Joint authorship of copyright: UK Court of Appeal tears up the script

A dispute concerning the screenplay for the 2016 Hollywood biographical comedy “Florence Foster Jenkins” (FFJ) – a film about a tone-deaf New York socialite who labours under the delusion that she is a talented opera singer – has this month produced a Court of Appeal decision centering on the parties’ own adjustment to reality. Apart from highlighting a perhaps lesser-considered pitfall of working with your other half, the judgment emphasises the practical difficulties of applying the test of joint authorship in English copyright law.

The matter first arrived at the UK’s Intellectual Property Enterprise Court (IPEC) in 2017, when screenwriter Nicholas Martin brought a claim against opera singer/children’s author Julia Kogan. Mr Martin and Ms Kogan had begun a romantic relationship in 2011, and lived together until the breakdown of their relationship in 2014. During that period, early drafts of the FFJ screenplay came into being. Whilst it was accepted that Ms Kogan had introduced Mr Martin to the real-life story of FFJ, little else about the creation of the script was agreed. Continue Reading

Supreme Court Settles Circuit Split on When a Plaintiff May Sue

The Supreme Court handed down a unanimous copyright decision in March 2019 with implications for anyone involved in a copyright dispute, as well as for marketers and brands that create and use copyrighted materials. In Fourth Estate Public Benefit Corporationv. Wall Street.com, LLC (Fourth Estate), the Court resolved a long-standing split among the circuits over the requirement to obtain a copyright registration before filing a lawsuit.

The creator of an original work of authorship, such as a photograph, musical composition or screenplay, automatically obtains copyright protection in his or her work, which includes the right to prevent others from reproducing or displaying the work. But under Section 411 of the Copyright Act, a copyright owner may not file an infringement lawsuit until registration of the copyright “has been made” with the Copyright Office. The question in Fourth Estate was: what does “has been made” mean? Continue Reading

Th-Inking About The Law: Tattoos Leaving Indelible Marks On Black-Letter Principles & Coloring Our Perspectives

Tattoos, one of the oldest art forms in the world, are all over the legal news in recent years.  The news runs the gamut from a tattooist suing a movie studio over replication of Mike Tyson’s facial tattoo in The Hangover II to artists looking to gaming companies for compensation for reproduction of tattoos appearing on video game avatars of professional athletes, which even made it into the Wall Street Journal and been the subject of court decisions earlier this year and late last year. Even more recently it has included a Larry Bird’s mural being altered, at his request, to remove tattoos an artist had added for a modernizing flourish. (BTW, speaking of murals, the Chuck Wepner mural I had written about has been painted over). It has also included law enforcement receiving criticism from many directions for “Photo-Shopping” tattoos out of pictures of suspects used in policy photo arrays.  Just recently, Cardi B was sued for using a photo of a tattoo on her album cover. Though the examples above may most resonate with a US domestic audience, the copyright and other legal issues emerging from, and connected to, tattooing are being considered worldwide.   Consequently, it seems like an area worth exploring here. Continue Reading

Stop the Insanity! Sports Trademarks Run Amok

Sports and sports teams have a long history with intellectual property law and, more specifically, trademarks.  Sports teams, colleges, and universities have long trademarked their names and logos, and have routinely and aggressively enforced those rights.  In 1988 Pat Riley, then the head coach of the National Basketball Association’s Los Angeles Lakers, applied for a trademark on the term “three-peat” for shirts, jackets, and hats (U.S Reg. No. 1,552,980).  Subsequently, others have attempted to trademark various terms, such as baseball player Manny Ramierz trademarking the phrase ‘Manny Being Manny’.  In 2012, football player Robert Griffin III filed for seven trademarks: RGIII, RG3, Robert Griffin III, Unbelievably Believable, Go Catch Your Dream, Light You Up, Work Hard Stay Humble, No Pressure No Diamonds, and Dream Big Live Bigger.

The desire to seek trademark protection makes sense to generate additional revenue streams, particularly for athletes whose careers will likely be short relative to their overall lifespans.  Robert Griffin III, for example, has played in only 44 total NFL games, starting 40 of them, and was out of professional football entirely in 2017.  Similarly, teams – and particularly collegiate teams – derive substantial revenue from selling branding and marketing rights.  For example, Forbes estimates that the University of Alabama Crimson Tide’s football program has a value of $93 million and generates annual profits of $45 million on $77 million in annual revenue. Continue Reading

Can Design Patents Be Limiting in Enforcement?

Suppose that you have an invention disclosure for a design of an article that you want to protect?  When you review the invention disclosure, you notice that the design is ornamental, for example a pattern, on an article such as a chair.  You draft and file a design patent application on the pattern described as applied to a chair, but you do not include any drawings showing the pattern applied to the chair.  Subsequently, you obtain the design patent and later find out that a third party is making baskets including the pattern.  Can you enforce your design patent against the alleged infringer?  The answer is NO because your design patent is limited in scope to a chair.

For a design patent, 35 U.S.C. § 171  refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 U.S.P.Q. 988 (C.C.P.A. 1980).  The subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). Continue Reading

Was Missguided Misguided? Kim Kardashian West Obtains $2.7 Million Judgment in Right of Publicity and Trademark Suit

A federal district court in California has awarded a $2.7-million default judgment to Kim Kardashian West in her lawsuit against a fast fashion online retailer that allegedly used her persona and likeness to sell its clothing, in part by repeatedly tagging her on Instagram and linking to the retailer’s e-commerce site.

Kardashian West’s suit is an example of celebrities taking action to combat the improper online use of their identities. Continue Reading

The District of Delaware Holds Patent Description for Bacon Product Indefinite

An indefinite patent description will pass muster when pigs fly.  In HIP, Inc. v. Hormel Foods Corporation et al., C.A. 18-615-CFC (D. Del. June 24, 2019), the United States District Court for the District of Delaware held that a patent failed to meet the requirement of 35 U.S.C. § 112 that a patent’s description must not be indefinite.  As a result, the Court held that U.S. Patent Number 9,510,610 (the “#610 patent”) was invalid. Continue Reading

The Role of Artificial Intelligence

The use of artificial intelligence (AI) in the fashion and beauty industries — and the marketing of the same — has steadily gained traction over the last few years and it’s not hard to see why. AI provides a myriad of opportunities and potential applications within the fields of fashion and beauty, but it can also be a double-edged sword presenting several potential legal issues. Continue Reading

TheLegalBay.gr: No Pirates allowed

In the framework of its efforts against online copyright piracy, the Hellenic Copyright Organization (“HCO”, Greek Acronym “OPI”) launched, on August 1st 2019, a new web portal, under the domain name “theLegalBay.gr”. The new website aims to be the place where online users can easily find web platforms available either solely in Greece or worldwide (including in Greece), which provide copyright protected content legally.

TheLegalBay is a member of the “Agorateka” initiative, a European network launched by the European Office of Intellectual Property (EUIPO), which collects in one portal (agorateka.eu) national websites of participating European countries which collect and provide links to platforms with legal digital content. Continue Reading

NEW DOJ ANTITRUST DIVISION POLICY INCENTIVIZES ROBUST CORPORATE ANTITRUST COMPLIANCE PROGRAMS

Last month the Department of Justice’s Antitrust Division announced a landmark new policy to incentivize companies to develop robust antitrust compliance programs. For the first time, the Antitrust Division will now consider a company’s antitrust compliance program as a factor in evaluating whether or not to bring criminal charges against the company and its officers.

Since the early 1990s, the Antitrust Division would only decline to prosecute companies under its stringent Corporate Leniency Program. The Corporate Leniency Program automatically grants amnesty from criminal antitrust prosecution to the first – and only the first – corporation that self-reports its participation in an antitrust crime to the DOJ, ceases its illegal activity, provides incriminating evidence against its co-conspirators, and fully cooperates with the DOJ. If a corporation qualifies for automatic amnesty, then all of its cooperating directors, officers, and employees also receive automatic amnesty. The effect of the Corporate Leniency Program, however, was to create a high stakes “race to leniency” among corporations hoping to avoid criminal charges by self-reporting to the DOJ. It did not incentivize corporate compliance efforts. Continue Reading

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