ABA's IP Hot Topics: Copyright and trademark

Mary Innis, Loeb & Loeb: Discussing various examples relating to Anheuser-Busch, she pointed out that keyword buys may change the analysis compared to traditional delivery of information – a TV spot that lures you in by seeming to be about Bud but then turning into a Miller commercial might be a legitimate parody, but the same ad triggered by the keyword “Bud” might amount to initial interest confusion. Or, if you think that’s okay, a Miller ad that parodies Battlebots might be a fine TV ad, but if cued by the keyword “Battlebots” might suggest source or sponsorship. (The actual ad, which prompted a lawsuit from Battlebots, is really funny, by the way.)

What about branded entertainment, especially when the sponsor has influence over the show content, such as Sears with home improvement shows? Should that be treated as fully noncommercial speech, or subject to various consumer protection/trademark/right of publicity claims? Innis argues that it depends on consumer perceptions, including consumer perceptions about whether the products depicted are performing as they really would if purchased.

The next frontier: user-generated content. Example: The VW “suicide bomber” ad – it went around the world very quickly, despite the fact that VW didn’t create it. VW received a bunch of complaints because people thought it was an authorized “edgy” campaign. It was really by two guys starting their own ad agency, using it as a marketing tool. There was a criminal action in Germany under Germany’s antiterrorism law – the guys ultimately apologized.

Jeff Cunard, Debevoise & Plimpton: A whirlwind copyright tour, starting with the biggest case of the year, Viacom v. Google. Legislative reconsideration of the DMCA safe harbors is out of the question, despite all the complaints of copyright owners and all the business models that have developed in (or supposedly in) the safe harbors. UMG v. MySpace alleged that user-designed pages included third-party music, videos and photos; a federal suit alleges direct and secondary infringement. UMG argues that the “storage” safe harbor isn’t applicable because MySpace is doing a lot beyond storage – an argument also made in Viacom. The case continues, though a California state law count was dismissed as preempted. UMG is litigious; it sued two other video sharing sites, one settled and one in discovery.

Cunard also suggested that the CCBill court was actually quite rigorous in enforcing the boundaries of the safe harbors -- many activities relating to processing credit card transactions didn't fall within the safe harbors -- which could be relevant to the UMG/Viacom arguments. At the same time, the court demanded a high level of “red flag” knowledge and a high level of policing by content owners.

Viacom: a key issue is whether there was direct infringement of the reproduction, display and performance rights. If there was, then substantial noninfringing uses are irrelevant. (But not, I think, the safe harbor – as I said on Thursday, the 512(c) safe harbor speaks of infringement that occurs “by reason of” user-directed “storage,” which isn’t one of the exclusive rights of the copyright owner, and I think that it must cover all infringing acts that result from user-directed storage as long as the OSP otherwise complies with the 512 requirements.) Also, there are questions of vicarious liability – direct financial benefit? There’s a YouTube case ahead of Viacom, Tur d/b/a L.A. News Service v. YouTube (C.D. Cal.). Tur’s complaint is not that well pleaded, but briefs have been filed, offering a preview of the Viacom arguments.

Google is also having a rough time outside the US – a Belgian court found Google News infringed several French- and German-language newspapers. This has implications for Google Book Search, given that other countries don’t have fair use doctrines. There is a pending suit in France. Google may be in a “let’s make a deal” mode, given its settlement with Agence France Presse over display of headlines/photographs. This allows Google to use more content than it otherwise could.

And of course the Perfect 10 case is the most anticipated case for the next few months. (I have toyed with the idea of a “Google Law” course. Naturally, we’d start with Cyberspace and the Law of the Horse and Lessig's response, and go from there.)

Google is very excited by Bill Graham because the Second Circuit cites Kelly, but it’s only for the proposition that displaying works in a smaller size for a different purpose can be fair use, which Cunard considers quite different from copying full books and displaying snippets. (Disclosure: D&P represents the publishers in the Google Book Search litigation.)

Blanch v. Koons, Cunard thinks, is more important because of its essential disregard of the earlier Koons cases. It says something significant about asking permission – if there are no other bad faith acts, and if it’s a fair use, no permission need be sought.

Cunard also had some harsh words for the recent Cablevision decision about Cablevision’s on-demand remote DVR services. Who is engaging in the act of copying or display? That’s the key question here as well as in user-generated content cases. Judge Chin found that Cablevision was the one perfoming the relevant acts, but his analysis was not strong. Cunard also cautioned that it was important to distinguish the remote DVR from other products like the Slingbox, which have generated threats but not yet lawsuits. Which rights are implicated? Are there multiple private performances, or public performance?

Another case: XM Satellite Radio’s XM + MP3 device – is this an infringing “download”? The ad: “Hear it. Click it. Save it.” Is it like a tape recorder or a download? The court, unsurprisingly, held that the XM service was not covered by AHRA, which is a dead letter.

Another hot topic, less sexy but important to many, many copyright owners: termination of transfers, an increasingly relevant issue and incredibly complex. Litigation over John Steinbeck’s works gives a foretaste of what’s to come.

Administratively: For the first time, the Copyright Office defined a DMCA exemption by the class of users entitled to circumvent, which is a big development.

Legislatively: Another bill from Rep. Boucher, addressing – among other things – statutory damages for most secondary liability, eliminating them except where a reasonable person couldn’t have believed the conduct lawful. Not much chance of enactment, but still likely to prompt discussion.

Hottest topics in practice: licensing v. “sales.” Every content owner now wants to be in the licensing business, tethering content to DRM and creating short-term use models. This is linked to the future of DRM. After the rootkit fiasco, Sony isn’t using DRM, and EMI just announced it wouldn’t (at least if you pay). Apple has been encouraging this, though some think this is about protecting Apple from pressure on interoperability. We’ll see more action on this in the coming year.

Chief Judge James R. Spencer, E.D. Va.: Spencer thinks Perfect 10 v. Google is likely to be affirmed, because the district court’s result is a reasonable attempt to set comprehensible rules, which judges love, especially when the technology is difficult for judges to understand. (It wasn’t clear to me that he was also endorsing the thumbnails result, but given what he said next he might well have been.) And of course licensing deals are great because judges never met a settlement they didn’t like.