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ON THE LIGHTER SIDE

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IP LAW IN PRACTICE

Building an Interactive Online Site:  The Legal Perspective 

Trademarks:  First, whether or not the primary brand is also the domain name, all brands and domain names should be cleared by counsel to ensure that no one can prevent the use of the brand in commerce in the U.S. and elsewhere. The availability of the domain name should also be checked, in as many iterations as possible, and all of the available domain names should be purchased so that traffic is always driven to the primary site.

Copyrights and Access: If Newco hires an outside designer to create, or "code", its website, then a written agreement should specify that Newco owns all copyrights, trademarks, and patentable inventions in the website and the code, since it's the law in the U.S. that an outside designer is the owner absent a writing to the contrary.  The agreement should also require the designer to give Newco access to all files needed to maintain and operate the website, and, in particular, to provide any logins and passwords necessary for accessing the servers where the website is hosted. 

Patent Protection:  The website should be clearly marked with the number of any applicable patents since failure to do so could preclude the availability of damages if a third party infringes that patent.

Uploading Images/Video/Music:  If users are uploading images, video and/or music, Newco has to take the appropriate steps to shield itself from liability. The Digital Millennium Copyright Act, 17 USC �512, limits the liability of "service providers" for direct, contributory or vicarious copyright infringement in certain circumstances if "service providers" comply with complex statutory provisions requiring, among other steps, the adoption and implementation of a policy for terminating repeat infringers and a notice and take-down system by which copyright owners can notify the "service provider" that infringing material is on its website, so that the "service provider" can promptly remove that material. 

Privacy:  Newco's Privacy Policy needs to include various information about data collection and the security of the data. If data collection is directed towards children under 13, there are additional requirements relating to the acquisition of parental consent. And if the data is going to be mined for targeted advertising or other purposes, then the type of tracking must be fully disclosed.

Newco must also permit consumers to opt-in or out of the disclosure and collection of requested information.

Terms of Use:  Terms of Use vary depending on the nature of the website, but they often include:  notice of the site's own trademarks, copyrights and patents; an explanation of the use the visitor may and may not make of the site; notification of the visitor's responsibility to secure her password and account information; the site's policy regarding posting of content; a complaint procedure; and, for sites selling products, the site's policies regarding pricing, payment, purchase, shipment, and returns.

Addressing the issues raised here can help avoid nasty surprises and smooth the entry into the ever-more pervasive arena of cyber visibility and marketing.

For further information, contact Amy B. Goldsmith, whose practice includes advising clients regarding internet related issues.  

Shaping Patent Law:  The Standard for Invalidating Patents   

This is the third of three articles about patent-related cases now before the U.S. Supreme Court. 

Patents in the U.S. are granted after a search and an examination by the U.S. Patent and Trademark Office.  Although the validity of a granted patent subsequently can be challenged in court, the burden of proof for such a challenge, demonstrating by "clear and convincing" evidence that the patent is invalid, is very high.  When such a challenge is successful, the challenger often is able to show that one or more references which were not considered by the Patent Office and pre-date the invention of the patent would have made the invention unpatentable.  However, what standard should a court use in the event the Patent Office failed to consider but should have considered particularly relevant references?

I4i was granted U.S. Patent No. 5,787,449 in 1998 for "a method for manipulating architecture and content".  During prosecution of i4i's application at the Patent Office, many references were considered before the patent was granted.  In Microsoft v. i4i Limited Partnership, Microsoft was held to infringe the '449 patent with its XML editor for Word, and damages were assessed at well over $100M.  During a validity challenge at the lower court, Microsoft identified a reference that it believed should have been considered by the Patent Office and provided evidence that the reference would probably invalidate i4i's patent. However, the evidence fell short of the "clear and convincing" standard, and the court held the patent to be valid, which was affirmed on appeal. 

But should "clear and convincing" be the standard?  To what extent is the challenger obligated to show that a reference would render an invention non-patentable?  Microsoft has raised these questions before the U.S. Supreme Court, where that standard is now being revisited.  The Supreme Court is expected to rule on the case before the end of its 2011 term.

What are the implications of this case for patent holders?  If Microsoft is successful in its challenge, a lesser standard is likely to be adopted, and more patents may be challenged in court.  For applications now being prosecuted, it is more important than ever to make sure that searches be as comprehensive as possible and that references identified in the searches be disclosed so as to reduce the likelihood of an unknown reference being brought forth by a challenger later.

For further information, contact Barry Lewin, whose practice includes preparation and prosecution of patent applications for mechanical devices as well as for telecommunications and information technologies. 

This is the first of two articles focusing on recent controversies involving Copyright Law and "Fair Use".

Imagine this: You're thirteen years old, and your mother takes you to a music company where you record an original song.  You even get to star in the music video!  The song you record is entitled "Friday" and it includes a catchy hook: "It's Friday, Friday. Gotta get down on Friday. Everybody's looking forward to the weekend, weekend."  The song also includes lyrics that even a seventh-grader would find juvenile: "Yesterday was Thursday, Thursday.  Today is Friday, Friday (Partyin')...Tomorrow is Saturday, and Sunday comes afterwards."

The video is posted on YouTube.com, where your family and friends, or anyone else, can see it.  Within days, a well-known comedian sees your video and links it to his blog, under an entry he calls "Song Writing isn't for Everyone".  Within hours, your video goes 'viral', and a lot of the feedback on YouTube isn't positive. 

After a couple million people watch "Friday" on YouTube, late-night talk show host Conan O'Brien parodies "Friday" with his very own "Thursday".  He copies the music from your recording, but writes his own lyrics: "It's Thursday, Thursday.  It's the day before Friday.  The day after Wednesday.  Two days after Tuesday...Three days out from Monday. A full week from Thursday.  A fortnight from the next."  Other parodies of "Friday" spring up, most named after other days of the week.

Maybe you're annoyed that some of the people copying your song seem to be making fun of you.  Maybe it doesn't seem fair to your parents that other people are making money from your song.  So you ask:  can they do that?       

Legally, Conan O'Brien or anyone else can parody your song.  They can make fun of the song, they can make fun of you, and they can even make money from their parody.  This is because parody is one of several forms of "fair use", a type of copying permitted by the Copyright Act "for purposes such as criticism, comment, news reporting, teaching ...scholarship, or research". So long as Conan or another 'parodist' criticizes, comments or reports on an artistic work, or on the artist, their copying is permitted.    

The U.S. Supreme Court explained that parody is a permissible form of copying in one of its well-known copyright law decisions, Campbell vs. Acuff-Rose Music, which focused on whether it was permissible for a rap group to copy from Roy Orbison's "Oh, Pretty Woman".  The owners of the copyrights in Orbison's song objected to a song by the rap group 2 Live Crew, in which the group copied parts of Orbison's recording.  Similar to Orbison's "Oh, Pretty Woman", 2 Live Crew's lyrics were about prostitutes.  However, the lyrics to 2 Live Crew's song made clear that the prostitutes they were rapping about were not "pretty" like the street-walker about whom Orbison had crooned.  The Supreme Court found that 2 Live Crew's song was a fair use, and that the group, at least in part, had copied from Orbison's work to comment on it and to criticize Orbison's song for being naive.   

Moreover, 2 Live Crew's song was "transformative" of the original work.  The new song did not merely copy or replace Orbison's song, either artistically or commercially; it added something new, with a further purpose and with different character, infusing the first work with new expression, meaning or message. 

The Supreme Court explained that parody may require copying because parody "can provide social benefit, by shedding light on an earlier work," and, in the process, foster the creation of a new one.  Further, it is necessary for the parodist to copy from the original work because parody's humor and comment "springs from creative allusion to its object", the original work, "through distorted imitation."  The new work's "art lies in the tension between [the] known original and its parodic twin."  Thus, 2 Live Crew's copying from Orbison's original song was a fair use, because 2 Live Crew alluded to the original work and then distinguished their song and its message from the original.

This use of an underlying work as part of a parody is clear in Conan O'Brien's "Thursday".  While Conan copied the music from the original song, his lyrics and video make clear that he is poking fun at the original song and video.     

We therefore hope that Rebecca Black has a sense of humor, especially about her recording and video for "Friday."  We find "Friday" to be humorous (even if it was not intended to be), and we have enjoyed some of the parodies "Friday" has inspired.  While the song's '15 minutes' of fame endure, we expect to hear and see more parodies of the original, and we appreciate that they are not prohibited by the copyright laws. 

For further information, contact Ariel S. Peikes whose practice includes counseling clients regarding copyrights.  

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