COM 400: Copyright and trademarks

Copyright, 2004

Dr. Janet McMullen

Updated  03/31/2004

 Article I, Section 8 of the U.S. Constitution established the right of Congress to make copy right law.

The first copyright act was in 1790....

The most recent one is the Copyright Revision Act of 1976. It has been amended a number of times. Most recently in 1999.

In early 1996, the U.S. met in Geneva with the United Nation's World Intellectual Property Organization, for a 160-nation, three week meeting to face the complex issues involving copyright and new technologies. This was the first major rewrite in nearly 25 years, and the treaties were negotiated by Dec 20, 1996.

Three treaties were examined in the three-week conference which occurred in January of this year.:

The significance of this issue was underscored in January of 1996, when hackers released two U2 songs on the Internet, but they were not scheduled for album release until spring. It is believed that the hackers broke into the computer in the Dublin studio. (USA TODAY, 1/13/97) 

There is serious concern by major telecommunications companies, including Netscape, MCI and AT&T, which believe suggested alterations the law could make them liable for nearly all the messages which are carried over them. There is also concern that the negotiators aren't as computer literate as they might be, saying that even a message held in a computer's RAM would be considered a "temporary holding" and thus a copyright violation. That would make it illegal for schools and libraries to even look at copyrighted material.

Copy rights may also be passed on to one's heirs. Notice that is not true with libel laws and privacy--heirs have no such rights.

Copyright infringement might not seem like a big deal. There's so much stuff out there and it's so accessible. However, don't be fooled into making a costly mistake. Statutory damages for copyright infringement can be as much as $20,000 per violation. If it is determined that you willfully violated the copyright, you can be hit for as much at $100,000. AND if you commit commercial infringement and more than 10 copies are involved, you could land in jail for a felony. While most action against violators is in the civil category, you're more likely to be fined, but it can add up.

For those who think "nobody will ever know" - think again! The technology that allows you to "borrow" someone else's work can also find out that you did. Watermark protection in pictures, graphics and even in sound files can identify the source and can even identify who the original buyer of the material was. This applies to clip art, fonts, articles, icons, wav files, etc as well as video and pictures. (Zielinski, 1999.

Copyright holders have five basic rights concerning the work:

So if you do any of the above to a work you did not create you're probably breaking the law. Some exceptions exist for fair use, including non-profit educational use and fair comment, but you must be careful.

For the purposes of this course, it is important for you to know the BASICS of copyright law: There are some excellent web sites that you are strongly encouraged to visit which provide the basis information and illustrations from recent cases. Consider these required reading:

The copyright web site at  http://www.benedict.com  I can't recommend this site highly enough.  There are lots of links to audio and video clips involved in famous cases, pages on the basics of copyright law, and other valuable information.  This would be an excellent site to bookmark on your computer for future reference.  I strongly encourage you to roam around this location a bit.  You'll learn a lot, and you'll enjoy it.

The US Copyright Office at http://www.loc.gov/copyright/    There are numerous resources there, including links to all appropriate forms for application, etc.

All types of creative endeavors may be copyrighted.

Scripts:

Buchwald v. Paramount Pictures. Art Buckwald said he developed the concept for the Eddie Murphy movie, COMING TO AMERICA. Buckwald won. The case is currently under appeal. If upheld, movie contracts will have to be rewritten. (Someone might want to research this as a term paper topic....)

Murray Hill Publications v. 20th Century Fox. (2001) A Michigan school teacher wrote a screenplay called "Could this be Christmas." He sold the rights to the script to Murray Hill in 1993 to passed the script about parents trying to find a hot-selling toy to a Fox script reader who Murray contends passed it on to scriptwriter, Randy Kornfeld.  Turns out that Fox later produced a film with Arnold Swarzenegger called "Jingle All the Way" which the jury found had too many similarities to the "Could This Be Christmas" script.  They awarded Hill $19 million, but the judge reduced it to $1.5 million. (National Law Journal,  1/31/02) 

Databases:

New York Times Co. v. Tasini, I1212 S.Ct.2381 (2001)  The Supreme Court determined that database companies like Lexus-Nexus could not republish freelance writer's works without copyright infringement.  This was true even the the original publisher of the work, like the New York Times gave permission to do so.  The court said the Times  had the right to use the work once, but that it couldn't use for other purposes without copyright permission from the creator.  The result is that the work of free lance writers have been removed from databases and now, writers sign away electronic rights when they first publish a work.  (National Law Journal, 1/31/02)  This decision has implications for compilation works that publishers like Time Life  or Natinal Geographic might do.... 

Speeches: In 2000, CBS and the King family came to an agreement over use of Martin Luther King's "I have a Dream" speech.  CBS had used 9 minutes of the speech in a documentary on civil rights in 1996, but had not obtained permission.  Under the agreement, CBS will retain rights and may license it to others but must provide contact information to the King estate who will also approve the use.  CBS made a voluntary contribution to the Martin Luther King Jr. Center for Nonviolent Social Change. (Daniels, 2000)

Well-known author John Grisham was sued by author Polly Nelson. Nelson had been serial killer Ted Bundy's lawyer and had written a book about that experience. She claimed Grisham's book, The Chamber, was based on her work, and that Grisham had access to her work because they shared the same publisher and could have seen the prepublication text. The judge in the case said her claim was "meritless" because there was no substantial similarity between the works. She did have a right to her own experiences but not to every story about young attorneys representing death row inmates. Nelson appealing the case, claiming evidence of copying was ignored by the court. (Associated Press, 3/3/98)

Music of course was one of the first areas of copyright concern.   ASCAP and BMI were formed to protect the intellectual property of composers.  http://www.ascap.com/  and http://www.bmi.com/  (the best information on the BMI site is at http://bmi.com/library/brochures/index.asp where they explain just how the process works for various media. MUST read!) A number of interesting cases have occurred concerning music copyright infringement. (See Special Resources for Students) More recently there has been serious concern about use of music on the internet and of using small pieces of a work, a practice called "sampling." Sampling does not always occur on web sites. Sometimes it occurs within other songs, and that too is problematic. One court stated, "There cab be no more brazen stealing of music than digital sampling." Janet Jackson's song "Got Till It's Gone" uses part of Joni Mitchell's "Big Yellow Taxi" on the recording, and a number of artists have been using pieces of other artists songs as well. The court saw no defense in the fact that so many were doing it, and in cases where it was clear the music was appropriated, copyright infringement was found. In cases where just underlying rhythms may have been used, infringement was found less frequently. (Douglas, 1997)

The music industry sees the use of sampling on web sites as absolutely essential to online promotion of their recordings. Samples are posted and users are invited to download the file to "sample" the new song. But it is hard to define just what is a sample and what is a copyright infringement. Proposed legislation would allow 30 second downloads provided the purpose of the download was to promote the sale of the record.

Streaming is the process of playing a song off the internet though a multimedia computer. ASCAP, BMI and Sesac, Inc. consider this to be a public performance and believe it should require a performance license. These issues will need to be resolved as technology advances.   Now that streaming is more commonplace, there is serious concern about copyright infringement.  Many radio stations have stopped streaming their programming because they fear being hit with additional charges from ASCAP and BMI which are demanding. The Recording Industry Association of America believes webcasters should pay  15% of their revenue from web streaming.  Radio stations on the web say they don't make that much because most people have slow modem speeds and there's not that much advertiser support yet. The courts haven't been supportive, siding with the music copyright holders.  Broadcasters say they've already payed to use the music, and believe they're been double charged.  (Gotticelli, 9/3/01)  These issues will Here's a brief chronology of these developing events:

The terms of this agreement are surprising to traditional broadcasters and may quash their efforts to stream music over the air.  Radio stations don't have to pay a blanket license for the music they play as part of their programming (unless it's use for theme music or other production purposes).  The record industry recognizes that there is considerable promotional value to having one's songs played on the radio.  If the stations had to pay, they might not play the song and without air play, who would know to buy the record?  Apparently the internet is not seen to have that much promotional value and it is outweighed by the fact that its digital nature allows users to copy files...

Radio stations will pay 

Broadcasting and Cable magazine ran the figures to determine it would cost a radio station $7.00 to simulcast a song once to 10,000 listeners.  When you consider a station plays in the neighborhood of 20 songs per hour, 24 hours per day, they could be paying up to $3,360 a day just to simulcast their broadcast -- not counting those license and ephemeral recording fees. With little ad revenue for streaming, it's just not worth it.  There's no way they can make any money doing it, and most of them, especially in small markets just aren't going to fuss with it.

ASCAP and BMI expect to collect up to $300 million a year if streaming continues at the present rate.  

The copyright office is expected to make the agreement law before May 21, and broadcasters and webcasters could still challenge it in court.  Whether they will or not remains to be seen. If they do that and fail, they can still appeal to Congress to write a new law more to their liking.  (Albiniak, 2/25/02; 12/10/01; 1/11/02; 3/12/02)  As a result of this change, many radio webcasts are no more.

Photographs were determined to be "written" in 1884. They were fixed in a tangible medium.

Copyrightable works can be individual works, photos, programs, compilations, and derivative works.

A case in 1997 dealt with whether a copyrighted photograph was being redistributed when it was used as set decoration on a television series. In Ringold v. Black Entertainment Television, a poster of a composition made of painting, handwriting and quilted fabric was hung on the set of the series, Roc. The poster had been licensed by the High Museum of Art in Atlanta, GA, and thousands of copies had been sold. The artist, Faith Ringold, held the copyright of the work. The poster appeared in nine shots with durations of 1.86 seconds to 4.16 seconds and total duration was less than 30 seconds, with only part of the poster being visible during much of that time. The producers of Roc argued that since the use was so minimal, it was 'fair use.' The first trial saw the judge rule in favor of the defendants, but on appeal the judges held a different opinion. They believed that such a decision would open the gates for broad, wholesale copyright violation and remanded the case for further examination. If the lower court agrees with Ringold's claim, there are numerous ramifications for television and movie set designers as well as web page developers. (Begos, 1997; Goldberg, 1997; Flumenbaum, 1997)

The compilation may be copyrighted and but facts within may not be.

Arrangement of data (such as a directory) may be copyrighted but the data within may not be.

The court sees a need to protect the effort needed to collect and present research while preserving the the public's interest in the accessibility of facts. Thus facts cannot be original to an author who merely discovers them.

In February, 1997, the issue of factual copyright was ruled upon in National Basketball Association v.Motorola and AOL. Motorola and AOL operate Sports Team and Analysis and Tracking, Inc. (STATS) from transmitting NBA scores and other statistics through a paging device they manufacture. It works like a pocket pager, but provides sports information via broadcast airwaves. The device is called SPORTS TRAX. The same system makes the info available to AOL subscribers if they subscribe to the service to get it online. The NBA said the companies were violating their copyright, but the court said, "no;" the scores and statistics were not a work of authorship., but facts which could not be copyrighted. (The New York Law Journal, 2/26/97 )

Designs can be copyrighted. In January of 1997, Mattel filed suit against Dr. Ruth Westheimer, claiming her web site looked too much like their "SEE AND SAY" products. Dr. Ruth changed the site and the suit was dropped. (USA TODAY, 1/13/97; 1/15/97)

What CANNOT be copyrighted?

How Do you GET a copy right?  You get a copyright by fixing it in a tangible medium of expression

If you don't register or put the notice in the work and if someone uses your work and you don't notify them, your work falls into PUBLIC DOMAIN. That means the work belongs to everyone and you have forfeited your rights to it.

TO REGISTER the work:

It's recommended that the notice be on the work, but the work doesn't pass into public domain if it should be omitted. It notifies possible infringers that the work is protected. It's still best to register within 90 days of publication: you have more legal protection. However, the work need not be published for it to be copyrighted.

What do you do if someone does infringe on your copyrights?

If it is registered....

You have to register if you want this type of protection, but you can't sue for your attorney's fees and statutory damages. Small infringements are hard to get; you may for your losses and infringers gross profits.


How long does a copyright last?

Individual creator: author's life + 70 years. (The law was amended recently to increase the term from 50 to 70 years.)

Anonymous for hire: Companies can hold a copyright for 95 years from date of publication or 120 years from date of creation

   The extension of copyrights was challenged in court, and in January, 2003, the Supreme Court ruled that Congress had acted appropriately in Eldred v. Aschroft, No. 01-618.  Online companies wanted the law overturned so they would have more freedom to put works on the web which would be in public domain.  That would include things like Mickey Mouse, as well as articles, books, etc. Companies like Disney and Time Warner were concerned that the copyrights for Mickey and Gone with the Wind would be lost without the extension. Critics argued that the court had bent to the will of the big media corporations.   (Mauro, 2003; Associated Press, 1/15/2003 )

Copyrights before 1976: The copyright holder may be granted a 47-year second copyright period (but must file to get).

Length of copyright descendability, however, varies among states. Descentability refers to the time a copyright may be held by the heirs of the original copyright holder. In New York state, for example, there is no such right. In Indiana, heirs may hold the right for 100 years. The right in Virginia is only good for 20 years. (Kovner and McCarthy, 1997)

What rights DO you have?

A copyright is divisible. The creator can divide parts of work and retain rights to the whole work or parts of it.

Compulsory Licensing: once a song has been published, you must allow performers to record it; the creator can't allow one performer to use it and not allow another. This only applies to the to the music business, although there are other types of compulsory licenses. (Television super stations must give a compulsory license to cable companies which want to carry them.)

Compulsory licensing doesn't apply to SYNCHRONIZATION RIGHTS (sound tracking). There are very complex rules about synchronization.

A recent case illustrates that point. Igor Stravinsky licensed Walt Disney to use his composition, "The Rite of Spring," for the motion pictures Snow White and Pinocchio. The people who now hold the copyright claimed that while the piece was in public domain in the U.S., it was under copyright protection in other parts of the world. They therefore claimed that Disney did not have the rights to use the music on video releases of the films and that copyright infringement had occurred in at least 18 countries. The court held that the original broad license agreement granted to Disney allowed the music to be used in these forms. It is interesting that the agreement is held to apply to technology that didn't even exist when it was granted. How will this decision be applied to the use of movie soundtracks or music used in a film with permission to film's web site or CD-rom? (Rothenberg, 1997)

SEE YOUR TEXT BOOK and be sure you KNOW:

 

Who needs a blanket license? (You might be surprised....)

Solar Music v. Gap Stores, 1981. This case concerned the retransmission of copyrighted music via a radio station signal into a commercial establishment. The store may be in violation if the store business area is of sufficient square footage. If the store is big enough, it should pay the blanket license fee or subscribe to a music service. Smaller stores can get by, but as recently as 1996 and 1997, ASCAP and BMI reps were calling on local restaurants and were asking for copyright fees because these stores had a radio station playing in their store. BE CAREFUL! If the signal is determined to be a "public performance" you may have problems. (See your text or p. 225 of Middleton for more details.)

Court Determined three factors to determine whether an establishment has infringed on copyright (Smith p. 478)

(Caire's Boutique v. BMI 1991) However, recent cases may indicate that size of the establishment may not be that big a determination.


Another problem area: SATELLITE SIGNALS.

DBS is designed to be a single unit service; it is not for public performance, nor is cable. Therefore, you can't split your cable signal and pipe it into several rooms in a restaurant or into motel rooms.

IF the signal comes in via satellite there may be problems...Sports bars have some into some problems because of this. If you pay a royalty for the signal okay; if not..... If you pull down a NETWORK feed in a bar without clearance from the net (Which you will get when Hell freezes...) you'll have problems....IF it's a public performance of the feed. (IF you're the sports guy blowing his nose or checking his fly on the feed but not on the air, you'd understand why this is a concern.)

Retransmission Fees:

As of the Cable Communications Act of 1992 TV stations can demand a retransmission fee from cable companies which carry their signal. If the cable company refuses to pay the fee, they may refuse to carry the signal. If station doesn't ASK for a fee, the cable company HAS to carry the signal. That's called must carry. Ted Turner wasn't really pleased with that aspect of the legislation and challenged it in court. In the summer of 1997, the Supreme Court supported must carry.

Cable operators have COMPULSORY LICENSE to carry all super stations and various independent non-network and cable stations. Cable operators cannot be refused these signals but they have to pay for them. TED TURNER  appealed this portion of the act, but lost.

There is concern that without the compulsory license, broadcast stations would be dropped (especially weak ones) from cable channels in lieu of more commercially successful national cable channels. There is also concern that if stations now refusing small broadcast station now have to carry them, channels like c-span will be forced off cable.

In 2000, there was a big fight between Time-Warner and Disney-ABC.  Time Warner's contract to retransmit the ABC owned and operated stations was running out in several markets, including Houston. Disney wanted the Disney channel to be placed on Basic Cable services and three other channels to be carried in other tiers.  Time Warner wanted to carry the O&O, but wanted to determine where to place the cable channels on its own system.  For a time, it looked like KTRK-TV was about to be kicked off cable in Houston.   The situation certainly brought to the public's eye, what could happen when media giants disagree -- local people might not get to see their local stations!  (Tedesco, 3/13/00)

In New York, the same thing happened when Cox Communications dropped Fox TV outlets from several cable providers in major markets.  Fox wanted Cox Cable to carry carry Fox's movie channel and a sports network.  Cox didn't want to. 4.8 million subscribers lost Fox outlets including some southern California communities, Austin, TX, and  and Houston. (Reuters, 1/3/00)

In 1994, a federal appellate court ruled that satellite systems that deliver programming are not cable systems and therefore do not get a compulsory license. This separates the DBS programmers from the cable guys and gives the cable MSO's an advantage. Many of them own important cable channels which they now do NOT have to make available to their competing technologies. So, do YOU want DBS if you can't get CNN, ESPN or HBO? The court ruled that DBS services do have a compulsory license to broadcast network signals to homes not served by over-the-air television. (Middleton, 1997)

New DBS provider, ECHO STAR, planned to offer "local into local" broadcast service to its subscribers. This means they will offer local television stations via DBS (satellite). Echo Star needs assurance from the Congress that there is no copyright protection for such a service, since the stations will be provided to customers who would normally receive them over the air anyway. They also want to be sure they are not subject to must carry requirements. (McConnell, 1997)

That issue was settled in 1999 with the passage of the "Satellite Home Viewer Improvement Act of 1999" which amended the "Satellite Home Viewer Act of 1994" and the "Telecommunications Act of 1996". The law provides royalty free right to use local television signals for the purpose of transmitting them by satellite service to local DBS customers across the United States. It is up to the provider to determine which markets it wishes to serve, and right now the emphasis is in the top 30. DBS subscribers cannot receive a distant network signal via DBS unless they reside in an un-served area. That means they do not live in a grade A or B signal contour of local TV stations and can't get good over the air reception using a standard antenna. (US Copyright Office, 1999)

 

OTHER MAJOR CONCEPTS TO NOTE:

Works made for hire: In this situation the copyright belongs to the employer.

Even a work made in off hours may belong to employer if it is within the scope of employment, i.e. research, etc. was done on the job....

Even free lance writers may lose rights to work if it is "work for hire". Make sure all of those details are worked out before you sign any contract if you are writer for a magazine, etc. BOTH parties must expressly agree if it is to be a "work for hire."

Common law copyright: This used to refer to unpublished works which were protected only under state laws, but not so after 1976. It is NOW covered under federal law. Common Law Copyright held that as soon as work is FIXED IN A TANGIBLE MEDIUM OF EXPRESSION it was protected.

HOW DO YOU PROVE INFRINGEMENT?

This is sometimes hard to prove, and the very least very subjective at times.

FAIR USE DILEMMA:  

When trying to determine whether a use is "fair use" or not, several factors are considered:

The purpose and character of work : law here is vague and general.

Photocopying for education:

Is the use for commercial use or non-profit educational use?

Is to be used for any of the following purposes?

Was the work transformed in some way? Altered? Or does it support the original?

Students copying for library use: when you copy an article rather than taking notes from it, the libraries are not liable. YOU are.

Kinko's ran into trouble by producing "library packets" for professors. and a court ruled that was exceeding fair use. However, in 1996, a Michigan court came to an opposite opinion, saying that such articles were on reserve in a library and students could copy them themselves.

NOTE: ROSEMONT ENTERPRISES vs. Random House Case. This case concerns a biography of Howard Hughes. Hughes' company bought the copyright to the magazines the writer was using, so they could control the copyright and prevent publication. The court said "no". One can't copyright history.

VIDEO CLIPPING SERVICES: These services copy videos and news clippings and send to people mentioned in them. This is an old idea for print, but under fire in VIDEO. In 1993, the court ruled they are NOT protected under fair use. Members of Congress concerned -- they used the services! Clipping services worked out agreements with most stations and news organizations in order to stay in business. See your text for updated information.

Note the issue surrounding the Rodney King video. A Federal Judge dismissed suit of George Holiday. Holiday had granted one TV station permission to use the tape, and the video quickly appeared all over the world. The judge said Holiday's complaint was not valid because

The court ruled a different way concerning video of Reginald Denny being beaten during the Los Angeles riots. The video was shot by an independent news service, Los Angeles News Service (LANS). The attack was shown live on TV station KCOP, but KCAL-TV also wanted to use it. LANS refused to issue them a license, however. KCAL got a copy anyway and ran it on the air several times. A district court judge dismissed the case against KCAL citing fair use, but the 9th Circuit Court reversed the decision saying a jury needed to hear the arguments to justify fair use. (Associated Press, 10/6/97)

Parody:  

Copyright infringement may not occur if the work is used in some way in parody. Use for parody is considered FAIR USE.

The Naked Gun case

 One of the classic cases in recent time was Liebovitz v. Paramount Pictures. Annie Leibovitz photographed Demi Moore (who was pregnant at the time) for the cover of Vanity Fair. Parmount Pictures used the pictures in 1993 for promotion of the movie, Naked Gun 33 1/3: The Final Insult. The ad had Leslie Nielsen smirking face on a profiled nude pregnant body which looked very much like Moore's as she appeared on the cover of Vanity Fair. Liebovitz sued in Leibovitz v. Paramount Pictures, Inc. when the studio parodied the photograph, reproducing the lighting and content and putting Leslie Nielson's head on the pregnant body in promotional materials for the movie, Naked Gun 33 1/3. The court ruled in favor of Paramount. While the photograph served a commercial purpose, it was definitely a parody, and that was more significant. (See excellent discussion in "Works of Parody: Walking the Fine Line" by Leonard Marks and Robert P. Mulvey , New York Law Journal, 3/10/97--Link is no longer active.)

The "Pretty Woman" case

Precedent had been set earlier in Campbell v. Acuff-Rose (1994) in which Luther Campbell and Two Live Crew used Roy Acuff's "Pretty Woman" in a not-too-polite parody. (See Special Resources for Students where you will find a site which contains more particulars concerning this case, including lyrics.) An appellate court ruled that 2 Live Crew's parody of Roy Orbison's "Oh, Pretty Woman," was indeed protected as a parody. The court ruled that because the song was parody, and because there was no likelihood that the value of the original work had been compromised, no infringement occurred. Parody may be fair use if "it alters the original with new expression, meaning or message." The 2 Live Crew song was definitely "Different".... although there was some concern that the use of the first line from the song was "excessive copying." .

A more recent case had somewhat different results. In Dr. Seuss Enterprises v. Penguin Books, the defendant had published a book about the O.J. Simpson trial using the rhyming patterns, illustrations and general idea of the Dr. Seuss book, The Cat in the Hat. The court refused a summary judgment (dismissal) of the case because unlike the Campbell song, this parody was not a parody of the famous blue cat and the mayhem he caused. In this case the content merely copied key elements of the work to draw attention to the work or even out of laziness. While it might be satire, it was not parody. (Goldberg and Bernstein, 1997; Marks and Mulvey, 1997; Rudell, 1997) 

Suntrust Bank v. Houghton Mifflin Co.  (11th Circuit, 2001) This case concerned The Wind Done Gone, a book which retold the story of Gone with the Wind from the perspective of the black slaves.  The court agreed that copyrighted characters were exploited, but held that the work was parody, ruling that the book was "a critical statement that seeks to rebut and destroy the perspective, judgments and mythology" of Gone with the Wind, and it would affect the number of people who would read the original book.  (National Law Journal, 1/31/02)

To summarize concerning the purpose and character of the work:

Corporate Copying for commercial purposes is NOT permitted. EX. copying journal articles for multiple staff members. The COPY RIGHT CLEARANCE CENTER is available from which corporations may buy licenses to copy articles to distribute to their employees.

KEY cases you need to know:

Sony Corp. v. Universal City Studios, Inc. (1984) [ re: home use to time shift.] Universal sued Sony as a contributing infringer....The manufactured machines designed to home record. The Supreme Court said home recording was okay because:

Dissenters said it was a problem because people copied the whole work; also it reduced the likelihood that people would watch or buy reruns.

Consumer Union of Unites States v. New Regina Corp (1987) An advertiser may not infringe on the magazine's copyright by quoting a product evaluation...

Triangle Publications vs. Knight Ridder (1980) but it was okay if it was a comparative ad - i.e. TV GUIDE compared to Miami Herald's TV listings booklet.

The issue of CORPORATE COPYING: You don't have to know specific case names here but understand the case in which KINKO's what held for infringement when they copies journal articles for a corporation. TEXACO also ran into trouble for the same thing.

To use journal articles, the user must go through COPYRIGHT CLEARANCE CENTER which issues individual licenses for specific articles and also sell a blanket license to corporations which want to do a lot of copying.

Roy Export Co. v. CBS (1982) Here CBS got into trouble for using important segments of Chaplin films --even though the segments were very short. They were, the court said, the "highest quality scenes." 

Eldred V. Aschroft, No. 01-618.  The U.S. Supreme Court is examining whether or not the extension of copyright terms in 1998 was Constitutional.   Eric Eldred has an Internet library that offers the texts of several books, poems and other works that are in the public domain free of charge.  He claims that extending the copyright terms, pushes back the time when works come into the public domain and thus become more accessible to the public.  Further, the framers of the Constitution intended that copyright terms be limited so there would be incentive to create new works and further the marketplace of ideas.  The extension of copyright terms eleven times in forty years is counter to that goal.  Obviously, those who make copying technology want the terms to be shorter.  So do private inventors and creators who see intellectual property being gobbled up by big conglomerates for decades.  When royalties extend too long, it discourages new creation and invention.  When those royalties run out and the work become public domain, the creator has to produce something new or income dries up.  On the other side of the issue are companies like Disney, who are concerned they'll lose the rights to characters like Mickey Mouse who are "getting up in years." (Albiniak, 3/19/02;  Horwitz, 2/11/02; Sandburg, 2/26/02; Schultz, 3/13/02) 

EXAMINE CAREFULLY specific sections on types of works:

Music:

Broadcasters have to pay for the right to play copyrighted music on the air . The money goes to composers and publishers NOT performers.

Blanket Licenses:  A basic fee paid to organizations which represent copyright licensees to reimburse those licensees.    These organizations take care of such collections for their clients:

Know the significance of SAILOR MUSIC v. THE GAP STORES; and EDISON BROTHER S STORES v. BMI. In each of these, blanket license fees were assessed to a retail store which played a radio station as background music for the store. BMI was awarded 2 Million in a copyright suit against the Disney Channel and BET for carrying recorded material without authorization. In the same ruling, BMI was told that split licensing was illegal: once a cable company/network owned the licenses, the material was covered through to the viewer. That meant they could not make individual cable operators buy licenses. BMI wanted each carrier to pay based on subscriber numbers.

Costumes:  A federal law suit was filed against Sony Pictures by an artist who said his  costume designs for the movie, The Patriot, were stolen.  Military artist Don Troini claimed producers offered him the job to design the costumes, but the deal fell through when he wanted his name to appear in the credits.   He claimed the studio just took the designs from his paintings and didn't pay him anything. (Duffy, 2000)

NEW TECHNOLOGIES:

The Internet and its digital capabilities to transfer music and video in such a pure form that copies can be made as good as the original has brought new challenges to copyright issues concerning music in particular.  It all started with VCRs back in the 1980s but it hasn't stopped there, nor do the copyright problems with new technologies show any signs of getting less complicated....

VIDEO CASSETTE RECORDERS

SONY CORP OF AMERICAN v. UNIVERSAL CITY STUDIOs 1984 (already mentioned) This case clarified that home video taping was NOT an infringement. Time shifting was okay because not all shows taped are copyrighted.

DIGITAL AUDIO TAPE:

1992: Audio Home Recording Act: A royalty fee was added to the purchase of digital audio recording equipment and blank digital tape or disks for home use. Users allowed to make copies of a digital recording, but copies of copies are not allowed. 


COMPUTERS:

The courts took a narrow view of computer copyrights. They ruled at Game Genies and similar devices were okay.  See: SEGA ENTERPRISES v. Accolade, Inc. 

New technologies pose serious problems for preserving copyrights and tracking down abusers. As the decade progressed, new and different copyright challenges emerged involving digital technologies and intellectual property.

SEGA Enterprises v. Maphia (1994) is still under discussion because it applies to copyright and Internet. Maphia had a bulletin board for which members paid $25.00. and were then able to download Sega Games. The court ruled that the defendant "profited from he distribution" and the copyright was infringed. "

A similar case with similar name: United States v. LaMacchia (1994) David LaMacchia was a student at MIT and set up a bulletin board on which he encouraged people to upload software , including SIM CITY 2000, EXCEL 5.0 and others. Those with a password could access the second board on which the uploaded material was stored. He was charged with wire fraud and copyright infringement. LaMacchia was charged with criminal copyright infringement as a result of the 1992 Copyright law which made all violations criminal (misdemeanors) except repeat offenses (felony).

The court ultimately decided that LaMacchia had not done what he did for financial gain or commercial advantage, nor had he committed wire fraud. The court described his conduct as heedlessly irresponsible, and at worst nihilistic, self-indulgent, and lacking in any fundamental sense of values" and it even suggested that criminal as well as civil penalties should probably be attached to current copyright laws, so that people who infringe willfully and repeatedly even without commercial advantage could be punished. 

The question became: -How do companies protect themselves from infringement when it's so easy to do? In 1994, John Ruspini placed a Star Wars web page on the web; his site was designed to be a tribute to Star Wars. He got a call from LUCASFILM which told him to shut it down. Instead, he published parts of their conversation on the web and the company was flooded with protest mail. LUCASFILM backed off.

With technology allowing "real video" , studios became worried that not just stills and trademarks but the movies themselves would end up on the web and their copyrights would effectively be worthless. Digital copies would be as good as the original..... Jack Valenti, Pres. of MPAA, said, "...if you can't protect what you own, you don't own anything."   In a very few years, his concerns would be very real.

Church of Scientology settled out of court with Netcom. This was a BIG case which threatened to alter the workings of the internet. Details cannot be discussed as per the agreement. According to USA TODAY, "The dispute arose when a former Scientology minister who became a vocal church critic posted some church's writing on private bulletin boards that Netcom arranged for its subscribers. The church claimed infringement and a "battle zone erupted" (See articles in copyright packet) They won their case against the man who posted the material, because he posted the material without comment or criticism (thus it wasn't fair use). The Washington Post printed some of the materials without violation because it was covering the story of the lawsuit and seizure of Mr. Lerma's computer equipment. (Grossman, 1995)

In anticipation of many of these problems, in 1993, President Clinton created a task force to facilitate the growth of the National Information Infrastructure. A part of that task force is THE WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS. It's mandate was to examine the copyright issues pertaining to the NII and make appropriate recommendations. It recommended:

In 1996, the President introduced legislation to fulfill many of the recommendations of the Working Group in it's White Paper.  Additionally RICO  is being used to confiscate computers and other equipment used in copyright infringement where guilt is found.

In 1996 an organization was formed to protect the rights of authors and others. The AUTHOR's REGISTRY was founded by the Author's guild, ASAP and others to serve as a licensing organization for works used on the web. The registry now includes more than 15 writers' groups and 80 literary agencies. (Kennedy and Dweck, 1996) 

DIGITAL VIDEO:

Jack Valenti's concerns became very real as video streaming emerged as a serious issue in the late 1990s. In early 2000, a Canadian Webcaster, iCraveTV.com, ran into problems after streaming local TV programs. A U.S. district judge issued an injunction to keep them from webcasting any more local stations after several media companies, including networks, production studios and sports leagues, charged copyright infringement. U.S. Law allows only cable and satellite TV providers to bring local TV signals to the public. (Albiniak, 2/7/2000; Kapsambelis, 2/10/2000) 

DVD:   In 2000, movie production companies were worried about a free software download that would remove the copyright protection from DVDs.  They filed suit against the producer of the software and an injunction to prevent it from being offered for download.  The  DVD Copy Control Association hold the license for the Content Scrambling System (CSS) which is designed to make it impossible to copy DVDs.  Without the copy protection, movie producers are not willing to distribute their works on DVD. However, industry experts think the movie industry is misled if it believes their encryption program will not be broken and ultimately used.  ( Scheffey, 3/21/00)

Another threat to television and music copyright came from David Simon, the creators of RecordTV.com.  Using his site, users could choose programs from 42 separate stations in the LA area and download them into their own computers to watch any time they want.  Studios immediately filed suit.  If people could just download the programs they want, the television syndication market would dissolve.  Why pay $1 Million for Seinfeld  if you can just download it and watch it on your computer. 

Simon's strategy was the same used by Michael Robertson, creator if MP3: find the way to distribute content through the internet and wait to be sued.  Robertson was sued and expected to pay millions in damages, but he had created a $40 Billion business.  

Another site which allowed downloading of old TV shows was ICrave.com.  It shut down in June of 2000, and Simon also shut his site down.  While the site developers claim what they're doing is "fair use," the movie producers say it's stealing, plain and simple.  The site developers are stealing content and then distributing it, and the producers will get injunctions against them if the site reopen. (Ricker, 6/27/00)

FILE SHARING: 

Problems with copyright were not limited to video.  While audio streaming opening opportunities for radio stations to simulcast, webcasters to set up radio stations without the radio transmitter, audio streaming and downloading became an issue when MP3 technology became available and Napster made peer-to-peer sharing of music a daily occurrence for millions of people.  Several colleges and universities discovered that 60 percent of traffic on campus computer systems was used to pirate music using such technologies. As a result in 1999 and 2000, Boston University, University of Chicago, Indiana University and others banned the technology on campus systems. There was and is a general concern that college students do not have a good understanding of copyright law. (Slind-Flor, 2000)

In January, 2000, the Recording Industry of America filed suit against MP3.com. This site allowed web users to store and listen to their CD's on line. The RIA said it was not legal to compile a huge database of music created by its membership without paying the membership.   In the summer, MP3.com settled with some of the five companies suing.  In those settlements, founder Michael Robinson agreed to pay millions in damages in exchange for licenses to continue distributing the music. (Learmonth, 6/16/00)

In September, 2000, MP3.com lost its case with the final record company, Universal, and was ordered to pay a minimum of $118 million dollars in  damages.  The judge said he had the option of imposing fines of between $500 and $150,000 per infringed CD.  It was estimated that the number of CDs involved was between 5,000 and 10,000 which could make damages as high as $250 million.  (Hamblett, 9/7/2000) 

Napster came on the scene in May, 1999, when Shawn Fanning, who was a freshman in college at the time became frustrated that he couldn't find MP3s on line.  So he wrote a program which allowed "peer to peer file sharing."  In less than two years, the site had more than 58 million registered users.  By December, 1999, those same music companies filed suit. In July of 2000, a judge issued an injunction prohibiting Napster from "sharing" copyrighted songs.  According to CNN, the traffic at Napster increased by 71% the next day.  Two days later, Napter won a stay on the shut down order until the appeal was heard.  In October, the music companies wanted the stay removed, but Napster argued before the court that those companies had a "chokehold" on the music industry and want to keep it by shutting down the "sharing."  On October 31, one of the companies settled with Napster, forming a partnership to provide  a fee-based downloading service.  The other companies wanted none of it.

In Februrary, 2001, the 9th Circuit ruled that Napster knew its users were violating copyright laws, but allows the site to continue to operate until the court can re-draft an injunction.  Napster had contributed to copyright infringement by helping others to infringe. (CNN, 2001) Febuary brought another downloading frenzy as people hurried to get music before Napster was shut down. (Reuters, 2001)

For an excellent resource on the Napster cases, see CNN at http://www.cnn.com/SPECIALS/2001/napster/timeline.html 

MSNBC has a number of articles on the matter as well.  Do a search at MSNBC.com for the latest.

On March 6th, 2001, the judge came back with the revised injunction, ruling that Napster must remove any copyrighted material the record companies ask it to remove.  The removal must occur within 72 hours of the request.  Napster was given five business days to show the court how it was in compliance with the order.  Napster said it would comply, but it will also seek a settlement outside the court.  The company will continue to seek to set up a fee-based agreement with the recording companies.  An initial offer, which was rejected, offered to guarantee the record companies 1 billion dollars over five years in exchange for the right to let Napster users download songs for a fee ranging from $4.95 to $9.95 /month.   (Weaver, 2001) If accepted, Sony, Warner, BMG, EMI and Universal would have received $150 million per year with another $50 million reserved for independent producers.  Hank Barry, chief executive of Napster said, "We're saying this is something  consumers really want.  Let's do something to keep it going." (Harris, 2001) 

Some musicians would like to keep Napster going as well.  While some were pleased with the court's decision, others believe that key gatekeepers prevent good music from being heard. They just want their music "out there."  Others disagree.  Eminem made a key point, "When I worked 9 to 5, I expected to get a paycheck every week.  It's the same with music...If I'm putting my heart and and all my time into my music, I expect to get rewarded for that.  And if you can afford to have a computer, you can afford to pay $16.00 for my CD."  Jimmy Buffet agreed, saying, " All of a sudden there's not value there, because everyone can get what you have for free." ( Reuters, 2001) 

A bigger question was HOW would Napster successfully block the "sharing" of copyrighted materials on its site?  File searches can be effective, but only as long as correct titles are listed. What if the song titles are put up in a foreign language, or pig latin?  Further, so many songs have similar titles, there is concern that legitimate songs could be blocked.  Neither Napster nor the record companies want to block users, only content, but that may be a taller order than is currently expected. ( Mann, 2001)

The Digital Millennium Copyright Protection Act of 1998 made it illegal to get around copyright protection technologies with new technologies. The act has not yet been tested in the courts. (Robinson, 1/24/00)

File sharing didn't go away when  Napster  was forced to shut down in 2001.  It has been replaced by other organizations, most located out of the United States, with complex organizational structures designed to circumvent existing copyright law.

Some of the services are authorized, subscription download services, like Pressplay.  Others, like Kazaa, are combination sites which offer authorized material for payment but unauthorized files as well.  

Issues:  Forrester Research Report recommended that the music industry recognize the market has changed and exploit consumer desires to download music as a means of acquisition.

Consumer Issue:

Industry Issues:

In October, 2001, major motion picture companies and music companies filed suit against Kazaa.  Shortly thereafter, the company disappeared and its own was nowhere to be found.  Sharman Networks took over the operation a few months later with a creative corporate structure. (Woody, 2003)

Early 2003, a federal judge ruled that record companies and movie studios could proceed with their suit of Kazaa for copyright infringement.  The judge ruled that even though Kazaa is based in Australia and the island of Vantuatu, it did enough business in the United States to fall under U.S. Copyright laws.  (AP, 1/13/03)  

Kazaa responded by filing suit against the movie and record companies, arguing that they didn't understand modern world and were trying to monopolize their industry with an antiquated business/distribution model.  Sharman claims the entertainment companies are misusing their copyrights, deceptive and monopolistic.  They wants a jury trial, damages and an outcome which will prevent the entertainment industry from enforcing any copyright against any person or organization.  In other words, they want copyright eliminated for all practical purposes.  (Associated Press, 1/28/03)

Kazaa is trying to save itself by offering legitimate distribution of files.  It has partnered with Altnet,  micro-payment system which allows people to pay for downloaded files incrementally or through a monthly subscription fee. (for more information go to Altnet.com ).  Other song are available free from for a subscription that only last for 90 days, after which the consumer is encouraged to buy the CD or the license.  Without the license, the downloaded file won't play. Artists are charged a fee to post their work with Altnet.  Sharman sees this financial model as a major financial opportunity for Kazaa in the future.  (AP, 2/3/03)

 Kazaa is different from Napster because Kazaa is actually making money.  It's doing so through agreements with advertisers and third-party software companies.  Those pop-ups on your computer may just have come from Kazaa and other software may be showing up on your computer that's gathering information about you.  Many users are upset by what they see as an invasion of their privacy -- the use of unannounced adware and spyware in the downloaded files. (Graham, 2002)

Kazaa has positioned itself differently from Napster.  It doesn't offer an index on a centralized server, but rather distributes software so that users can share files with each other.  In 2003, a California district judge ruled that this was a significant enough difference to protect them from copyright infringement liability, saying Kazaa was operating like a VCR or photocopy machine.  It could be used for copyright infringement, but did not cause it to happen or have a part in the infringement.  While Kazaa may have structured its business in such a way to avoid the legal and still make money on illegal file sharing.  The believed this was a matter for Congress and not the court to decide. (Hopkins, 2004)

File sharing is something copyright experts, industry leaders, and regulators are going to have to come to terms with. It's not likely to go away. Some industry specialists believe that it is larger than the music industry itself and is "unstoppable". Of the 61 million Americans who use free downloads habitually, only 9% consider they're doing anything wrong at all. Some experts believe that entertainment industry leaders have to see that their fundamental delivery systems have changed, embrace new systems and use them to their advantage.  That's not what's happening.  

Industry experts call free downloading "stealing" and that's not a surprise since movies have appeared on Kazaa before they have been released in theaters or on DVD.  (Associated Press,  3/28/03) 

The music industry set out to get tough with file-sharers.  The Recording Industry Association of American filed suit against individuals who downloaded copyrighted music.  NetPD, a service that crawled the web looking for downloaders, isolated them and notified ISPs or employers.  More than five million notifications demanding downloaded content be removed were sent out in less than 3 months.  Suits have been filed against college students, a grandfather  (whose grandson downloaded songs on the grandfather's computer), and numerous others.  Some have gone to court and paid fines, while others have settled out of court to "the tune" of thousands of dollars.  A court ruling in 2003 found DMCA did not violate First Amendment rights when it required ISPs to identify clients who illegally downloaded files.  That ruling set of even more lawsuits.  However, in December of 2003, it was overturned on appeal  by the U.S. Court of Appeals for the District of Columbia.  The D.C. court found that the DMCA did not apply to P2P file sharing because it was passed years before P2P sharing became possible or popular.  Again the court found the practice disturbing and damaging to the media industries involved, but believed the issue was a matter for Congress and not the court to legislate.  The RIAA announced that it would continue to file suits but would employ a different legal strategy and those it sued would not have the option of settling out of court since RIAA could no longer require names and info from ISPs (Fineman, 1-22-04). 

CABLE:

Cable has been arguing over music licensing since 1989.  The copyright firms have been negotiating on a company by company basis, making an agreement with TBS in 2001.  ASCAP and Viacom agreed on licensing fees for Viacom's cable services later the same year.

SATELLITE DIGITAL RADIO: Sometimes call Digital Audio Broadcasting, the key players are Sirius and XM.  Both reached a music licensing agreement with ASCAP  in February, 2002. No details of the agreement were available at the ASCAP site. See Press Release at ASCAP.com 2/2/02.

A headline in the March 28 issue of Radio World read, "Shapiro: Don't Restrict HD Radio Recording."  Consumer Electronics Association President Gary Shapiro believes copyright restrictions to prevent consumer recording of the new digital local radio signals would hurt the radio industry and drive listeners away and cripple the sale of digital radio receivers necessary for digital radio to be successful. (Radio World, 3-28-04)

INTERNATIONAL Copyright: Berne Convention -This is the world's primary international copyright agreement.

The International Intellectual Properties Alliance called on the U.S. in Feb., 1997, to target three countries and to examine the practices of 50 others who allow copyright infringement and piracy to go undeterred. The group, an alliance of film, book, software and music industries wants trade sanctions against these countries. The three targeted include RUSSIA, GREECE, PARAGUAY . Piracy in Russia is expected to cost in the range of a BILLION dollars. It is estimated that 90% of the videos seen in Russia are pirate copies. China was on last year's list, but the situation has improved. Other countries of concern include Brazil, Bulgaria, Hong Kong, Kuwait, the Philippines and Vietnam. (USA TODAY 2/19/97)

COLORIZATION: This is a moral rights issue. Moral rights include the right to be known as the author of one's work and to withdraw a work from distribution. Such rights protect the author from having a work used or distorted in a way which makes the author look less competent. THE VISUAL RIGHTS ACT OF 1990 was enacted to protect American moral rights and so that our laws would be consistent with the Berne Convention. Congress has not prohibited colorization but does insist that some films must be labeled if color is added. ( Middleton 97)

LANHAM TRADEMARK ACT: Federal law which concerns trademarks and their registration. You should conduct a search there before you set up a trademark. Under 1988 law, can get triple damages for using someone's' trademark.

CD Rom technology offers additional copyright challenges. National Geographic Society has a number of suits filed against it from photographers and writers who object to the use of their work in the CD Rom compilations of magazine contents. As of January, 2000, there were five separate suits filed by photographers or authors who claimed they had given permission for only one use on PAPER. A class-action suit involves five separate classes of plaintiffs. (IP Law Weekly, 1/25/00)

Know the following terms:

PUBLIC DOMAIN: Works for which the copyright has expired are considered in public domain. So are works for which permission has been granted without payment. Something things which are newsworthy also become public domain. Public domain means you can use the content without paying a copyright fee for it.

New technologies have brought some complex questions to the issue of public domain. Since facts are not copyrightable, what happens when a person is involved in a news event which is covered on television or reported in print? Sometimes producers who want to make movies purchase the rights from the individuals who were involved, sometimes those stories are just appropriated.

One of the more notable cases is Matthews v. Wozencroft,(1994). It involved Creig Matthews and Kim Wozencroft, who was married to Matthews for a time. The two were undercover drug officers who admitted using drugs and falsely testifying against those whom they had arrested. Wozencroft wrote a novel based on those experiences, Rush, which was published by Random House. She later received $1 million for movie rights. Matthews sued for misappropriation and invasion of privacy and lost. Ms. Wozencroft was telling her life's story and she was not using Matthews likeness to advertise her product, but rather telling "factual events that happened to include him." Elizabeth Taylor ran into similar problems when she protested the television mini-series, "Liz: The Elizabeth Taylor Story" (Taylor v. National Broadcasting Co. Inc.) (Cox, 1997)

WORK FOR HIRE: When an individual works for a company to produce a specific product, the company may classify that product as a work for hire. Contractual limitations may be placed on the extent of their copyright privileges. This has led to some interesting cases, some of which are discussed in your book.

When David Letterman moved to CBS, NBC wanted to keep the Stupid Pet Tricks and Top Ten List as THEIR intellectual property. Was David working for hire? How much did they own? They wisely dropped the matter.

Videotaped performances of martial arts specialists Philip Ahn, Elizabeth Malecki, and Katalin Zamiar were used to animate the action in the Mortal Kombat arcade game. They were also used for the subsequent video and Game Boy games. Ahn, Malecki and Zamiar contended they did not agree that their work should be used for the any project beyond the arcade game and they sued. The court granted summary judgment to the defendant, Midway Corp., because the three had signed a release form which defined their work as "work for hire." (Jun, 1997)

In September, 2000, a bill was introduced in Congress which would give recording artists a stake in their creative work in situations where recording companies now claim to be the "authors" of the work and hold the copyrights indefinitely as works for hire.  What Congress will do with the legislation will be seen in the next few months. ( Sandburg, 2000)

Misappropriation: unauthorized taking of someone else's property or investment in time, money and effort. Example: INS using AP's news stories on the INS wire (without rewriting them)

Trademark: A word, name or symbol used to identify a company as a source of goods (see text for thorough discussion)

Muppet Treasure Island made Hormel, the makers of SPAM, mad. There's a pig in the film who is supposedly the high priest of the boars who worship Miss Piggy on the Island where the treasure is buried. He's not a particularly nice pig and his name is Spa'am. A U.S. District judge ruled on September 24, 1995 that Hormel Foods could not prevent Jim Henson Productions from using the character or from licensing agreements with General Mills, Hershey Chocolates, and McDonalds. The judge indicated that Spa'am's behavior was not evil but childlike and not likely to lead to negative associations with the product, SPAM. Hormel planned to appeal. "In our view the issue is simple. Henson Productions is seeking to use our trademark...for monetary gain." said a company spokesman. (Associated Press, 9/95 )

In July, 1999, dealt with the trademark name, The Drifters. The group performed hits such as "Under the Boardwalk" and "On Broadway" but have not performed in many, many years. While several other groups formed and performed under the name, the court ruled that the original manager who had the trademark rights to the name still owned it. This was true, even though the same performers wanted to use the name at a later date. The manager owned the name, not the performers. (Ackerman, 8/10/99)

A similar situation happened with the former members of three Doobie Brothers who have been prohibited from performing under that or any other similar name. The musicians were allowed by the judge to advertise as former members of the Doobie Brothers doing the greatest hits of the Doobie Brothers.

There have been a lot problems with new groups hitting the road with the names of old bands....as a result, Congress considered a law, The Truth in Rock Act. (Kisliuk, 1999)

Tony the Tiger has been the trade mark of Kellog's Frosted Flakes since 1952.  Exxon began using an animated tiger for the "Put a Tiger in Your Tank" slogan in 1959.  So far, no problem.  But when Exxon began using their tiger to advertise the food in their stores in the 1990's, Kellogs cried trademark infringement.  After several trials through various courts, the case was dismissed in the 6th Circuit Court of Appeals. The court said, that while both tigers were associated with food products, the products were not in direct competition. (IP Law Weekly, 4/14/00) 

Chicken was the issue in a 2000 suit.  In association with Chicken Run, a popular claymation-type film, Burger King had the same chicken figures carrying signs as begging viewers to "eat more beef."  Chic-Fil-A didn't much like it, claiming Burger King was ripping off their cows asking people to "eat mor chikin."  Experts in trademark law believe this suit may be stretching it a bit, but we'll see. (Slind-Flor, 2000)

Service Mark: symbol used in sales to identify services in stead of good. "Home of the "Whopper" is an example.

Registration of Trademarks: Must use trademark to register (or prove you will within 6 months). Get registered if your mark is distinctive so you protect it for your exclusive use. Renewal period: 10 years.

Inherently Distinctive marks: (Know the definition, examples) Trademarks can be...

1. fanciful -- Example: COINED TO BE A trademark

2. arbitrary -- here the usual meaning has no relation to trademark. Example: STORK CLUB

3. suggestive --suggests what product does without describing it. Example: VANISH toilet bowl cleaner or SPRAY AND WASH spot remover.

Trademarks can have Secondary Meaning: VOGUE has a secondary meaning associated with the magazine and LOOK, provides the same situation.  

INFRINGEMENT: Protection from infringement is designed to protect the consumer from confusion so they don't buy one product thinking it another with the same identifying marks or words.

DILUTION:  There is protection against diluting the distinctiveness of a trademark even if there isn't a likelihood of consumer confusion or competition between the products involved.  Not all states offer injunctive protection against trademark dilution, but many do.  The classification according to distinctiveness (listed above) becomes important in these cases.  Trademark holders are particularly concerned that their corporate image is not tarnished by unauthorized usage.  In 1995, Dilution became a federal issue with the passage of The Federal Trademark Dilution Act of 1995 (FTDA).   The act was designed to protect famous or national trademarks from uses that blur or tarnish the distinctiveness of the mark. The act provided three exceptions for unauthorized use of a trademark:

A case was heard by the Supreme Court in 2003 regarding a dilution suit filed by Victoria's Secret against a Kentucky store called "Victor's Secrets" which sold lingerie and adult "toys" and videos.  After the initial suit was filed, Victor Mosley changed the name of his store to "Victor's Little Secret", but Victoria's Secret was not still not satisfied.  The Supreme court remanded the case to the lower court, saying that the name alone may not be sufficient to cause a negative effect/association with the Victoria's Secret stores.  Proof of actual dilution had to be provided, even though it might be hard to establish. (Hopkins, 2004)

Trademark infringement in internet domain names has raised some new questions. As mentioned earlier, there have been some problems on pages using Star Wars trademarks on pages. Similar problems have occurred with Star Trek franchise names, images, and trademarks. However this controversy is different in that it concerns domain names in internet addresses. For example, an evangelical organization, Jews for Jesus, recently became concerned when an individual, Steven Brodsky, who opposed them used the same words in the domain name for a site in which he strongly criticized the group. He wanted people looking for the organization to go to his site instead where he hoped to dissuade them. His domain name read "Jews-for-Jesus.org while theirs was JewsforJesus.org. A suit was filed charging Brodsky with six instances of trademark dilution and infringement. (Wired News Report, 1997)

[For more information on trademark infringement and domain names, see an excellent web page, "Trademark Wars on the Web." . (link no longer active) The page offered a list of recent controversies including links to the pages in questions and sometimes copies of letters sent to the offending web page creators. There are cases dealing with Spelling Entertainment, LucasArts, Lego, K-mart, the NBA and others. This one is really fun!  If you find it at a new location, let me know and we'll update this page to provide the new link.  ]

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Intellectual Property/Copyright issues will only get more complex. While the industries which are copyrighted (entertainment, publishing, etc.) continue to contribute more and more to our economy, new technologies make the control of their creations more and more difficult. One study as early as1997 showed IP theft costs more than $20 billion world-wide. This is only made more problematic because the technologies and equipment needed to duplicate intellectual property are easier to obtain and very cheap. CD-R equipment is become standard equipment on medium priced home computers. VCRs cost less than $100 and digital transmission of audio and video through the net make flawless copies of original works. (Standeford, 1999)  Now home PC's all come with CD writers, DVDs are less than $100 and DVD-write technology is now commonplace and reasonably priced.

The Hollywood and music creative communities and others want this problem stopped now, and they're going to Congress for help.   If you do a web search for copyright and legislations, you'll be surprised at all the potential legislation you'll fine.

The Digital Millennium Copyright Act (DMCA) (1998) not only extended copyright terms, but it made it illegal to remove or go around any technological means designed to prevent copyright infringement.  The constitutionality of that provision was upheld in 2001 in Universal Studios Inc. v. Corley (2nd Cir, 2001) In this case, the defendant figured out a way to decode DVDs  by cracking their computer code. The court said he could not share or sell that code to others. (National Law Journal, 1/31/02)  That ruling clears the way for more and new laws supporting technological ways to prevent copying.

Movie, television and music creators want copyright protect technology installed on all playback technologies.  Both the Senate and the House have held hearings on the issue in the recent past, and you can expect more to come. 

Broadcast "flag"

A new technical standard has been adopted by the American Television Standards Committee which would limit the ability to copy video materials.  In August, 2002, the FCC asked if such a standard should be mandatory.  Response has been emphatic. Program producers have long been concerned that digital programs would be hijacked and illegally distributed, robbing producers of potential profits.  Licensing and selling of shows cannot be done unless the security of those shows can be insured.  CBS indicated it would withhold it's HDTV offerings unless the FCC didn't come up with rules which would limit digital piracy.  The Motion Picture Association of America worked with the group that developed the standard.  The standard allows a set or VCR owner to make a copy and even share it with a friend, but it inhibits mass copying or peer-to-peer file sharing through organizations like Kazaa. (Berger, 2003)  On March 6, 2003, Kenneth Ferree, head of the Mass Media Bureau of the FCC testified before a Congressional subcommittee on intellectual property.  He indicated that over 6000 comments had come in in response to the proposed rulemaking before the opportunity to comment closed in February, 2003.  He emphasized that digital copyright protection was necessary for our national transition to digital television.  Content providers would not invest their talent, money or future in a system which would allow those things to be stolen from them. (Ferree, 2003)  It is likely that Congress may ultimately make the decision on this matter after the FCC processes all the comments it received and draws conclusions from them.

The FCC instituted the new regulations in November, 2003 to mandate a "broadcast flag."  Digital TV sets manufactured after July, 2005, will have to have "broadcast flag."  The flag is an anti-piracy system which will protect high definition television programs from piracy. The flag will not prevent consumers from using current VCRs, TiVos or Replay TV, but the recordings won't be in HDTV; they'll be in analog.  The flag is designed not prevent time-shifting but file-sharing.  Producers don't want to experience the same kinds of concerns the music industry has had with Kazaa and others. Many producers did not want the networks to go to full HDTV programming until their programs could be protected from piracy.  But time was running out for that transition to occur, and something had to be done.  The "flag" seemed to be the answer. For an excellent article on what the broadcast flag will and won't do, see :

Brotin, Paul.  "WIll the Broadcast Flag Break Your TiVo?"  Slate 11/26/03 at http://www.slate.msn.com/toolbar.aspx?action=print&id=2091723

The flag issue may not be settled, however.  A lawsuit, ALA v. FCC  was filed in D.C. Court of Appeals   Filed by five library associations, it has been joined by The Electronic Frontier Foundation, and two consumer groups.  The suit charges the FCC went too far, didn't support its decision with enough evidence, and acted in a hasty and capricious manner. They also claim the regulation is over-broad and would undermine competition and fair use.  (EFF. 3-9-04)

Because other efforts have failed either legislatively or in the courts, the music industry is also focusing on "anti-circumvention" provisions found in Sec. 1201 of the DMCA.  This part of the law prevents circumventing copyright protection technology placed in a copyrighted work that would prevent it being copied.  It also makes illegal the sale or distribution of any computer program or other device which would make such "circumvention" possible.  Since most major types of media contact are or can be distributed digitally, this is now a big issue.  Copyright holders see anti-copyright technical measures to be the way to stop piracy, file sharing and bootlegging, and many of them are employing such devices.  There are concerns that such anti-copying devices and restrictions concerning distribution of means to "get around them" have limited legitimate research and scientific discussion. (Lohman, 2-10-2004, Kramarsky, 1-14-2004)  Further, there is concern that anti-copying technologies would prevent legitimate "fair use" of the products, such as time shifting, recording a CD for your own use with selected cuts, etc., but there is not a lot of evidence to support those concerns as yet. (Besek, 2-19-04)

Downloading will be the way?

Experts outside the industry claim that CDs will be obsolete by 2010 because downloading will be THE way of selling music. The business model in the music industry is expected to change, and we're seeing the beginning of that change already. Josh Barnhoff, a Forrester Research analyst speaking at a music industry conference in 2004, said downloads and subcriptions to online music stores will top $300 million in 2004 alone.  That's an increase from little more than $0 last year. The 20-year-old CD will go the way of vinyl records and 8-tracks. (Warner, 1-24-04).  In January, 2004, AOL Broadband subscribers had the opportunity to download five major films (including Finding Nemo and The Matrix Reloaded) for 99 cents. Users can use the movies for 24 hours and then they vanish from their harddrive. The five week test was AOL's way of testing the MOVIELINK service and its utility to the AOL customer.  (Kuchinskas, 1-22-04)  But you don't have to be an AOL subscriber to use MOVIELINK.   The site has been around since 2002.  We'll have to wait and see how the business model changes for media content delivery, but the next few years are definitely going to be "interesting."

The copyright issue is going to be one of the most volatile issues in media law.  Be sure that you keep up with developments when you get into the industry. 

Special RESOURCES for the student:

[Links will be listed so that printed versions of this page will show internet addresses for future reference.]

Resources for this lecture: 

note: There are LOTS of interesting term paper topics in this subject area. Check out some of the recommended web sites for ideas. Be sure you start thinking about that term paper NOW!

Copyright, 2003

Dr. Janet McMullen

Associate Professor of  Radio-Television-Film

University of North Alabama