Legal Geek No. 36: Katy Perry Claims IP Rights in "Left Shark" (of SB Halftime)

Welcome back to Legal Geek. This week, based on a listener request, we take a look at another interesting story related to the Super Bowl, this being Katy Perry trying to enforce intellectual property rights in the Left Shark of the halftime show.

https://archive.org/details/LegalGeekEp36

Katy Perry provided a number of nifty visuals and performances during her multi-song halftime show, but the one that transcended the night and turned into the latest internet meme was her performance of the song Teenage Dreams, where dancing beach balls, sharks, and trees surrounded her on stage. The shark dancing on the left side of Perry was hilariously out of choreography and sync compared to the right shark and the rest of the dancers. That led to an explosion of Left Shark parodies and commentary online (and even a snarky ESPN SportsCenter advertisement about the performance).

Of course, this also led to people trying to profit off this sure-to-be-short-lived sensation. One of these people was Fernando Sosa, who started selling sculpted figurines of the left shark on his website Political Sculptor.

Katy Perry put her best attorneys on the case, and they first sent a Cease and Desist letter to Sosa based on an alleged copyright claim. This claim looked good enough to cause the website host to comply with the Cease and Desist. However, when this story hit the news, legal experts weighed in and confirmed that the Left Shark costume likely was not copyrightable subject matter.

Costumes and other garments are useful items not typically subject to copyright except for design elements that are separable physically or conceptually from the garment and having originality beyond just contributing to the costume's intended appearance. This rule about costumes and separability was confirmed in the 2014 Compendium of Copyright Office Practices, the same document that explained why monkeys and god-like deities could not obtain copyright at the U.S. Copyright Office.

The Left Shark costume is a full body costume shaped like a shark with fins, eyes, gills, and teeth, all of which appear to be integrated elements not physically separable or conceptually original beyond the use in appearing like a shark. Thus, a copyright claim would likely fail, whether at the copyright office or in court. Katy Perry's attorneys then tried to claim the costume was based on several sketches which Sosa infringes, but this is easily avoided because Sosa never saw the sketches and is not copying anything other than the costume in the halftime show.

That led Katy Perry's attorneys to try something else, specifically filing trademark applications on Left Shark and Right Shark among other shark-related marks. This may just be a tactic to bully small shops and sellers like Sosa out of the market based on the slim potential these applications become enforceable IP rights. But the likelihood that these trademarks will be registered seems slim, as the Left Shark and Right Shark terms came out of the internet meme rather than Perry herself. Thus, she will have trouble proving actual ownership in these marks, let alone that they actually serve the purpose of trademarks, which is to identify an origin of goods and services.

The Bottom Line: Katy Perry and her legal team can't be faulted for trying to protect some profitable moments of fame stemming from her memorable halftime performance, but the claims to IP rights are pretty clearly flawed. If she wants to sell memorabilia and figurines about Left Shark, she will have to just enter the free market and compete with others. Perry will be fine, because after all...

"I kissed a girl, and I liked it..."

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Legal Geek No. 35: Trademarking Sports Slogans like "The 12th Man"

Welcome back to Legal Geek. This week, we take a look at one of the most prominent sports slogans in use today and the interesting legal wrangling going on behind the scenes about use of the slogan.

https://archive.org/details/LegalGeekEp35

The 12th Man is a slogan used primarily with football teams to refer to the fans backing the team in the bleachers. It is particularly associated with the Seattle Seahawks, who embrace the title so much that fans wave flags with the number 12 on it. With Seattle playing in the most recent two Super Bowls, some may just assume this prominent slogan is a Seattle based thing.

However, The 12th Man is actually registered as a trademark by a completely different football program, and Seattle has had to negotiate just to maintain the rights to allow its use! Even sports fandom cannot escape the craziness of IP law.

The actual owner of the trademark on The 12th Man is Texas A&M University, and the story behind this slogan is fantastic. In short, a 1922 game between the Aggies and Centre College was so riddled with injuries that A&M had zero reserve players left to put in the game if another player got hurt. So the coach recruited a young man from the stands and had him suit up just in case another body was needed. Even though that 12th man never had to go in the game, the story became legend in Texas and the Aggie fans adopted the moniker The 12th Man.

After using the mark for many decades, Texas A&M began applying for and procuring the trademarks in the 1980's and 1990's. A&M has then sent a number of cease and desist letters to other professional and collegiate football teams using the trademark. When Seattle ramped up marketing efforts behind this slogan in 2005, A&M sued the Seahawks and the litigation ended up in settlement and a license agreement.

Under the license, the Seahawks can use any rendition of the number 12 on flags, shirts, and other merchandise (and they do, as evidenced by the iconic flag above), but this merchandise must remain distinguished from the full 12th Man mark. That's why the iconic flag has only the number 12 on it.

This license is expected to end in 2016, which means either Seattle will find alternative 12 brands of their own to market to fans or renegotiate the license and pay Texas A&M. It will be interesting to see what the Seahawks ownership group chooses to do, although it is notable that the company owning the Seahawks various IP has pending trademark applications on 12's, We are 12, and The 12's, all of which are apparently used pretty commonly already by Seattle fans. Not that there's anything Borg like about "We are 12," but I digress.

The Bottom Line: the passion of sports fans will not be abated by little things like trademark lawsuits, but it is interesting to see programs do battle in court over something seemingly so silly as what moniker the fans choose to use. Seattle fans will continue to enjoy the spirit of the 12th Man moniker, and if their team would just learn to run the ball on the 1 yard line, everything would be great.

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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. 34: IP for Food Recipes?

Welcome back to Legal Geek. This week, we take a look at an interesting question that walked into my real life office this week, just like the interesting characters that walk into Saul Goodman's office.

https://archive.org/details/LegalGeekEp34

One of the recurring "great ideas" that many people seem to come up with are new recipes for food items. Indeed, just this week a potential client asked about patenting a new food recipe, and the inquiry is more common than you might think. The most memorable of these interactions since I started practicing law was with a man who believed he invented the cheeseburger taco 5 years ago, and a quick Google image search quickly ended that notion.

But are food recipes protectable with patents or any other IP?

The general answer on the patent side usually ends up being no, but not because food recipes are disqualified from patent protection. On the contrary, recipes can be patented if novelty and non-obviousness over the known prior art in the food preparation field can be shown. The problem is proving some sort of unique peculiarity or counter-intuitive feature that would make a food recipe a non-obvious improvement over what is already known. It's usually an incredibly difficult hurdle to overcome for this type of invention.

Trademarks cover business names and product names, so recipes do not really come under the scope of that type of IP. While trade secrets can be used to protect recipes like the famous Coca Cola secret recipe, this is not the type of protection most food connoisseurs are interested in, especially if public recognition or exclusivity is desired

That leaves copyrights, which have long been the recommended path for creators who just want to have some protection and/or a certificate on the wall. However, copyright protection requires originality in the creative expression, which means underlying facts are not protectable even if the creative organization or way the facts are expressed are protectable.

Last week a Cleveland federal court made some headlines by confirming that food recipes in a recipe book cannot be copyrighted so as to block other competitors from using the same set of ingredients to make a food product. This decision is in line with many other court decisions over the years which have confirmed basic lists of ingredients and functional directions for combining them are not an original creative expression entitled to copyright. So copyright won't work either.

The bottom line: if you come up with a great food recipe, the only likely way to protect it with public IP would be by patent, and that would be a significant uphill battle in most circumstances. So share the wealth food junkies, and we will all benefit from your delicious creativity.

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Legal Geek No. 33: Google Patents Improved Web Browser Privacy

Welcome back to Legal Geek. This week, we take a look at one of the more interesting issued U.S. patents of the new year, as Google innovates in the field of internet user browsing privacy.

https://archive.org/details/LegalGeekEp33

Internet users have for some time been able to browse in incognito or private modes in various browser applications. These modes mean that your search history, cookies from a session, and browsing history will not be retained on your computer. In addition to preventing others from snooping on your internet history, these modes can be used to avoid autofill information, accidental saving of important log-in credentials to accounts, logging into multiple accounts on a website in different windows, and performing searches not affected by your history or other users on the same device.

These modes have been only manually activated to date, requiring diligence of the user in remembering to activate private browsing whenever it is desired. In January, Google has secured a patent that innovates and moves private browsing to the next level. The patent, U.S. Patent No. 8,935,798, is directed to a system and a computer method of automatically enabling private browsing so that the user does not have to manually activate privacy mode.

The method words by having the browser analyze the content of the web page to determine whether privacy mode is appropriate. For example, the patent claims specifically recite having the browser determine whether a web page being opened was previously filtered or selected to not appear in search results, and if so, the privacy mode is automatically started and the web page is opened in that privacy mode. Thus, the user can establish parameters for automatically triggering privacy mode – such as when they enter a credit card number on a site, or when they visit certain high-security websites – and the protection will just happen. It's a potentially very smart implementation of privacy mode browsing when it matters most.

This could be a potential boon for helping keep personal information private, but as with all privacy mode browsing, this does not keep websites and service providers from tracking your activity. Furthermore, high quality forensic techniques have proven to still be able to reconstruct the browsing history in the current iterations of privacy modes. And granting the patent to Google may mean this technology remains locked up in a single browser like Chrome unless Google licenses or shares this technology to competitors, which not all users will adopt.

The bottom line: Although this patent is a win for most under privacy law, it will not change the fact that privacy mode browsing is no more protected from official searches and seizures than regular browsing. So no becoming a criminal or terrorist and expecting this new innovation to somehow shield you in court from having your online misdeeds be discovered and used against you. Still, anything that can help keep credit card and bank numbers and login credentials more secure is a step in the right direction. Enjoy the smart, private browsing.

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Legal Geek No. 32: Does Copyright Enforcement Affect MLK Legacy?

Welcome back to Legal Geek. This week, we celebrate Martin Luther King Jr. by taking a look at how his estate may be lessening his legacy by exploiting copyrights that have extended into near perpetuity.

https://archive.org/details/LegalGeekEp32

This month the film Selma earned some critical praise and Oscar nominations, but it also earned hefty criticism for various inaccuracies and stretching of the truth. One of the more notable omissions from Selma are the actual speeches Martin Luther King gave during the civil rights movement. But that paraphrasing was intentional, and it's all thanks to copyright law.

Thanks to regular revisions to copyright law extending the term of copyright protection, the speeches written and delivered by Dr. King remain covered by copyright protection. In fact, the current copyright term is life of the author plus 70 years, which will enable Dr. King's heirs and estate to profit off his works until 2039. And this estate has been particularly litigious over the years, successfully suing companies like CBS and USA Today for using or printing full copies of famous MLK speeches. Which is ironic, since television and movie studios were the leaders of the recent charges to extend copyright protection terms.

That leads to an interesting conundrum when films like Selma come along, as the estate has already decided to exclusively license the rights to another studio Dreamworks for a future biopic made by Steven Spielberg. Thus, the filmmakers of Selma could not even approach the estate to include the actual speeches, and if they did, a significant copyright lawsuit and damages would have surely followed.

That seems to cheapen the legacy of this civil rights icon, as it makes things like the recent 50th anniversary of his speeches difficult to celebrate. Indeed, these speeches are such an important part of history that it seems inherently wrong that this genius cannot be shared with the world in textbooks and the like, for future innovators and great minds to build upon. All in the name of profit, such as when the estate received over $700,000 to authorize MLK's image to be used in the new MLK memorial in Washington DC. And that profit-grab just seems like a poor reason to effectively lock down and reduce the legacy of one of the true heroes of the 20th Century.

So remember cases like this when the copyright owner lobbyists begin to push for a further extension of the copyright term as expected in the next three years (like SOPA and PIPA, we should crowdsource strong opposition to stop such madness).

Bottom Line: "Life plus 70 years" has already arguably exceeded any reasonable economic incentive needed to encourage authors to make creative works and it provides too much constraint to help contemporary authors eventually build on the creative works of others, as is the case in patent law where terms last only 20 years. Scenarios like the profiteering estate of Martin Luther King Jr. help confirm the fact that copyright terms should be limited in the future, not extended, to reconfirm the balance and purposes of copyright law. But that's just one IP attorney's opinion.

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Legal Geek No. 31: Aereo's Failed Copyright Theories and Outlook Heading into 2015

Welcome back to Legal Geek. This week, we update one of the more compelling copyright law stories of 2014, that being the ongoing saga for cordcutting pioneer Aereo against the broadcast networks in court, to see where Aereo stands heading into 2015.

https://archive.org/details/LegalGeekEp31

Back in June before Nerdtacular, this segment reviewed the Supreme Court decision that deemed that Aereo's subscription service that intercepts broadcast signals with mini antennae was copyright infringement against the networks. I deemed that Aereo would not survive in its current form in that previous segment, but has that come true?

Aereo was defiant in response to the Supreme Court decision, indicating it still had legal theories and arguments to rely upon to try and stop the broadcast networks' motion for an injunction to shut the company down. More specifically, Aereo argued that Section 111 of the copyright act would provide a compulsory license that had to be granted by the networks just like for cable TV providers protected under this Section of the copyright act.

The U.S. Copyright Office refused to recognize such a right to a compulsory license in July, so the battle went to the New York District Court judge handling the motions for injunction against Aereo. In late October, that judge ruled similarly that Aereo and other web providers are not entitled to the cable company protections of Section 111 like the right to force a compulsory license on the broadcast networks.

To put it simply, the judge ruled that even though the Supreme Court deemed that the "public performance" requirement for copyright infringement was met by Aereo's service in a similar manner as it would for cable companies, that did not mean Aereo was actually a cable company. Instead, this decision confirmed the many years of case law holding that web companies like Aereo are not entitled to all specialized cable company protections in copyright law.

And with that, Aereo's last stand failed and a preliminary injunction stands against Aereo, at least as it pertains to rebroadcasting currently-airing television shows.

Aereo is now auctioning its web television technology under bankruptcy to help pay the bills, as $95.6 million of venture capital has dried up to a mere $3.6 million due to all this litigation. Aereo clearly still thinks there is a non-copyright-infringement use of its patented technology, and reports from Engadget say that at least 17 buyers are interested. However, it is clear that Aereo itself as an entity is waving the white flag and monetizing assets in bankruptcy to have money left over to finish litigation and pay damages, if necessary.

Bottom Line: Aereo is effectively dead, as expected. The legal arguments made by Aereo were not laughable in this process, and the Supreme Court was highly divided on the grounds for shutting this entity down, but the injunction and shutdown still occurred. If companies like this want to change the laws going forward, lobbying Congress will be the better avenue for change rather than fighting precedents in court.

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Legal Geek No. 30: Beware the Promiscuous Licensor

Welcome back to Legal Geek! This week, we take a look at so-called promiscuous licensors, and what trademark owners can do to protect themselves from losing their IP rights by being labeled as promiscuous.

https://archive.org/details/LegalGeekEp30

A Michigan court hit the legal news cycle in September for deciding a trademark case based on the well-established doctrine that so-called naked licensing by a trademark owner can destroy the right to protect that trademark. "Naked licensing" is understood to mean the situation where a trademark owner licenses the rights to use the trademark to another party without exerting some control over the quality of goods and the use of the mark by the third party.

This practice is disfavored in trademark law because trademarks are protected for the primary purpose of avoiding consumer confusion, by properly identifying the source of well known trademarked goods. It logically follows that if a company allows others to use the trademark without exerting any real quality control over the use of that mark, then the line blurs for consumers about where the source of goods bearing that trademark is located. That makes the trademark not really identify the true source anymore, which undermines the primary reason we protect trademarks in the first place.

Returning to the Michigan case, a company called Movie Mania was suing to stop a rental service competitor from using the trademark, but the court discovered that Movie Mania had licensed the rights to use that trademark in many agreements since 1996 without any quality control provisions in the license agreements. Thus, these naked licenses ruined any trademark rights Movie Mania had to its own company name, and the competitor won the case and the right to continue using the mark.

This naked licensing was deemed by the court to make Movie Mania a "promiscuous licensor," a cute play on words that helped this case become a bigger news item, but this language may help solidify this often overlooked trademark concept in the public eye. Trademarks are based on some sort of exclusive use, otherwise the mark would not indicate the source of goods for the consumer to avoid confusion, so being "promiscuous" or running around "naked" with your licenses to third parties can clearly undermine that intellectual property.

One of my regular duties in my day job as an attorney is to review publishing and distribution agreements for video and board game designers, as well as other creative types who license the rights to make and sell what is covered by their intellectual property, such as the game in the game design context. Almost every single time, the license granting language for the use of copyrighted and trademarked material contains no real provision for quality control.

This is very bad, as signing such an agreement could wreck one of the client's most important business assets, specifically the trademark rights!

So if you want to learn anything from my past and current clients, learn this: (1) there is no such thing as a form contract, especially when written poorly and one-sided, and (2) there is no reason to sign a license agreement with no quality control provisions for trademarks, as doing so jeopardizes the trademark rights that both parties want to use and exploit.

Bottom Line: just like most IP rights, trademark law has some quirks which can lead the uninformed to make bad decisions that could kill assets like trademarks when conducting regular business agreements. Be careful out there, as you don't want to end up being the next "naked and promiscuous" party we hear about in the legal news.

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