Brave new world that has such software in it

Right of publicity violation?  New porn services encourage people to uploadpictures; the services’ facial recognition technology will allegedly find pornperformers who are lookalikes for the subjects. 

RTFS

Not that I'd ever put it in those terms to a student, but, really, in copyright: you have to read the statute.  For reasons not worth exploring at this juncture, I'm reading the briefs in Garcia v. Google, the case brought by the actress in the Innocence of Muslims case where she claims to own the copyright in ... something.  Her performance as fixed in the film, is the best way to say it.  One of Google's arguments is that, under the CCNV test, she was an employee working within the scope of her employment, and her lawyers' outraged response is that there was no written agreement making her contribution a work for hire.

17 U.S.C. 101: A “work made for hire” is—

(1) a work prepared by an employee within the scope of his or her employment; or  

(2) a work specially ordered or commissioned ... if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

While I express no opinion on the merits of Google's analysis of whether Garcia was an employee using the multifactor CCNV test, Garcia's claim would be more credible if Garcia's lawyers spent less time being wrong.

Kids as less careful consumers?

This is in the doctrine, but it's a terrible lie.  More credulous consumers, yes, but when it comes to brand awareness, kids are exquisitely sensitive.  My son received a party favor from this company:

What did you get? I asked him.  "A Pezzy thing.  But not Pez," he immediately responded.  Who knew there was more than one brand of this thing?

Math and advertising

Over at the informative All About Advertising Law blog from Venable, the authors ask "what does a lifetime supply really mean?"  They describe one calculation method that, as described, seems obviously wrong to me: "For the Gumball.com promotion, the company took the average life expectancy of a U.S. citizen, subtracted it by 18 (the minimum age of entry) and multiplied the difference by 365, representing one gumball per day."  Though the US is a low infant-mortality nation and the final number doesn't differ much, the proper calculation is life expectancy at age 18, which isn't the same as life expectancy at age 0 - 18.  Science is the lawyers' friend!

Reproduction and accuracy

The Art of Reproduction has taken images of famous artworks from across the web and created mosaics to show variations in color (as well as framing).  Here's 8 Kens and Roberts, after Mapplethorpe's Ken Moody and Robert Sherman:

The Hollywood Reporter on TM claims against films

One of the key sentences: "Nevertheless, for a number of technical legal reasons, some attorneys say that trademarks now serve as better weapons in court than more traditional copyrights, harder to defeat at the early stages of a lawsuit."  Unfortunately, the story suggests, Hollywood is learning the wrong lesson: try to interfere with legitimate uses (such as uses of public domain works or works whose copyright has been recaptured by the original author using termination of transfer) with trademark claims.  Let's hope that part is wrong.

Self-dilution

So what happens if the cake you serve made using this Coca-Cola bottle shaped pan is terrible?

Also, browsing the Coca-Cola rewards pages suggests that there's no such thing as an unlicenseable product.  A Diet Coke scarf?  A Diet Coke makeup bag?  (Gender is also a big thing.  You can't get a Coke makeup bag, but you can get a Coke Zero apron to go with your chips 'n dip.)

Pictures or it's not false advertising

The FTC, as part of its efforts to increase compliance with rules around mortgage ads/disclosures, has released some mock ads to show what deceptive/noncompliant advertising looks like.  In the past, the FTC has also used mock ads to illustrate good and bad disclosures; I think this is a helpful way to give concrete guidance, going beyond the traditional focus on the words alone.

"original" claim as false advertising

Zobmondo Entertainment LLC v. Imagination Intern. Corp., 2009 WL 8714439 (C.D. Cal.)

This opinion is old, but Westlaw just coughed it up, perhaps because of a related jury finding that Zombondo infringed the Would You Rather …? mark and was liable for significant damages.  I’m going to write about the older opinion because it addresses an issue near and dear to my heart.  On these facts, in 1998, Zobmondo “introduced the first board game based on the traditional conversational game known as ‘would you rather.’”  Imagination later debuted its own board game titled “Justin & David's Original Would You Rather ... ? Board Game.”  Zobmondo alleged that “Original” constituted false advertising. 

Imagination moved to dismiss based on Dastar, and the court denied the motion.  Zobmondo pled that “original” falsely conveys that Imagination’s game was earliest/first in time, when it wasn’t.  The claim was not about who was responsible for originating the concept of the game, but rather who was the first to make a “would you rather” board game.  Thus, this was a claim of alleged misrepresentation about the production of the physical good.  Also, it was a §43(a)(1)(B) claim, as preserved by Dastar.  No interaction with copyright or patent law was implicated, nor would any determination be required of who came up with the idea of the board game.

In addition, the court found that “original” was not, as a matter of law, puffery.  Who made the first “would you rather” board game was not subjective and was falsifiable.  But Imagination was free to raise puffery later, if the evidence showed that no one would ascribe that particular meaning to “original” in this context.

Referential uses don't cause blurring: an example

I love clever ads that use another, noncompeting entity's trademark to make a point about the advertiser's own services--Tracfone's "Even Viagra couldn't make this hard" touting the simplicity of its calling plan is a personal favorite--and I just came across this actual litigated case involving one: Jennifer Leather's "Only Revlon has more colors."  Revlon Consumer Products Corp. v. Jennifer Leather Broadway, Inc., 858 F.Supp. 1268 (S.D.N.Y. 1994).  Given the age of the case, it's perhaps not surprising that there's no initial interest confusion argument; defendant prevailed, even against Revlon's state dilution claim, because Revlon couldn't show confusion and because there was no incongruity the court could see between the meaning of "Revlon" sought by Revlon and the meaning of "Revlon" invoked by Jennifer Leather.

Boop-oop-a-do-over

Fleischer Studios, Inc. v. A.V.E.L.A., Inc., No. 2:06-cv-06229 (C.D. Cal. Nov. 14, 2012)

The 9^th Circuit withdrew its first opinion in this case, substituting one that affirmed the dismissal of Fleischer’s copyright claims and trademark claims based on the image of Betty Boop, while remanding for more clarification of the district court’s holding on the Betty Boop word mark.  Fleischer, the successor in name but not in interest to the original Fleischer Studios, had a registered trademark in “Betty Boop.”  The court of appeals reversed the ruling that the word mark’s fractured ownership history precluded secondary meaning, finding a triable issue of fact.  The district court has now provided that clarification, holding that defendants’ use of “Betty Boop” was, in context, aesthetically functional, nonconfusing, and fair use.

Defendants, like Fleischer, license Betty Boop merchandise.  Defendants’ merchandise incorporates elements from vintage movie posters (correction: some of the copyright status is disputed, but Fleischer isn't the copyright owner and has no standing to object on copyright grounds, per previous rulings); these elements include both images of Betty Boop and the words Betty Boop. 

While the original court of appeals ruling was withdrawn, the district court still found its reasoning “sound and applicable.”  Fleischer argued that there’s no such thing as aesthetic functionality in the 9^th Circuit.  While the court here acknowledged “some confusion,” it found that Au-Tomotive Gold made clear that the doctrine, while limited, was nevertheless viable, and Job’s Daughters was still good law.  That case held that trademark law “does not prevent a person from copying so-called  ‘functional’ features of a product which constitute the actual benefit  that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.”  To distinguish between these two poles, the court must examine the goods themselves, the defendant’s merchandising practices, and evidence of consumer reaction.  Au-Tomotive Gold set out a two-step test: the court must first ask whether an allegedly significant non-trademark function is essential to the use or purpose of the article or affects its cost or quality; if that’s not present, the court should still determine whether trademark protection would impose a significant non-reputation-related competitive disadvantage.

The district court examined the products, merchandising practices, and evidence of consumer reaction in the record, and found that, as a matter of law, defendants’ use was not a trademark use.  As in Job’s Daughters, the defendants used the words Betty Boop prominently on their products, including t-shirts bearing movie poster images, dolls, and packaging adapted from movie posters.  “Betty Boop” was a decorative component: “part and parcel of the aesthetic design of those goods.”  Defendants never labeled their merchandise “official” or otherwise indicated that it was sponsored by Fleischer, but rather identified defendants as the source.  Given the combination of “Betty Boop” as artistic design element and defendants’ own source-identification, “Betty Boop” simply couldn’t be seen as source-identifying.  Unsurprisingly, Fleischer didn’t present a single instance of consumer confusion as to origin or sponsorship.

Apparently treating “trademark use” and “aesthetic functionality” as separate but related inquiries, the court then held that these same considerations rendered the use of the words Betty Boop aesthetically functional.  Though the T-shirts would still be wearable without the words, and the dolls would still be toys, and would function in that sense (the court didn’t address whether this would affect the “quality” of the article, though I think it plainly would), “protection of the feature as a trademark would impose a significant non-reputation-related competitive disadvantage” on defendants.  Defendants are entitled to market goods with Betty Boop’s image, but those products would be less marketable than the same product without the name, because Betty Boop names the famous character depicted on the goods/movie posters.  (This is also understandable as a genericity ruling.)  For example, one doll’s package has imagery from a Betty Boop movie poster, and a product tag that’s a miniature reproduction of the poster.  The poster says: “Adolph Zukor presents BETTY BOOP with HENRY the Funniest Living American.”

Removing the words BETTY BOOP from these items would render  the textual aspect of the poster reproductions incomplete and the remaining words would be nonsensical.  It would be obvious to the average consumer that such merchandise would be missing something. Clearly, merchandise that is missing something is less marketable and therefore at a competitive disadvantage.

Also, given that the use wasn’t source-identifying and didn’t trade on any source’s reputation (as opposed to the reputation of Betty Boop, which defendants were free to provide), barring defendants from using the words would impose a significant non-reputation-related competitive disadvantage.

In the alternative, the use was descriptive fair use.  It referred to a characteristic of defendants’ products: they featured Betty Boop. Whether a use is “otherwise than as a mark” depends on several factors in the 9^th Circuit, including whether the term is used to attract public attention and whether the user took precautions such as labeling to minimize the risk that the term would be used in its trademark sense.  Here, the use was in connection with products bearing Betty Boop’s image.  “It is extremely unlikely that a prospective consumer would understand those words as identifying the source of the goods rather  than merely naming the character.”  And defendants indicated themselves as the source.  As a matter of law, this was use other than as a mark.

Likewise, there was no triable issue on whether defendants were using the words in their descriptive sense: there were no other words available to describe Betty Boop, and the words “self-evidently” describe the goods.  (This result could also have been achieved with nominative fair use, though that would presuppose the validity of plaintiff’s mark.)  Given that defendants had the right to use the character despite Fleischer’s objection, they must necessarily therefore be able to identify the character by name.  And no jury could find bad faith in the sense of intent to capitalize on Fleischer’s goodwill, because defendants weren’t using the mark as a source-identifier.

Finally, just in case you were worried, there was no triable issue of fact on likely confusion. The court didn’t run through the Sleekcraft factors because of the absence of trademark use.  That test assumes that the defendant’s use is a trademark use, referring for example to the similarity of the “marks” and defendant’s intent in using the “mark.”  Here there was no source-identifying use, and thus no way that the use could create the impression that the goods originated with anyone in particular.  Fleischer invoked the doctrine of legal equivalents—words and pictures that have the same meaning can be confusingly similar.  Thus, Fleischer argued, the court should find that images of Betty Boop infringed the Betty Boop word marks.  Yes, they were equivalents, but that didn’t help Fleischer, since there was still a trademark use requirement, and Fleischer didn’t argue, much less show, that defendants’ use of the Betty Boop image was a trademark use.  She didn’t look the same on all of the goods, so that was evidence against use as a mark, along with all the reasons that defendants’ use of the name wasn’t source-identifying.

Descriptive trademark means uniqueness claim wasn't false

Continental Datalabel, Inc. v. Avery Dennison Corp., 2012 WL 5467667 (N.D. Ill.)

Continental and Avery compete in the market for self-adhesive address labels.  Continental sued for patent infringement, unfair competition/false advertising, and tortious interference with its dealings with Staples and Office Depot.  The patent claims were stayed pending reexamination.  The court here granted summary judgment to Avery on the Lanham Act and tortious interference claims.

In 2006, the parties began to market easier-to-peel labels: Avery’s Easy Peel and Continental’s FastPly.  Each product’s backing sheet was perforated, allowing them to be torn into columns that exposed the edges of the labels.  This enabled easier peeling than traditional backing sheets did.  In 2008, Avery introduced its next generation of Easy Peel labels, which could be folded rather than torn and thus a partially used sheet could be flattened and even re-run through a printer.  Avery’s instructions advised users not to put a sheet through a printer more than once, but many consumers did so, and Staples saw this capability as an advantage.  Rather than revamping the FastPly labels, Continental tested them and concluded that they could also be folded to make the labels “pop up” without needing to be torn.

Avery’s 2008 advertising materials claimed “Only Avery label sheets bend to expose the Pop-up Edge™” and “Only Avery offers the Pop-up Edge™ for fast peeling—just bend the sheet to expose the label edge.”  Avery also applied to register Pop-up Edge with the PTO; its application was granted in 2010, and Continental didn’t challenge its validity.

Continental unsuccessfully sought to place its products in Staples and Office Depot, allegedly because of Avery’s threats to sue for patent infringement, despite not having relevant patents at the time (a patent was later granted).  Two Continental officers were told by Staples and Office Depot representatives that those retailers feared a patent suit from Avery, as did others.  In 2009, an Avery rep sent an email to Staples stating, “Once the patents are granted Avery will aggressively defend its IP [intellectual property],” and an internal Avery document from mid–2008 referred to the Easy Peel labels as a “Patented Avery Exclusive” well before Avery had actually been granted a patent.

The Lanham Act claim was that the “Only Avery” statements were false because FastPly labels could also be folded to expose their edges without being torn.  The court began by quoting the unfortunate, intent-heavy language from Schering-Plough: “‘literal’ falsehood is bald-faced, egregious, undeniable, over the top.... The proper domain of ‘literal falsity’ as a doctrine that dispenses with proof that anyone was misled or likely to be misled is the patently false statement that means what it says to any linguistically competent person.”

Plainly, the “Only Avery” claims were that only Avery had something called “the Pop-up Edge™.”  But what was that—the generic feature of bendability so that edges pop up, which for purposes of this motion the court assumed that FastPly also possessed, thus making the claim false?  Or instead a trademarked feature—the particular version of that function carrying the “Pop-up Edge” name—which would be true? 

This is where falsity by necessary implication would be very useful.  The “only Avery” claim doesn’t make sense as a reason to buy unless the claim is about functionality—why would a consumer care that the name of Avery’s implementation of the functional feature is trademarked?  But the court didn’t agree, and instead held that no reasonable jury could find that Avery was referring to the function instead of the mark.  LensCrafters, Inc. v. Vision World, Inc., 943 F.Supp. 1481 (D. Minn.1996), supported this—the court there held that claims to be the exclusive supplier of “Featherwate” lenses wasn’t false even though identically composed unbranded lenses were widely available, and Featherwate was just as descriptive as Pop-up Edge was.

Analogizing to a far more famous mark, Avery argued that while a McDonald’s ad claiming “only McDonald's serves hamburgers with quarter-pound patties” would be literally false, an ad that “the Quarter Pounder® hamburger is available only at McDonald's” would not be false.  I think this analogy proves the exact opposite: the non-TM-claimed parts of the statements “Only Avery label sheets bend to expose the Pop-up Edge™” and “Only Avery offers the Pop-up Edge™ for fast peeling—just bend the sheet to expose the label edge” explicitly refer to the functionality of the pop-up edge, thus directing consumers to think about the descriptive aspects of the phrase even if it also has trademark significance, similar to the false “quarter-pound patties.”  Likewise, note that Quarter Pounder, not Quarter Pounder hamburger, is the mark for McDonald’s, while for Avery the claimed mark states the whole product feature, again making it more likely that consumers would understand the claim to encompass the feature and not just its source.  (In other words, the fact that Avery’s mark is for a feature, not for a product or service as a whole, the way a traditional trademark is, may well affect consumer understanding.)  

Since no reasonable jury could find literal falsity, the court turned to misleadingness.  Continental offered an expert survey of likely users of self-adhesive labels.  The test cell used the “Only Avery” statements and the control cell used the same statements without “only” and “unique.”  The questions:

What does this sentence communicate or say regarding how many label companies offer this feature? (Read each possible answer and then choose one)

______ No label company offers this feature

______ Just one label company offers this feature

______ Two label companies offer this feature

______ Three or more label companies offer this feature

______ This sentence does not say how many label companies offer this feature

In the test cell, 82.1% or 82.5% selected “just one label company offers this feature,” while 34.4% and 36.7% of the control group did so. But the court found that this survey just proved the unremarkable proposition that “only” and “unique” convey exclusivity to many consumers.  But the pertinent question was not exclusivity, but exclusivity as to what, and the survey didn’t answer that question.  Thus, there was no evidence of misleadingness, and summary judgment was granted to Avery.

Continental also lost its tortious interference claim because it couldn’t show an intentional and unjustified interference that induced or caused the loss of a business expectancy.  Had Avery claimed to hold a patent, not just a pending patent application, or had it claimed that it was going to sue for infringement of its patent application, those statements would have been false and unjustified, but Continental didn’t provide enough admissible evidence from which a reasonable jury could find that Avery actually made either of those statements.  Continental’s witnesses testified that Staples and Office Depot believed that Avery, rather than Continental, had a patent on the product, but their testimony was hearsay.  Avery’s direct statement, which was in essence that it would sue anyone it saw as an infringer once its patent was granted, wasn’t false, and in fact federal patent law would preempt any state law imposing liability for warning of potential patent litigation, without bad faith, and there was no evidence of bad faith.

Oral music deal leads to multiple claims and Dastar problems

Ward v. Mitchell, 2012 WL 5301475 (N.D. Cal.)

Matthew Ward alleged that he was a famous musical recording artist and songwriter. In 2001, he wrote fifteen compositions for an album, “End of Amnesia,” released by defendants.  He alleged that Mitchell repeatedly represented that defendants would enter into a written agreement to pay him for the right to use the sound recordings and musical works in “End of Amnesia,” but never did so.  Still, Ward created sound recordings of his compositions and allowed defendants to hold the masters pending a written agreement.  Ward registered the copyrights in 2005.

Ward initially filed a state court lawsuit alleging that defendants were selling his material without a license, then dismissed and refiled in federal court when it was pointed out that copyright claims are subject to exclusive federal jurisdiction.  (The specter haunting the claims here, it seems to me, is Rano v. Sipa Press, 987 F.2d 580 (9th Cir. 1993), which holds that even an oral, nonexclusive license is not revocable until the 35-year period has passed in the absence of a different express or implied period; while breach could entitle Ward to terminate the license, in the 9^th Circuit he’s otherwise out of luck.)

The court rejected the argument that the entire claim was barred by the statute of limitations; the complaint only sought damages for the last four years, and damages from beyond that period would likely be barred, but no determination needed to be made without a record.  Ward also adequately pled a claim for breach of an oral contract, including a promise to enter into a written agreement, and a claim for fraud.  However, the court also denied a request for judicial notice of a C&D email from Ward’s attorney, which if properly authenticated would be “strong evidence” against the fraud claim.  “Also, it is worth noting that one can only wonder, if the allegations are true, why plaintiff sat on his rights for almost a dozen years, knowing full well that he had been defrauded; still, we are only at the pleading stage and the claim must go forward.”

Plaintiff’s claim for conversion of the master recordings also survived, though not his claim for conversion of profits from the sale of the album, since a claim for generalized money isn’t a conversion claim.

Ward’s California UCL claims were that “defendants attempted to take complete control over the copyrighted works and profitably promoted their record label by representing to the public that they had the authority and consent to exploit plaintiff's copyrighted material.”  (Though not raised by defendants, put this way the claim seems like an excellent candidate for preemption based on Dastar.  If the Lanham Act would conflict with the Copyright Act when interpreted in this way—where the alleged misrepresentation comes, as far as I can tell, from mere sales/distribution of works labeled truthfully as being written & performed by Ward—then conflict preemption would also get rid of a state law claim premised on the same allegations.  Admittedly, few courts have noticed this; and see below.)

The court found this claim unclear about the underlying violation of the law.  And to state a claim based on the fraudulent prong of the UCL, the complaint must satisfy Rule 9(b), which it didn’t—general claims of deception based on defendants’ “representing ... that they have the authority and consent to exploit [p]laintiff's copyrighted material” were insufficient.

Ward also brought right of publicity claims, as to which defendants did argue preemption.  Here, at the pleading stage, the court found that the allegations went beyond rights equivalent to any of copyright’s exclusive rights: misappropriation of Ward’s identity for the purpose of promoting defendants’ record label and website.  That went beyond being based entirely on alleged unauthorized distribution of copyrighted material.  (I’m assuming that if it turns out that the website just says “we are proud to have End of Amnesia in our catalog,” or some such, this claim fails.  At least I hope so.  Also, note that Dastar conflict preemption would go beyond §301, all that’s analyzed here, and I think Dastar would definitely cover the “we are proud” hypo.)

Ward’s Lanham Act claims were similar: that “by using his name, likeness, and musical works within the promotion of defendants' business and record label, defendants have deceived the public into believing that plaintiff is affiliated and/or participating in the promotion.”  In addition, Ward alleged that defendants “deceived and confused the public into believing that defendants have the authority and consent to sell and/or distribute plaintiff's musical compositions, constituting unfair competition.”  The court found that this failed to state a claim for false designation of origin (not mentioning Dastar) but did state a claim for “false representation in advertising/promotion.”  Obviously, there are a bunch of post-Dastar cases that are relevant here, and perhaps they’ll get a workout later.  (Even if this claim survives Dastar, would a consumer’s belief as to defendants’ “authority and consent” be material to a purchasing decision?  Seems unlikely if the works really were written and performed by Ward; why would a consumer care about the details of the contract?)

Fair use question of the day

Overthinkingit's deconstruction of Call Me Maybe, originally blocked on YouTube.  Maybe young Harvard guys are more acceptable than Foucault?  In comments, Fred von Lohmann speculates (disclaiming any specific knowledge) that perhaps Overthinkingit made use of YouTube's dispute resolution mechanism, but that would still leave the interesting question of why a stop-start rendition interspersed with commentary, which clearly couldn't function as a replacement for the official video, needed to use the dispute resolution mechanism when, for all that I can tell, the lipsyncing Harvard guys never did.  One possibility is that even with the commentary the use of some clips of the official video triggered an automatic filter because of the sound/video match.

My former colleague David Vladeck at the FTC

Via Consumer Law & Policy Blog, here's an Adweek story on the FTC's revitalized approach to false and misleading advertising, and BCP Director Vladeck's role in it.