre-existing Star Trek episode.

Being a self-proclaimed parody likely balances this test towards fair use instead of infringement, but the facts look close enough to make it an open question whether the fair use defense is available. What may be more damaging is the trademark claim, considering the identical goods of a book, and the highly similar names but for one added word. "Oh The Places You'll Go" has sold well as a graduation present and the like for many decades, and it may indeed be confusing to consumers whether this Trek parody comes from Seuss Enterprises or licensed by such.

The Bottom Line is, while it's admirable to see Popehat and other foundations try to help what looks like an awesome project from a fair use copyright perspective, there may be too many mistakes made here to save this Kickstarter project. Once again, merely approaching the parties for an inexpensive license could have potentially avoided a lot of legal bills, project delay, and frustration.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 89: When Copyright Licenses Break Bad

Welcome back to Legal Geek. This week, we review an interesting lawsuit for copyright infringement filed against another producer of a recent pop culture favorite TV show, this being Sony Pictures Entertainment and the show Breaking Bad.

https://archive.org/details/LegalGeekEp89


Although it has been three years since Breaking Bad aired new content, an artist from Mexico named Humberto Puentes Segura has in the past month just sued for copyright infringement of a logo he created and licensed to Sony for use in the TV show. The logo is the two chickens with sombreros which is the centerpiece of the Los Pollos Hermanos restaurant chain featured prominently in the middle seasons of the show.

You may ask, what grounds does the artist have to stand on if he licensed his work? That's a good question, but essentially the controversy boils down to the specifics of the license agreement signed.  Puentes Segura believes he licensed the artwork only as set dressing, props, and wardrobes in connection with production of the television show, but not for reproduction of the art on merchandise.

Of course, the wild success of Breaking Bad and especially the storylines centering on Gustavo Fring and his business front Los Pollos Hermanos have led to marketability of this fake product line and its associated logo. Sony is behind internet sales of things like coffee mugs and T-shirts with the double chicken logo, which makes sense given the show's critical acclaim and popularity. The artist claims this was beyond what he agreed to license, making these sales copyright infringement.

Interestingly, Puenta-Segura argues in his complaint that he was not aware of the infringement or the popularity until October 2015 thanks to living in Mexico. That may be hard to believe, but it potentially avoids a statute of limitations problem. He also registered the mark with the U.S. Copyright Office only in January of this year, so while he can sue Sony now thanks to the registration, he is not entitled to statutory damages that come as an option with early copyright registration before infringement occurs.

That means the undisclosed damages the artist will pursue will need to be proven actual money loss damages. Even if there's merit to the claim based on how the license was drafted, the potential risk to Sony will be small thanks to no risk of the sometimes very high thousands of dollars which come into play with statutory damages.

The Bottom Line is, if you are a creative licensing works of art, music, or the like from third parties, make certain the rights obtained cover all ancillary or secondary uses you may want for the property. Otherwise you risk the revenge of a disgruntled artist when you make the big bucks on your product or concept.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 88: Lucasfilm sues independent Jedi Academy

Welcome back to Legal Geek. This week, we review a trademark infringement lawsuit filed by Lucasfilm against an independent California man running a Jedi training academy.

https://archive.org/details/LegalGeekEp88

Obviously Star Wars is back in the spotlight again, with movies once again being brought out thanks to Disney, and the Disney parks and cruise ships fully incorporating the droids and all the rest for their guests. Indeed, most of us are likely thrilled at the prospect of seeing one of the best villains in movie history Darth Vader return in the upcoming Rogue One.

However, fandom does have its limits thanks to things like intellectual property. One California fan enthusiast Michael Brown may have gone a bit too far by opening a business working under the names New York Jedi and Lightsaber Academy. Yes, this business actually offers classes to teach you how to fight with a lightsaber, just like the Jedi of the Star Wars universe. If you complete the class, you even receive a fancy certificate with a class logo similar in appearance to the Jedi Order seal of the Star Wars films.

And that, as it turns out, is not copacetic with the owners of the various Star Wars trademarks. Lucasfilm filed a complaint this month against Brown alleging trademark infringement, cybersquatting, and unfair competition among other things. How will this play out, and why did Brown get singled out over others selling fan art and the like at conventions?

As to the merits of the lawsuit, Lucasfilm and Disney own a number of federal trademark registration on various Star Wars marks, including Jedi Training Academy, Jedi, Lightsaber, and even May the 4th Be With You. Yes, I mean the pun about a date in May, not the force line. Regardless, these registrations on the marks which this business is now using are covering goods and services including clothing and entertainment services. This is likely broad enough to cover the defendant's activities, as he apparently sells shirts and the classes could be broadly considered entertainment services.

Even if Disney does not offer the same type of training, the trademarks appear to still be broad enough in the abstract to cover this activity. As such, Lucasfilm appears to have a favorable chance to win this case. Lucasfilm won a similar case against a software company using a Jedi mark in 2010 for enabling controlling computers with their minds, and I expect a similar result and likely settlement here.

How did Brown's business get singled out for a lawsuit? For one, the business is apparently very popular and successful, which means money is effectively being diverted from Lucasfilm to Brown based on the ideas and names originally conceived for Star Wars. Likewise, he has asked for a license to use these marks numerous times and Lucasfilm has denied these requests. Thus, he knew he was likely going too far and refused to avoid Lucasfilm's rights even after they turned down requests for a license.

The Bottom Line is, Brown should have likely changed the names to something similar that gets the point across without using names and terms covered by the trademarks. That may be the end result here anyway. This is another example of why fans and other businesses need to be extra careful when using names in commerce which may be owned by other parties, as doing so can tank a successful business if a lawsuit happens like this one. And for goodness sake, always always always respect the rights of or design around an IP owner who refuses a license.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 87: Cards Against Humanity turns against counterfeiters

Welcome back to Legal Geek. This week, we look at a recent lawsuit filed by the makers of the Cards Against Humanity game and the incorrect original news stories about the conflict.

https://archive.org/details/LegalGeekEp87


News reports broke a couple weeks ago that the company that makes Cards Against Humanity, the party game for terrible people that has been a great selling sensation since 2009, sued a competitor in Missouri federal court for copyright and trademark infringement. The original news stories identified the non-authorized parody expansions sold under the name Crabs Adjust Humidity as the defendant, but it later turned out to be an entirely different company.

The real defendant is Skkye Enterprises, a business in Missouri which is allegedly selling knockoff counterfeit versions of the regular Cards Against Humanity game. This makes more sense than suing the makers of Crabs Adjust Humidity, although it makes the card game case a little less interesting that it would have been otherwise.

Crabs Adjust Humidity came up with their own cards and use their own type font, art styles, and collection of words, so the artistic, copyrightable protectable features covered by CAH's copyrights likely do not apply to those cards. But a pure copy of the same cards and fonts and styles like in these alleged counterfeits from Skkye Enterprises would more clearly be copyright infringement.

On the trademark side, Crabs Adjust Humidity is a clever change because it uses the same acronym initials as the CAH game while being substantially different. That, plus the different packaging with a lot of red coloring along with the traditional game's black and while coloring clearly distinguishes this product in the minds of consumers from CAH. However, the alleged counterfeits of Skkye Enterprises use the exact same packaging and product name in order to compete directly with genuine copies of Cards Against Humanity.

Thus, while CAH may have a good case against these counterfeiters, a similar lawsuit filed against the parody Crabs Adjust Humidity would not likely fare so well. Perhaps it's a good thing those initial news stories were wrong about the defendant in this case!

The Bottom Line is, when competing with or building on popular products or games, you need to be extra careful to avoid IP infringement. Even defending against such a lawsuit can make your business efforts not worth the fuss, if you do it wrong.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 86: The Walking Dead and Business Self-Dealings

Welcome back to Legal Geek. This week, we review the lawsuit that TV network AMC is facing from an original showrunner of The Walking Dead.

https://archive.org/details/LegalGeekEp86

But before we dive into the fate of Negan and Lucille's wrath, I wanted to let this audience know that if you like this segment, I appeared on a recent episode of The Geek All Stars podcast with Dan the board game man on TMS PM. In the second half of that show, we discuss some interesting cases affecting board game companies and designers in longer form than I can here, so check it out if you are nerds like us.

That Geek All Stars discussion includes the recent Yarrington-Schlashinger dispute over a business deal gone bad in the board game industry, allegedly due to one business partner using his companies to self-deal with one another and take all the profits to himself. Which is interesting because it is very similar to this case about...[TWD theme].

Indeed, the former showrunner of The Walking Dead alleges that at least $280 million dollars has been fleeced from him largely as a result of self-dealing among AMC affiliates. To this end, he argues to a New York court that one affiliate of AMC produced the show and then licensed it at cut rates to another AMC affiliate, which avoids having the profits from the licensing which he shares in go to him, while all the revenue generated from the popular show stays with AMC and its affiliate companies. AMC obviously disagrees with this position.

It will be some time before we see this play out in front of a jury, as the New York judge hearing this case apparently does not have any jury trial openings even available until 2018. However, just like the zombie walkers in the show, AMC will have to dodge this threat in order to keep the high amount of profits it has made off this ongoing show and property.

The Bottom Line is, a lesson that is always learned from business deals gone bad is to get the proper protections in writing when making contracts setting up companies and business deals. If a minimum license fee or some other oversight or protection were built into the deal for producing and distributing The Walking Dead, then this dispute may never have seen the light of day, let alone waste time and money in court. Great foresight is always key in doing business and making deals.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 85: Activision Blizzard wins some and loses some in Patent Law

Welcome back to Legal Geek. This week, we review some recent patent cases for one of our favorite game developers Activision Blizzard to see how the Warcraft is going in the patent world for them.

https://archive.org/details/LegalGeekEp85


At the beginning of this month, two decisions came down from judges in patent disputes involving Activision Blizzard.

In the first case, Activision is being sued along with other defendants for allegedly infringing 6 patents from a company called Acceleration Bay. The patents cover technology that interacts with broadcast channels to allow players to connect and communicate in certain ways for multiplayer gaming experiences.

Acceleration Bay initially filed their lawsuit in Delaware, where Activision and others are incorporated. During a break in that lawsuit given by the Delaware court to fix defects in the initial Complaint, Activision filed what is called a Declaratory Judgment action in California trying to move the dispute over the patents and their validity to their home jurisdiction courts. However, the California judge dismissed the case because Activision's incorporation in Delaware makes that a valid place for the company to have to defend against this lawsuit. In the words of the court, Activision cannot have its cake by incorporating there and eat it too by forcing litigation against them out of Delaware to a more convenient home jurisdiction of California.

These battles over where a case is litigated are typical, and it may not make a difference depending on how the merits of this patent infringement claim come out in the future. Still, it's a loss for Activision.

Better news came in the second case, where Blizzard is being sued with some other defendants for infringing a patent owned by Parallel Networks for game downloader software. Battle.net was specifically in the crosshairs as a possible infringement of patent claims covering a downloader program that reassigns which blocks of data the downloader receives based on demand.

However, this case did not even make it to a jury, as the Delaware judge in this case decided on summary judgment that no reasonable juror could find that Battle.net performs the claimed method of operation. Basically, the reallocation of blocks of data in the Parallel Networks patent cannot be equated with reordering how content is downloaded based on customer demand, which is how Battle.net works when multiple patches are available, according to the judge. It's a highly technical distinction, but it was sufficient to overcome this infringement case, at least until appeal.

The Bottom Line is, large companies like Activision Blizzard are inevitably tied up in IP litigation disputes at all times, and you inevitably win some and lose some in those battles. Even through these two decisions went opposite ways, a loss in a jurisdiction battle is much less important than the dismissal of the Parallel Networks infringement case. So, all in all, September was a good month for Activision Blizzard in the legal landscape.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 84: Print Cartridges and Controlling the Re-use of Commercial Goods

Welcome back to Legal Geek. This week, we take a look at the printer industry and the many ways it is battling for the right to control re-use of commercial goods, specifically the print cartridges which often must be replaced or refilled with more ink.

https://archive.org/details/LegalGeekEp84

A news story broke last week that HP used a firmware software update on their popular printer lines to enact a time bomb for remanufactured unauthorized cartridges. In short, as of September 13, the HP printers put up an error message which prevented further use of any unauthorized cartridge. In this regard, HP has taken a step beyond the typical of just displaying a warning by actually preventing use of remanufactured cartridges that do not come from HP itself.

Granted, cartridge remanufacturers can reprogram their control chips to avoid this error, but that will take time, and in the meantime, HP will hold their printer customers hostage to buying cartridges from them. It's a strong-handed play to protect HP's most lucrative revenue stream, and one which will probably find some consumer pushback despite being effective.

However, the HP approach is just one small part of a larger battle in this industry between these printer companies and their competitors in the cartridge industry. The most notable battle is in the courts is potentially heading to the Supreme Court between Lexmark and Impression Products, a company that recycles and re-sells print cartridges.

Here are the important facts: Lexmark sells regular cartridges at full prices with no restrictions on re-sale or re-use, and also "return program" cartridges at reduced prices in return for an agreement for the user to return the cartridges to Lexmark when empty. Impression buys used genuine cartridges that Lexmark sold to foreign customers and then refilled them for re-sale in the U.S.. Lexmark does not like this, so their legal team filed for patent infringement against Impression. These facts have led to some interesting patent law arguments.

First, Impression has argued that the original sale of the cartridges by Lexmark in foreign countries invokes the patent exhaustion doctrine and thus prevents Lexmark from preventing re-sale of those cartridges in the U.S. because they already benefitted from the first sale. This type of argument won a Supreme Court copyright case a couple years ago in the context of textbook re-sales, but it is contrary to prior patent case law. The Federal Circuit Court of Appeals declined to overrule that precedent, which means Lexmark can pursue Impression for patent infringement despite having sold these cartridges abroad already.

Second, Impression has argued that the sale of a patented cartridge with restrictions on re-sale also invokes the patent exhaustion doctrine. However, Impression is trying to overturn 25-year old patent case law on this point designed to protect the sale of licenses to use instead of complete sales, and the Federal Circuit also declined to overrule those old cases. Thus, Lexmark is not subject to patent exhaustion just because it puts restrictions on some of its "return program" sales of patented cartridges.

The differences between patent exhaustion law and copyright law may be enough for the Supreme Court to jump in and give the final word on this issue, even though Lexmark is winning for now.

The Bottom Line is, when companies need to protect a primary revenue stream like print cartridges for printer manufacturers, they will go to great legal and technical lengths to save that future money. While this may put product manufacturers and patent holders at odds with their consumers in some sense, consumers can help regulate any unfair business practices by doing business with those who follow more fair practices. That's the beauty of market competition, and we will see if it works in the case of HP, Lexmark, and this industry over time.

(Post-notes, not for audio) - Thanks to Brian Tobey and others on Twitter who have recommended the Lexmark case for this segment over the past few months. A shout out to code-wow on the Current Geek subreddit as well for bringing the HP news to our attention. 

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy