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U.S. Intellectual Property and New Media Law Update COPYRIGHT INFRINGEMENT DICHOTOMY Matthews v. Freedman et al. (First Cir. - October 9, 1998) AOL NOT AS WELL KNOWN IN PRINT MEDIUM In re America Online, Inc. (TTAB -September 10, 1998 (not citable as precedent)) WHAT SECRETS DOES AMAZON.COM KNOW AND WHEN DID IT KNOW IT Wal-Mart Stores, Inc. v. Amazon.com, Inc.et al. (Chancery Court of Benton County, Arkansas - October 16, 1998) IS “USE” THE SAME AS “COPYING”? Ohio v. Perry (Ohio Supreme Court - August 19, 1998) COPYRIGHT INFRINGEMENT DICHOTOMY Matthews v. Freedman et al. (First Cir. - October 9, 1998) Plaintiff owns a copyright for a children's t-shirt bearing across the front "Someone Went to Boston and Got Me This T-Shirt Because They Love Me Very Much." The phrase is surrounded by small childish drawings of a fish, a sailboat, a lobster, Faneuil Hall and scattered hearts. Several years later, Defendant began offering a children's t-shirt with the slogan, "Someone Who Loves Me Went to Boston and Got Me This Shirt." The phrase, as it appears on Defendants' t-shirt, is surrounded by childish drawings of a fish, a sailboat, a lobster, a swan boat, ducklings and a smiling sun. Defendant had access. After a non-jury trial, the District Court found for the Defendant on the grounds of non- infringement of the protectable elements of the Plaintiff's design and awarded $25,000 worth of attorneys' fees. The First Circuit Court of Appeals decision rested upon the blurry no man's land between two axioms of copyright law: (1) copyright only protects the original expression or ideas but not the ideas expressed; and (2) infringement of a copyright can be found to exist even when the Defendant does not copy the original expression in a literal manner, word for word or image by image, i.e., the work is substantially similar. A "tension" exists since an alleged infringing work, taken as a whole, may seem "substantially similar" to the copyrighted work taken as a whole, but the overall similarity may rest heavily upon similarity of the two works as to elements that are not copyrightable, e.g., the underlying ideas or expressions. It found that the District Court correctly eliminated all the unprotectable elements before comparing the remaining protectable elements. The comparison then showed the differences between the two works which precluded a finding of infringement. There were differences in the particular drawings selected, their arrangement, colors and lettering. Similarity in the wording of the statement on each t-shirt arose simply from the fact that they were trying to convey the same unprotectable idea. The decision can be viewed at: http://www.law.emory.edu/1circuit/oct98/98-1408.01a.html AOL NOT AS WELL KNOWN IN PRINT MEDIUM In re America Online, Inc. (TTAB -September 10, 1998 (not citable as precedent)) American Online, Inc. filed an application to register the designation "AOL" as a trademark for "publications, namely books and pamphlets dealing with the subject of computer services and computer networks." The only specimen offered in support of the application was a hard copy of a page from an on-line publication with "The Official AOL For Windows Tour Guide" positioned at the bottom of the electronic page. After final refusal, AOL appealed. The TTAB affirmed the refusal on two different, but interrelated, grounds. First, the TTAB found that AOL did not have a separate and distinct commercial impression apart from the other wording with which it is used. Any familiarity of the public as to AOL as a source of computer network services does not necessarily extend to the use of AOL in connection with printed publications, generally, even when the subject matter is computer services and computer networks. The other words which appear with the designation AOL in the phrase "The Official AOL For Windows Tour Guide" are suggestive rather than descriptive of applicant's goods and thus could not be discounted. Their elimination would be a mutilation of the mark. The Board also went on to find that the purchasing public would interpret "The Official AOL For Windows Tour Guide" as the title of a single work rather than a series of books or pamphlets. Applicant claims it has various other uses such as "AOL's Tour Guide for DOS" and "AOL's Tour Guide for Windows 95" as well as an AOL keyboard, key word publication and AOL games guide and various other documents printed on paper publications. Applicant has offered no proof as to the existence of any such other publications except to mention them in arguments. Absent proof of such use and that the public would perceive the use of AOL as a series name, it is merely part of the title of a single publication. The decision can be viewed using an Acrobat reader by going to: http://www.uspto.gov/web/offices/com/sol/foia/ttab/other/1998/1998.htm and selecting "74724879". WHAT SECRETS DOES AMAZON.COM KNOW AND WHEN DID IT KNOW IT Wal-Mart Stores, Inc. v. Amazon.com, Inc.et al. (Chancery Court of Benton County, Arkansas - October 16, 1998) Wal-Mart has filed a complaint in Chancery Court in Benton County, Arkansas, against Amazon.com. The complaint alleges that Wal-Mart has developed certain trade secrets to enable Wal-Mart to compete effectively and competently against other merchants, especially in the area of "data warehousing" and that Amazon.com targeted its employees in an effort to obtain superior information systems technology and information regarding its highly advanced distribution systems. Causes of action are alleged under the Arkansas Trade Secret Act for conspiracy, for unjust enrichment and constructive trust, and for tortuous interference with business relationships. It will be interesting to see what discovery brings forth. The decision may be viewed at: http://www.ljx.com/LJXfiles/tradesecrets/wal-mart_cplt.html IS “USE” THE SAME AS “COPYING”? Ohio v. Perry (Ohio Supreme Court - August 19, 1998) Defendant Perry was indited under Ohio State Law on two counts of unauthorized use, two counts of theft and one count of possession of criminal tools in connection with his operation of a computer bulletin board. Essentially the Defendant had been running a bulletin board for people to share computer software. Apparently, the bulletin board was run on a stolen operating system to provide unauthorized software from other companies. Although not stated, it would be assumed it was a Windows NT system. On appeal of the unauthorized use counts to the State Appellate Court, the judgment was reversed and the trial court was ordered to grant the motion to dismiss. It was then appealed to the Ohio Supreme Court, who, by this opinion found that the prosecution of state charges of unauthorized use based solely upon the unauthorized uploading, downloading and posting of computer software on a computer bulletin board was preempted by the federal copyright laws. The Court did not find the existence of any extra element in the state law which would distinguish the claim from the claim in copyright. There was an interesting dissent by Judge Lundberg Stratton noting that the statute in question requires for violation that "knowingly use or operate the property of another without the consent of the owner or persons authorized to give consent." This Judge noted that the state statute requires unauthorized use for violation which is qualitatively different from unauthorized copying. The affront here would not be the copyright law but the software licensing agreement normally offered by the software owner. While a computer program must necessarily be copied to be used, the act of making the program available to others in violation of the agreement of a license is the "extra element" required for the state charge of unauthorized use. The decision can be viewed at: http://www.lweekly.com/ohsc/970628.htm |
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