When is a fictional character copyrightable? Certainly main characters are. But what about lesser characters – even ones that do not have even a single line?

Protected intellectual property

Judge Ronald S.W. Lew faced this question in DC Comics v. Towle in February 2013 regarding the Batmobile. Defendant Mark Towle runs Gotham Garage a custom car business. He has been selling kits that allow people to customize their vehicles into the Batmobile. DC Comics sued for copyright and trademark infringement.
Like most of Batman’s fights, the outcome was not in much doubt. Batman wiped the floor with Towle. Judge Lew found that Towle violated DC Comics’ copyright and trademark rights in the Batmobile. Judge Lew found that the public is likely to be deceived by Towle’s product, and also that the Batmobile had enough “artistic features” to be protected under copyright law.
Batmobile certainly a unique image that justifies protection, if only because there is a demand for kits to fit out a car as a Batmobile. However, the line delineating what is protectable intellectual property starts getting very fuzzy as characters get less distinctive. Supporting characters and henchmen are almost always anonymous, or nearly so, and have little intellectual property protection. In Nichols v. Universal Pictures, 45 F.2d 119 (2d Cir. 1930), the legendary judge Learned Hand found that “the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly” in ruling that two plays featuring a Jewish person marrying a Catholic person in New York were not so similar as to constitute copyright infringement. Copyright protects expression, not ideas. Luckily, “Holy _____” is not long enough to constitute protected expression.

Photo By Joy Acharjee (Flickr) CC-BY-2.0, via Wikimedia Commons

When you think of Hallmark, you often think of the word “giving.” In a recent case, though, Hallmark will be doing the getting: a repayment of a substantial severance package by a former executive who later used Hallmark’s trade secrets to compete against it.
As the Eighth Circuit Court of Appeal explained in Hallmark Cards, Inc. v. Murley, Janet Murley was a former Hallmark Vice-President until Hallmark eliminated her position in 2002. Murley received a severance package consisting of a $735,000 payment, 18 months of paid COBRA health insurance, and executive placement and tax preparation services. In return, Murley promised not to sue Hallmark, and not to use its trade secrets.
Murley went to work at one of Hallmark’s competitors, Recycled Paper Greetings (“RPG”). Murley admitted disclosing confidential Hallmark information, including information about Hallmark’s business model, its consumers’ buying process, and industry analysis that Hallmark paid for. Hallmark learned of the violation of the confidentiality agreement when American Greetings was buying RPG and wanted a third-party to inspect RPG’s information to ensure that RPG did not have any of Hallmark’s information. Hallmark then sued Murley.
The judge made it extra easy for the jury after finding that Murley had deleted 67 documents from her computer just before the computer inspection. The court instructed the jury that

If you should find that a party willfully destroyed evidence in order to prevent its being presented in this trial, you may consider such destruction in determining what inferences to draw from the evidence or facts in this case. You may, but are not required to, assume that the contents of the files destroyed would have been adverse, or detrimental to the Defendant.

The jury found in favor of Hallmark, and the Eighth Circuit Court of Appeals affirmed, overruling Murley’s objection to the jury instruction.
When employees and executives leave, companies have a difficult balancing act of respecting the law and acting fairly to its departing people, and protecting its own interests. The Hallmark case shows that courts will protects the company’s interests when a departure violates its agreement. Now that’s a Hallmark moment.

What has Sonny Wrought?

How did you celebrate Public Domain Day, January 1st? I celebrated in suitable fashion, among 90,000 celebrants in red and white. Of course, in the United States, not much has entered into the public domain for the last 14 years or so, since the Sonny Bono Copyright Term Extension Act went into force, extending individual copyrights by 20 years, and works for hire by 25 years.

The balance in copyright between producers and consumers has been warped in favor of producers for a long time. Copyright protection is designed to encourage the production of new material — not reward the makers of old material. As Justice Steven Breyer stated in his dissent in Golan v. Holder:

“In order ‘[t]o promote the Progress of Science’ (by which term the Founders meant ‘learning’ or ‘knowledge’), the Constitution’s Copyright Clause grants Congress the power to “secur[e] for limited Times to Authors . . . the exclusive Right to their . . . Writings.’ Art. I, §8, cl. 8. This ‘exclusive Right’ allows its holder to charge a fee to those who wish to use a copyrighted work, and the ability to charge that fee encourages the production of new material.”

However, when copyright terms go from 14 years (the original term in 1790), to 28 years (1831), to life of the author plus 50 years (the original provision in the 1976 Copyright Act) to life of the author plus 70 years now, what new incentive to an author is there? Will studios make any more movies because copyrights on works-for-hire are now 95 years, instead of 70? I just don’t see someone saying that they’ll make this work if the copyright lasts until 2108, but not if it lasts only until 2083. In the meantime, many works are left ignored, because it costs too much to re-release them.

In 1974, Frank Capra’s classic It’s a Wonderful Life went into the public domain, after languishing on various studios’ back shelves for more than two decades. When I first saw it in 1981 on film, there was still some cost involved in preparing and shipping the film. Now, however, there are no costs to copying — it is available on YouTube, and millions of people can enjoy Jimmy Stewart saving Clarence (and the town of Bedford Falls), and discovering Zu-zu’s petals. By attempting to grab every last penny of worth in a work in an era in which the cost of good-quality copying approaches zero, producers’ over-reliance on copyright may cause the entire copyright regime to fail.

The Economist has another good examination of copyright law, which examines the sorry state of the public domain. No one wants to discourage artists and authors from creating new works, but it is in no one’s interest to have

Photo credit: By Peter Denton [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons

Dunkin’ Donuts has found the hard way that being the self-styled best isn’t good enough. The United States Patent & Trademark Office has refused to register its slogan “Best Coffee in America,” as being merely descriptive and not having a secondary meaning to consumers.

Not good enough for registration.

Dunkin’s prime claim to trademark registration is that the slogan became distinctive over the five years that Dunkin’ used it. However, the USPTO noted that similar self-praising slogans like “The Best Beer in America” (Boston Beer or America’s Freshest Ice Cream for Carvel Ice Cream is considered “puffery” and is not registrable.
The “Best” coffee in the United States is inherently subjective. While it is possible that there is some general agreement about what might be best in a certain industry, coffee is probably not one of them. Your favorite barista’s coffee might surpass, in your mind, anything found at the most expensive coffee shops in the world. Every shop thinks it makes its product the best – the consumers, not the USPTO, decide.
Dunkin’ Donuts will have to fall back on another product, like donuts. Mmmm, donuts.

Online content providers – including websites and apps – need to add something to their 2013 To-Do list.

It covers you, too

Beginning July 1st, the Federal Trade Commission’s new rules under the Child Online Privacy Protection Act (“COPPA”) will apply covering more online services. While the new rules have been criticized as “a mess,” they still apply. Most business-related online providers have assumed that COPPA and its related rules have not covered them, because they do not direct activities at children. However, if your stationery store has Barbie Notepads or fuzzy gnome erasers, their online presence could bring them under the COPPA requirements, such as having parental consent and disclosure requirements.

Here is a quick summary of the new changes:

• More Online Providers. Probably the most important change is that more online providers are covered. Rather than just the child-focused websites, all online providers (which includes apps) that have even a small amount of content directed at children are subject to the COPPA rules.
• Third Parties Covered, Too. If your website or app relies on advertising from third parties who might be able to collect information about children, those third parties are covered as well.
• Personal Information is EVERYTHING. Personal information about a child is more than their name, address, email address, or birthdate – it is anything about them. Thus, anything that can be used to discover something about the child has to be protected: screen or user names, geolocation info, browser and flash cookies, device identifiers, internet messaging IDs, javascript “tags” – basically, anything, other than those used for the internal operations of the provider.

Not all the changes are negatives for the online providers. The FTC has tried to streamline the online notices required to parents, although it remains to be seen whether this will be sufficient. Online providers, at least for now, will not be required to explain how children’s data is protected.
Strict Liability. An online provider is strictly liable for any breach of COPPA’s provisions. This includes, beginning in July, those who are working on behalf of the provider, but not controlled by the provider. While the online industry largely opposed this extension, privacy groups won the battle. The takeaway for smaller online providers is to make sure – very sure – that the organization that is monetizing your content through advertisements or the like is following the new COPPA provisions.

We never regulated websites back in the 70's. (c) 2008, photo courtesy of Matt Becker, Weatherman90 at en.wikipedia, Wikipedia Commons

The FTC has provided a lengthy 167-page analysis of its reasoning for the new rules. If you are an online provider, you need to review these new rules to see how they apply to you and your technology. Bay Oak Law will be here to assist, if necessary.

When I was in junior high, Anthony Newley had a song that he toured the talk shows with, and which had some modest success on the radio. It was titled “Teach the Children of the World”:

Anthony Newley, left, 1969.

Teach the children of the world

Teach them before its just too late

Teach the parents of tomorrow

They are the children of today

I haven’t been able to find a video of it online, but I remembered its chorus through my education, and now through my children’s. I bring it up now because a brave educator and his family are facing the ultimate terror, because of their devotion to education: the loss of their daughter.

Malala Yousafzai is a 14-year-old girl in Pakistan who was shot by the Taliban for standing up for the right of women and girls to be educated. According to the Taliban’s spokesman, there is no doubt why:

A Taliban spokesman, Ehsanullah Ehsan, confirmed by phone that Ms. Yousafzai had been the target, calling her crusade for education rights an “obscenity.”

Malala was incredibly brave to advocate for education, but I do not need to exclaim her virtues when others, like a former First Lady of the United States, can do it so much better. Her father, Zaiuddin, is an educational activist in Pakistan’s Swat Valley, where actions have consequences. He has consistently fought for the right of girls to an education, to his peril and that of his family.

Education wasn’t an obscenity to me, but a lifeline. We all know teachers that have made the difference in our lives: my fifth-grade teacher, Mrs. Dorothy Mason; my English and US History teachers in junior high, Ms. Deborah Malm, and Mr. Peter Booz; my social studies teacher in high school, Ed Burke — I am leaving out so many more. I count myself lucky to be the son-in-law of a teacher who spent 38 years working with the handicapped, with infinite patience and good cheer.

Great teachers deserve all the respect we can give them. In Japan, where I taught English for two years, teachers are given the honorific sensei, just as doctors are. Great teachers open up the world, one child at a time — but for all time.  The very best teach you to think, which is what the Taliban fear. Zaiuddin Yousafzai belongs in the Teacher’s Hall of Fame for making education available where it is most needed. Our prayers are with him and his family, and especially his daughter, Malala. I am glad that Zaiuddin is teaching the parents of tomorrow – the children of today.

10/17/2012 Update: Malala Yousafzai (see the link to a great political cartoon) was flown to Britain after having a bullet removed, and is now out of a coma. The early word is that she seems to have feeling in all her limbs. Just as good, it seems that Pakistan has woken to protest the Taliban’s barbarism.

Walking on red-hot irons? Easy. Try a 3-day depo.

It is easy to feel smug when we look back on our ancestors 1000 years ago. They had donkeys — we have 400 horsepower, 4 wheel drive vehicles. They had the Black Death — we have vaccines for all types of illness, even cancer. For a justice system, they had trial by ordeal — we have civil court depositions. Well, some things never change.

Actually, one thing has. In September, California’s Governor Jerry Brown signed Assembly Bill 1875, which generally limits civil depositions to just seven hours of testimony.

The federal courts have been following a seven hour rule for several years now. Federal Rule of Civil Procedure 30(d)(1) limits depositions to “1 day of 7 hours.” If someone tries to impede, delay, or frustrate a deposition, that person can be sanctioned.

New California Civil Procedure Code section 2025.290 provides:

(a) Except as provided in subdivision (b), or by any court order, including a case management order, a deposition examination of the witness by all counsel, other than the witness’ counsel of record, shall be limited to seven hours of total testimony. The court shall allow additional time, beyond any limits imposed by this section, if needed to fairly examine the deponent or if the deponent, another person, or any other circumstance impedes or delays the examination.

(b) This section shall not apply under any of the following circumstances:

(1) If the parties have stipulated that this section will not apply to a specific deposition or to the entire proceeding.

(2) To any deposition of a witness designated as an expert pursuant to Sections 2034.210 to 2034.310, inclusive.

(3) To any case designated as complex by the court pursuant to Rule 3.400 of the California Rules of Court, unless a licensed physician attests in a declaration served on the parties that the deponent suffers from an illness or condition that raises substantial medical doubt of survival of the deponent beyond six months, in which case the deposition examination of the witness by all counsel, other than the witness’ counsel of record, shall be limited to two days of no more than seven hours of total testimony each day, or 14 hours of total testimony.

(4) To any case brought by an employee or applicant for employment against an employer for acts or omissions arising out of or relating to the employment relationship.

(5) To any deposition of a person who is designated as the most qualified person to be deposed under Section 2025.230.

(6) To any party who appeared in the action after the deposition has concluded, in which case the new party may notice another deposition subject to the requirements of this section.

(c) It is the intent of the Legislature that any exclusions made by this section shall not be construed to create any presumption or any substantive change to existing law relating to the appropriate time limit for depositions falling within the exclusion. Nothing in this section shall be construed to affect the existing right of any party to move for a protective order or the court’s discretion to make any order that justice requires to limit a deposition in order to protect any party, deponent, or other natural person or organization from unwarranted annoyance, embarrassment, oppression, undue burden, or expense.

Your phone rings, and it is your friend from the PTA: your name is listed in the local paper for having skipped jury duty last month. Your friend informs you that you may be subject to jail time and/or a fine. You were called for jury duty awhile ago, but you checked the website, and you didn’t have to go in — but when was that? Last year? The year before? Your friend sounds worried, but tells you that there is a number to call, and you get the number. Now your fingers are shaking a little bit as you dial.
Your fingers start shaking a little more as you listen to the recorded message tell you the bad news that you may face a thirty day jail term and a $500 fine — but then you hear that this is all just a joke, but you can use the number to mess around with the head of one of your friends. What the —?

No joke. Photo courtesy of Photos-public-domain.com

This is really happening in Pennsylvania, as the Administrator for the Courts, Zygmont Pines (yes, that is his real name) is warning about the hoax. The only question is how soon it will spread to the jokers here in California. As much of a drag that jury duty is, it is vitally necessary for our justice system. If one of your friends tries to play this one on you, just tell him its really not funny.

The copyright trolls had a bad day at the beginning of September, as Judge Phyllis Hamilton of the Northern District of California found that wireless router owners do not have a duty to secure Internet connections from outsiders.
The issue in AF Holdings v. Doe (Hatfield), US Dist Court, ND Cal. C12-2049 (PJH)  is negligence. Can the owner of an Internet connection (like a wireless router, for example) be negligent in preventing third parties from using the connection to access and copy copyrighted content?
For there to be negligence, there first may be a duty. Automobile drivers, for example, have duties both to their passengers and third parties that they might encounter, not to injure them in any way. Employers have duties to their employees not to use machinery in a dangerous manner. However, Judge Hamilton ruled that there is no duty of the owner of an Internet connection to the owner of copyrighted content:  ”AF Holdings has not articulated any basis for imposing on Hatfield a legal duty to prevent the infringement of AF Holdings’ copyrighted works, and the court is aware of none.”
Judge Hamilton put a further stake in the heart of AF Holdings’ argument by finding that federal law regarding copyright and the Communications Decency Act supersede, or preempt, state and local law, meaning that local laws regarding negligence have no effect in terms of negligence for maintaining an internet connection.
Judge Hamilton’s ruling does not mean that wireless router owners are now free to take off password protection from their wireless routers. Acting recklessly, knowing that somebody will use the router to download prohibited content, legally acts as a “knowingly” allowing someone to use your internet connection illegally, and that can be considered contributory copyright infringement. Moreover, allowing lots of people to use your connection will inevitably slow down the access that you paid for. Lastly, if someone is committing a crime using your wireless connection, you could have SWAT teams invading your home, and even Martha Stewart can tell you that that’s NOT a good thing.

A few years ago, we warned about scammers who were sending official-looking notices from the “Business Filings Division,” asking for $239 for statement of information filings. It was all a scam — but I remember spending fifteen minutes looking at one, trying to verify that it wasn’t official.

It seems that these scammers are back, only this time they are hitting on companies with applications or registrations with the United States Patent & Trademark Office. They look official and ask for the payment of fees. If you are catching up with paperwork on a Friday evening, you don’t want to fall for this. If you have a trademark application or registration, the only office that will contact you is the “United States Patent & Trademark Office,” which is in Alexandria, Virginia, and the email domain is “@uspto.gov.” If you have questions, both our firm and the USPTO can help keep the scammers away.