Text of ASTM v Public Resource – DC Circ Decision re Fair Use of Standards Incorporated Into Laws

From the decision: Across a diverse array of commercial and industrial endeavors, from paving roads to building the Internet of Things, private organizations have developed written standards to resolve technical problems, ensure compatibility across products, and promote public safety. These technical works, which authoring organizations copyright upon publication, are typically distributed as voluntary guidelines for self-regulation. Federal, state, and local governments, however, have incorporated by reference thousands of these standards into law. The question in this case is whether private organizations whose standards have been incorporated by reference can invoke copyright and trademark law to prevent the unauthorized copying and distribution of their works. Answering yes, the district court granted partial summary judgment in favor of the private organizations that brought this suit and issued injunctions prohibiting all unauthorized reproduction of their works. In doing so, the court held that, notwithstanding serious constitutional concerns, copyright persists in incorporated standards and that the Copyright Act’s “fair use” defense does not permit wholesale copying in such situations. The court also concluded that the use of the private organizations’ trademarks ran afoul of the Lanham Act and did not satisfy the judicial “nominative fair use” exception. Because the district court erred in its application of both fair use doctrines, we reverse and remand, leaving for another day the far thornier question of whether standards retain their copyright after they are incorporated by reference into law.



10,000 Dead Bugs and All Similarly Situated

My colleagues Mel Garner, Rob Isackson, Lauren Emerson and I co-authored an amicus brief on behalf of the New York IP Law Association, filed in a Federal Circuit appea, Syngenta v Willowood. We argued that FIFRA, the Federal Insecticide, Fungicide and Rodenticide Act, does not preclude application of the Copyright Act, and thus a copyright claim could conceivably be brought against a pesticide label. We attached illustrations of potentially original, distinctive ways of rendering dead bugs.


Viacom v Hearrt re Paw Patrol Characters


S Ct: Text of Kirtsaeng v John Wiley on Awarding Attorney’s Fees

Footnote two is a contender for funniest Supreme Court footnote this term.

Justia’s Summary:

Kirtsaeng bought low-cost foreign edition textbooks in Thailand and resold them to students in the U.S. In 2013 the Supreme Court held that Kirtsaeng could invoke the Copyright Act’s “first-sale doctrine,” 17 U.S.C. 109(a), as a defense to the publisher’s copyright infringement claim. Kirtsaeng then sought more than $2 million in attorney’s fees from the publisher under the Act’s fee-shifting provision. The Second Circuit affirmed denial of Kirtsaeng’s application, reasoning that Wiley had taken reasonable positions during litigation. A unanimous Supreme Court vacated. When deciding whether to award attorney’s fees under 17 U.S.C. 505, a court should give substantial weight to the objective reasonableness of the losing party’s position, while still taking into account all other relevant circumstances. Precedent has identified several non-exclusive​ factors for courts to consider, e.g., frivolousness, motivation, objective unreasonableness, and the need in particular circumstances to advance considerations of compensation and deterrence. Putting substantial weight on the reasonableness of a losing party’s position is consistent with the objectives of the Copyright Act, but courts must take into account a range of considerations beyond the reasonableness of litigating positions. Because the district court “may not have understood the full scope of its discretion,” the Court remanded for consideration of other relevant factors.


Another Copyright Decision About Dragons

eng dragon copyright.pdf


Swatch Defeats Bloomberg's Motion to Dismiss re Unauthorized Transcript of Analyst's Conference Call

From the complaint: Plaintiff Swatch, a Swiss publicly traded company, hosted a conference call for securities analysts. The call was transmitted and recorded by a conference call service. Participants were instructed not to record the call for publication or broadcast. Bloomberg News was not invited or authorized to participate in the call. Bloomberg recorded the call, created a transcript which it made available to others.

Bloomberg moves to dismiss. Denied. If a fixation of the work is being made simultaneously with its transmission, the Copyright Act creates the fiction that the simultaneous fixation occurs before the transmission, for purposes of an infringement claim. (page 4). Also, the conference call satisfied the requirement of originality.

Swatch v Bloomberg


"Copyright and Football"

NY Times Freakonomics Blog: Copyright and Football:

The theory behind copyright is simple – if we allow anyone to copy a good new idea, then no one will come up with the next one.  The theory makes perfect sense – in theory.  In previous posts, however, we have described how fashion designers, chefs, comedians and pornographers all continue to create, even though others are free to copy their fashion designs, recipes, jokes, and . . . images.  In this post, we’ll take a look at something different: football.

I’m favorably disposed towards the authors’ argument that appropriate IP protection should be considered in an industry-specific context, however this struck me as a somewhat superficial column. The authors don’t highlight sufficiently that they are analyzing non-commercial behavior, specifically strategic behavior in the GAME of football (as opposed to the commercial activity of providing the entertainment service of football). And yet, even in this non-commercial domain,  there is still (private, contractual) IP protection encoded in the rules of NFL football – namely, trade secret protection.  Recall the New England Patriots getting caught in SpyGate.

And it never helps one’s credibility to make a major (from the point of view of an IP lawyer) mistake in the first sentence – copyright doesn’t protect against the copying of ideas but against the copying of the specific execution of ideas.


"Avoiding The Wrath of Righthaven"

Las Vegas Trademark Attorney: “Avoiding The Wrath of Righthaven”:

There has been a lot of discussion in the Las Vegas area (and nationwide) about the numerous copyright infringement lawsuits filed by a Las Vegas company named Righthaven, LLC. As of August 4, 2010, Righthaven had filed approximately 86 lawsuits against various website operators claiming copyright infringement. While not immediate apparent from the lawsuits, Righthaven is essentially a company established by Stephens Media LLC, the owner of numerous newspaper including the Las Vegas Review Journal (the “RJ”), in order to go after any and all third party websites that improperly excerpt all or part of the copyrighted articles from the RJ.


The Burden Of The Past And The American Comic Book Writer (Gaiman v McFarlane)

Plaintiff Gaiman (famous writer) sues Defendant McFarlane (famous comic artist). Defendant hired plaintiff to write some scripts for the SPAWN comic book. Plaintiff creates a new character, Dark Age Spawn. Defendant later uses a Medieval Spawn. Judge, in determining damages, finds that Medieval Spawn infringes Dark Age Spawn.
Rainy day fun: compare the copyright analysis of Dark Age Spawn v Medieval Spawn, to the analysis of Bratty Dolls in the Ninth Circuit Bratz case. Who would win in a fight: Medieval Spawn or a Bratz Girl?
Decision Gaiman Mcfarlane Spawn


Text of Ninth Circuit Opinion Reversing BRATZ Constructive Trust

Coverage here.
Decision Bratz