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U.S. Intellectual Property and New Media Law Update LOST WITH THE NATIONAL GEOGRAPHIC Greenberg v. National Geographic Society, et al. (11th Cir. - March 22, 2001) BOGUS BARNEYS Lyons Partnership, et al. v. Morris Costumes, Inc. et al. (4th Cir. - March 20, 2001) THE GAP'S GAFF Davis v. The Gap, Inc. (2nd Cir. - April 3, 2001) ABORTION, THE FIRST AMENDMENT AND THE INTERNET Planned Parenthood of the Columbia/Willamette, Inc., et al. v. American Coalition of Life Activists, et al. (9th Cir. - March 28, 2001) PLEASE NOTE: NOTE: FREE POWER SOCCER SOFTWARE!! We have a free download that contains a challenging Soccer game developed by one of our client's and a little information about our firm. If you are interested in receiving it, please e-mail us at jdrangel@ipcounselors.com. LOST WITH THE NATIONAL GEOGRAPHIC Greenberg v. National Geographic Society, et al. (11th Cir. - March 22, 2001) This case is a case of first impression for the Eleventh Circuit Court of Appeals although a similar issue was recently dealt with in Tasini v. New York Times Co., 206 F3d 161 (2nd Cir. 2000), cert. granted, 69 U.S.L.W. 3312, 3316 (U.S. Nov. 6, 2000) (No. 00-201). The National Geographic Society (the "Society") has produced magazines since 1888. Much like Playboy, its primary interest is its photographs. Jerry Greenberg was a photographer who completed four photographic assignments for the Society over the course of 30 years. The copyrights resided with Jerry. In 1996, the Society, in cooperation with Mindscape, Inc., went digital and produced a work called "The Complete National Geographics"("CNG"), a 30 CD-ROM library that collects every issue of the magazine from 1888 to 1996 ( the "replica") and combined it with an opening montage of ten covers including one by Mr. Greenberg, and a computer program that allowed retrieval of the system images. When the Society issued the CNG it informed all of its authors and photographers that it was a freebie. Mr. Greenberg objected, the suit ensued for copyright infringement for the reproduction of his photographs found in the replica and, secondly, for the use of one of his photographs in the introductory montage. Given Mr. Greenberg owned the copyrights, the Society's right to reproduce the photographs was limited under Section 201(c) of the Copyright Law, i.e., the Society had "acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series." The Society argued that the Greenberg photographs constituted a revision of the collective work, i.e., the magazine. The Eleventh Circuit, however, were unable to stretch the phrase to encompass the sequence and program elements of the CDs and the combination with the montage. Section 201(c) did not give the publisher the right to revise the contribution itself or include it in a new anthology or a different collective work. The opening montage and the sequencing of the replica in the program constituted a new collective work. The Eleventh Circuit pointed to the Society's copyright where it indicated the CNG was a new work i.e., the reproduction of just the previous magazines in date order, would not itself have been copyrightable since it lacked the necessary creative requirement. By creating a new work, the Society forfeited any privilege that it might had enjoyed with respect to reproduce the replica of previous magazines. The Court also found the opening montage infringed upon Mr. Greenberg's right to prepare derivative works based on his copyrighted photograph. This dhttp://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=11th&navby=case&no=0010510OPN BOGUS BARNEYS Lyons Partnership, et al. v. Morris Costumes, Inc. et al. (4th Cir. - March 20, 2001) Plaintiff was owner of Barney, that all too purple dinosaur. Defendant was the marketer of three Barney look-alike costumes for adults: a purple dinosaur, Hillary the Purple Hippopotamus and Duffy the Dragon. The District Court level found the purple dinosaur and the Hillary costume did infringe the Barney copyright but were time barred. The Court of Appeals found that each act of rental was a separate act of infringement and that while some might be time barred by applying the state statute of limitations of the most nearly analogous count to that of copyright, other of the acts were clearly within the period. Laches could not be applied to those acts which fall within the statute of limitations. With regard to Duffy, the District Court found no infringement since adult purchasers would not consider the costume to be Barney. The Fourth Circuit agreed with the Plaintiff that the exclusive focus upon the adults' perspective is too narrow and fails to apply the established copyright principles of that circuit. In making a determination of similarity, the Court must decide whether the works are intrinsically similar in the sense that they express those ideas in substantially similar manner from the perspective of the intended audience of the work. While the District found that Duffy was extrinsically similar to Barney, in some aspects it was not intrinsically similar when viewed from the adult viewpoint. The Fourth Circuit noted evidence of actual confusion among children was substantial. While the District Court had distinguished the audience because the costumes were adult sized and, thus, were rented outside the presence of children, the use would have been directed towards children and were the primary influence in the purchase decision. The fourth Circuit reversed. For whatever reason the District Court may have had for leaving poor Barney undefended, the Fourth Circuit stood up and sung "I love you, you love me, we're a happy family with a great hug and a kiss from me to you. Won't you say you love me too?" I am sure that Barney does love the Fourth Circuit. The decision can be viewed at: http://caselaw.lp.findlaw.com/cgi_bin/getcase.pl?court=4th&navby=case&no=992255P THE GAP'S GAFF Davis v. The Gap, Inc. (2nd Cir. - April 3, 2001) The Plaintiff designs bizarre non-functional jewelry worn in the manner of eyeglasses. The Gap brought together a group of Asian-American clubbers for a print media ad campaign. The clubbers were told to bring their own eye wear, one of them wore Plaintiff's jewelry. In the resulting ad, that person and his jewelry were quite prominent. To make a long story short, jeweler sued, Gap moved for summary judgment below and the District Court granted it. The Second Curcuit analyzed the two primary methods of obtaining compensation under the Copyright Act, actual damages and Defendant's profits. The statute only requires that the Plaintiff introduce evidence as to the Defendant's gross profits. With regard to Defendant's profits, transferring the burden to Defendant to indicate what profits were derived from the copyright, that meant something more than the total profits of the parent company. Specifically, it meant those profits that could, in any way, be derived from the copyright infringement in question. Since the Plaintiff introduced only evidence as to the overall profits of the company rather than the division involved or the eyeglass portion of that company, it failed to meet its initial burden. With regard to actual damages, after a suitable amount of toing and froing, the Court decided that actual damages would include potential lost royalties Plaintiff would have received if Defendant had licensed the product. The Court also found that given the prominence of the eye jewelry in the advertisement, its use was more than de minimis. This was not fair use since it was not only transformative, it superseded Plaintiff's copyright by taking the design while avoiding the customary price. While the Court reversed, it left Plaintiff with something close to its customary fee of $50 as the award. All in all, a rather small compensation and one wonders if a settlement for a few thousand dollars early on would have saved the Gap Debevoise & Plimpton's normal billing rate. The decision can be viewed at: http://caselaw.lp.findlaw.com/cgi_bin/getcase.pl?court=2nd&navby=case&no=999081 ABORTION, THE FIRST AMENDMENT AND THE INTERNET Planned Parenthood of the Columbia/Willamette, Inc., et al. v. American Coalition of Life Activists, et al. (9th Cir. - March 28, 2001) While this case only peripherally deals with intellectual property, it is an important First Amendment case dealing with statements on the world wide web and, as such, of interest to the intellectual property attorney. Also the prevailing lead counsel is a friend of mine. Here, the Defendant, the American Coalition of Life Activists both in print media and on the web listed twelve doctors who did abortions including their home address and phone number. There were no overt threats of action or direct calling on others to do so. At best, or from the other side, at worst, there was an indication that some day in the future there may be Nuernberg style trials against such doctors declaring them guilty of crimes against humanity and offered $5,000 for information leading to the arrest, conviction and revocation of their licenses to practice medicine. Only when speech passes the line and becomes actual threats and calls to illegal direct action, is the First Amendment right overcome. The constitutional distinctions are fine. In an extensive discussion, the Ninth Circuit felt that this line had not been reached in the advertisements here and, accordingly, overturned an injunction and a $100 million award. Judge Kozinski, as always, wrote the logical and well thought out opinion. The decision can be viewed at: http://caselaw.lp.findlaw.com/cgi_bin/getcase.pl?court=9th&navby=case&no=9935320 |
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