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U.S. Intellectual Property and New Media Law Update FREELANCE RIDES HIGH New York Times Co. Inc., et al. V. Tasini, et al, (2001) THE PARALEGAL PRIVILEGE HPD Labs, Inc. v. Clorox, 2001 U.S. Dist. Lexis 8231 (D.N.J. 2001) COLLECTIVE REGISTRATION Morris v. Business Concepts et al., (2d Cir. 2000) SAVING VENICE In re Save Venice New York, Inc., (Fed. Cir. 2001) FREEDOM FROM COPYRIGHT County of Suffolk v. First American Real Estate Solutions, (2d Cir 2001) NO COPYRIGHT IN A PART NUMBER Southco, Inc. v. Kanebridge Corp., (3d Cir. 2001) FREELANCE RIDES HIGH New York Times Co. Inc., et al. V. Tasini, et al, (2001) In the October 18, 1999 issue, we wrote about the Second Circuit's decision giving freelance authors rights against republication of their articles in electronic databases. Here, the Supreme Court confirms the rights of independent contractors, absent an agreement, not to have their articles included in computer databases containing articles from hundreds of periodicals. Where a freelancer has contributed an article to a collective work, copyright in the contribution vests initially in the author. Copyright in the collective work vests in the collective author, i.e., the publisher. The publishers copyright extends only to the creative material contributed by it, not to the pre-existing material employed in the work. Under the provisions of Section 201(c), a publisher may reprint a contribution from one issue in a later issue of the magazine but cannot revise the contribution itself or include it in a new anthology or an entirely difference collective work. The Supreme Court found that the inclusion of the articles in these databases is not such a sanctioned activity since the databases are not organized as the original collective work and actually form part of a new compendium consisting of all the works in the database. The publishers warning to the court that the ruling would have devastating consequences, punching gaping holes in the electronic record of history was to no avail, since the publishers can enter into agreements with the freelancers. This decision can be viewed at: http://caselaw.lp.findlaw.com/cgi_bin/getcase.pl?court=US&navby=case&vol=000&invol=00_201 THE PARALEGAL PRIVILEGE HPD Labs, Inc. v. Clorox, 2001 U.S. Dist. Lexis 8231 (D.N.J. 2001) This is one of our own cases which we believe is of general interest. Here, we represented Plaintiff in an ongoing patent and false advertising claim under the Lanham Act. In proceeding with the packaging and advertising of a product, the defendant consulted an in-house legal specialist as to product claims on the package. The legal specialist was not an attorney and gave advice without consulting an attorney. Plaintiff requested the production of documents with regard to such advice and was refused. Magistrate Judge Chesler found that under the precedent in the Third Circuit, where there were both state and federal claims, the question of privilege was decided under the Federal common law. Under federal common law, the test is whether the communication was "for the purpose of obtaining legal advice from an attorney or to assist an attorney to formulate and render legal advice to a client". Magistrate Judge Chesler went on to then find that under the circumstances in this case, the legal specialist was not acting as a conduit, but was giving her own advice and as such, that advice was not privileged. The decision can be viewed at: http://www.ipcounselors.com/hpdclorox.htm COLLECTIVE REGISTRATION Morris v. Business Concepts et al., (2d Cir. 2000) Plaintiff bought an action for copyright infringement of an article in a magazine based on the registration of the collective work in the magazine in which the Plaintiff article initially appeared. Here, the Second Circuit found that the copyright in the collective work was not sufficient for the author of the article to maintain an infringement action against a third party for copying one of the articles. Where the owner of the copyrighted collective work also owns the copyright for constituent parts of the work, registration of the collective work is sufficient to permit an infringement action. Thus, if the Plaintiff could establish that Conde Nast owned the copyright at the time it registered the collective work then the registration was adequate to cover the create subject matter jurisdiction. The Plaintiff argued that because Conde Nast was an exclusive licensee of the article, it was copyright owner of it and therefore its collective work registration also covered the individual articles. Thus the question before the Court was whether an exclusive licensee could be considered a copyright owner capable of satisfying the registration requirement. The Court found that an exclusive licensee is not a copyright owner for the purposes of ownership of the collective constituents of the work and thus its registration did not afford copyright protection to the individual article. The decision can be viewed at: http://csmail.law.pace.edu/lawlib/legal/us_legal/judiciary/second_circuit/test3/00_7509.htmL SAVING VENICE In re Save Venice New York, Inc., (Fed. Cir. 2001) Save Venice is a not-for-profit New York Corporation devoted to preserving and restoring the treasures of Venice, Italy. It uses the mark SAVE VENICE and filed to register THE VENICE COLLECTION as a composite mark with a drawing of the Lion of St. Mark, a symbol associated with Venice and its name SAVE VENICE, INC. It wished the mark to cover a variety of good most of which did not originate in Venice. In the U.S. Patent and Trademark Office, the examiner refused registration for the goods not originating in Venice as primarily geographically deceptively misdescriptive, i.e., the public would be mislead to believing the good originated in Venice. The Federal Circuit also found that the use of Venice in the mark referred to a geographic location in Italy, well known to United States consumers. The Court also held that the Lion of St. Mark significance was also known to American consumers as identifiable with Venice. Applicant's argued that applicant's ownership of an incontestable registration for the word mark SAVE VENICE would indicate that consumer association would be with the organization rather than the geographic origin. The Court found that incontestability does not extend beyond the form registered for the goods or services claimed and therefore that argument would not hold water. Even where the goods were not directly associated with Venice, they are of a type that a reasonably prudent consumer would believe they were related goods. The decision can be viewed at: http://www.ll.georgetown.edu/Fed_Ct/Circuit/fed/opinions/00_1450.htmL FREEDOM FROM COPYRIGHT County of Suffolk v. First American Real Estate Solutions, (2d Cir 2001) Suffolk County, like most counties, have tax maps. Suffolk County copyrighted its official tax map and the Defendant published those maps without Suffolk County's permission. The case was dismissed at the District Court level on the basis that the New York State Freedom of Information Law ("FOIL") bars Suffolk Country from asserting a copyright in its official tax maps. The issues on appeal are whether, and to what degree, deference is due an advisory opinion by the New York State Committees on Open Government, which is required by statute to issue advisory opinions regarding FOIL; (2) whether, by enacting FOIL, New York abrogated its municipalities' copyrights; and (3) whether the official tax maps are in the public domain from their inception. The Second Circuit held that FOIL does not abrogate Suffolk County copyrights and declined to defer to the Committee on Open Government Advisory Opinion. On the issue of whether FOIL abrogated New York Municipalities rights to a copyright, the Court noted that nothing in the legislative history indicates that FOIL was so intended. Broad legislative intent of government access is not an intention to eliminate copyright. With regard to the Committee on Open Government Advisory Opinion, the Committee was acting outside its normal area of expertise and thus should not be given deference. The decision can be viewed at: http://csmail.law.pace.edu/lawlib/legal/us_legal/judiciary/second_circuit/test3/00_9011.htmL NO COPYRIGHT IN A PART NUMBER Southco, Inc. v. Kanebridge Corp., (3d Cir. 2001) Plaintiff manufactures various types of captive screw fasteners used in assembling of items such as computers and telecommunications equipment. There are a huge variety of such fasteners having variations in length, thread size, finish, recess type, installation type, screw diameter, and composition. Plaintiff developed a numbering system to service a shorthand description of the relevant characteristics of each fastener. Each fastener has a unique nine-digit number, with each digit describing a specific physical parameter of the fastener. This digital description is published in various handbooks. Thus anyone who is familiar with the Southco system would be able to determine all of the relevant features of the particular screw from its part number alone. Possibly unintentionally, this numbering system has become an industry standard. The part numbers produced by the system are the subject of this copyright infringement suit. Defendant is a competitor who in may cases undersells the Plaintiff. The Plaintiff's copyright is for the handbooks and the registration does not refer to the part numbers per se. The handbook include other materials such as drawings. The Defendant began using Plaintiff's part numbers in comparison charts in advertisements and other literature that was provided to customers. The chart displays Defendants and Plaintiff's number for equivalent fasteners in adjacent columns, making it clear that these parts are interchangeable. Plaintiff obtained a preliminary injunction and defendant appealed. The Third Circuit found that the Plaintiff's part numbers are devoid of originality and resulted from the mechanical application of the numbering system. Thus while Plaintiff spent time, effort and thought to create a numbering system which may be protectable, it is impossible for the numbers themselves to be original. The Court distinguished systems where a certain level of creativity went into the development of the numbers, to the automatic assignment of such numbers and reversed the order granting the preliminary injunction. The decision can be viewed at: http://vls.law.vill.edu/locator/3d/Jul2001/001102.txt |
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