|
|
|
|
|
|
||||
|
|
|
|
|
|
» Home Page » Members » Practice Areas » Clients   » Publications Articles VIP Newsletter Guide to Registering Read Excerpts  » Events & Speaking » Contact Us » 1-800-343-IDEA |
|
U.S. Intellectual Property and New Media Law Update WHO IS RESPONSIBLE FOR “BEAVIS AND BUTTHEAD”? Kodadek v. MTV Networks, Inc., et al. (Ninth Cir. - August 31, 1998) YOU’VE GOT TO STAND FOR SOMETHING BUT IT MAY NOT BE COPYRIGHT Acuff-Rose Music, Inc. v. Jostens, Inc. (Second Cir. - September 4, 1998) SMALL ENTITY SNAFU DH Technology, Inc. v. Synergystex International, Inc. (Fed. Cir. -September 1, 1998) MY, MY, WHAT THEY WON’T THINK OF NEXT Pilot Project on Telephone Disposition of Interlocutory Matters Inter Partes Cases Before the Trademark Trial and Appeal Board (Released- July 20, 1998) WHO IS RESPONSIBLE FOR “BEAVIS AND BUTTHEAD”? Kodadek v. MTV Networks, Inc., et al. (Ninth Cir. - August 31, 1998) This case should be an epiphany for those who find Mr. Beavis and Mr. Butthead as exemplars for their lives. The duo may have been stolen at birth, the resulting shock accounting for their current behavior. For those who don't have cable "Beavis and Butthead" is an animated program on MTV whose principal characters are two slackers, Messrs. Beavis and Butthead. For those who want to learn more about them, see: http://www.beavis-butthead.com/mtv/tubescan/animation/beavbutt/index.html MTV first aired the "Beavis and Butthead" show in 1993 giving credit to Defendant Mike Judge. The Plaintiff alleges that he made numerous drawings of two cartoon characters called "Beavis and Butthead" in February or March of 1991 and that he gave one of the drawings to Mike Judge. Unfortunately for the Plaintiff, he had destroyed or lost his 1991 drawings. Upon learning of the program, he drew new sketches from his memory of the 1991 drawings and filed for copyright protection, asserting in the application that the work was completed in 1991. This copyright was then the basis for the present suit. The District Court granted summary judgment in favor of the Defendants. Plaintiff appealed. The Ninth Circuit confirmed, noting that for a copyright registration to properly issue the applicant must deposit as part of the application a copy or copies of the work. Any statement in the copyright certificate must pertain to the attached work, not a later reconstruction. Plaintiff urged that he should be given an opportunity to prove that his 1993 drawings were virtually identical to his 1991 drawings through eye witness testimony and, thus, the summary judgment was improper. However, the Court pointed out that the Copyright Act does not contemplate the copyrighting of a non-existent original on the basis of a reconstruction. Thus, the Ninth Circuit found that reconstructions, even ones that you can prove accurate, are simply insufficient. A photocopy of the original would be acceptable or a meticulous free-hand drawing of the original made while the artist referred directly to the original would suffice for proper copyright. Plaintiff's drawings, however, were made from memory without direct reference to the originals or bona fide copies of the originals. Thus, the drawings were not copies as permitted under the Copyright Act. The Court went on to find that the state court claims of unfair competition were preempted by the Copyright Act. YOU’VE GOT TO STAND FOR SOMETHING BUT IT MAY NOT BE COPYRIGHT Acuff-Rose Music, Inc. v. Jostens, Inc. (Second Cir. - September 4, 1998) Plaintiff is a music publisher which owns the copyright to a country music song You've Got to Stand for Something, with the refrain, "You've got to stand for something or you'll fall for anything." It was recorded in 1990 by Aaron Tippin and was the fifth best selling country music song in the United States in early 1991. Defendant is a custom ring manufacturer who ran a nationwide advertising campaign for its school class rings in 1992, featuring, you guessed it, "If you don't stand for something, you'll fall for anything." Some of the advertisements even indicated that the "song said it best." Plaintiff sued and the usual series of cross motions for summary judgment ensued. The District Court found the lyrics not original and, therefore, not protectable by copyright. The Court noted that there might be a question of fact on one issue and both sides agreed to a bench trial based on the record compiled in the summary judgment proceeding. After the bench trial the District Court dismissed the suit. The Second Circuit agreed with the District Court. Defendant had submitted to the District Court numerous documents showing extensive usage of the saying which pre-dates the song, including the Bible, Abraham Lincoln, Martin Luther King, Jr., Malcolm X, Ginger Rogers and the Chaplain of the U.S. Senate. When not ascribed to a particular person, it was categorized as an old saying. Among its less distinguished ancestors was John Cougar Mellencamp who recorded an album that included a song called You've Got to Stand for Somethin', which, you guessed it, has the lyrics "You've got to stand for somethin'/Or you're gonna fall for anything." Originality does not mean novelty in this context. It means that it is original to the author, i.e., it was independently created by the author. Thus, if a copyrighted work is independently created by a party and copied by another party, there is an infringement of the copyright regardless of whether the other independent legitimate uses of the same material exists. However, where, as here, the usage is so common that it is clear that the purported author, in fact, did not independently create the work, it lacks the requisite originality. This decision can be seen at: http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/98-7135.opn.html SMALL ENTITY SNAFU DH Technology, Inc. v. Synergystex International, Inc. (Fed. Cir. -September 1, 1998) I don't know about you, but whenever I fill out those Small Entity Verification forms, I wonder what would happen if it turned out there were 501 employees rather than the 499 indicated to me. Well, now we know. Plaintiff is the owner of a U.S. patent relating to a continuous laser printer. The original assignee paid reduced fees to the government based on a claim of small entity status filed August 15, 1990. On November 2, 1990, the large entity (There was some interesting discovery skirmishing with regard to ascertaining the exact number of employees Plaintiff really did have) Plaintiff acquired the patent in suit. When the Notice of Allowance and Issue Fee Due was received on October 18, 1991, it was still marked as a small entity. On January 10, 1992, the attorney prosecuting the application paid the small entity Issue Fee. On August 14, 1992, the attorney recorded the assignments with the PTO. On August 18, 1992, Plaintiff sued on the patent. One of the summary judgment motions in a sea of conflicting motions was that the patent was invalid and unenforceable because Plaintiff paid a small entity Issue Fee. The District Court held that the patent was invalid because the proper Issue Fee was never paid and had not been corrected by the time of trial. The argument before the Federal Circuit came down to whether payment of the small entity fee is governed exclusively by 37 C.F.R. § 1.28(c) or whether 35 U.S.C. § 151 and 37 C.F.R. § 1.317 are also inapplicable to the facts of this case. In English, whether Plaintiff lost the right to correct its payment after the time the payment was due and the general provisions for correction had expired. The Federal Circuit found that the only governing law was 37 C.F.R. § 1.28(c) which allowed correction at any time provided the payment of the amount owing was accompanied by a statement explaining how the error, in good faith, occurred and how and when the error was discovered. This is the sole relevant provision. Thus, the case was remanded for the District Court to determine whether the Plaintiff acted in good faith, i.e., whether Plaintiff fraudulently established its status as a small entity or fraudulently paid the small entity Issue Fee. The decision can be seen at: http://www.ll.georgetown.edu/Fed-Ct/Circuit/fed/opinions/97-1128.html MY, MY, WHAT THEY WON’T THINK OF NEXT Pilot Project on Telephone Disposition of Interlocutory Matters Inter Partes Cases Before the Trademark Trial and Appeal Board (Released- July 20, 1998) The U.S. Patent and Trademark Office has recently initiated a pilot project to speed up contested matters before the TTAB. It has selected a group of three of its staff attorneys to hear arguments on, and dispose of, pending interlocutory motions and related matters by telephone but not dispositive motions. The pilot project will last six months or until the Board has collected enough data to decide whether the expanded use of the telephone is an effective means for managing TTAB cases. For the pilot project, the TTAB will waive the requirements for written submission and service. The staff attorneys will, however, have the option of requiring written submissions. Any opposition or cancellation proceedings that is on or becomes on the docket of one of the participating Board attorneys will be included in the project. The three lucky staff attorneys are Linda McCloud, Jared Rogers and Jyll Smith. The procedures are laid out in a memo by Bruce Lehman which can be seen at: http://www.uspto.gov/web/offices/com/sol/og/1998/week33/PATPHON |
|
|
|
|
|
|
||||
|
|
Call for a free consultation:
|
|