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Category: Copyright Law

Sovereign Immunity for Copyright Infringement

Pictographs by the Fremont People, Jones Hole Creek, Utah

Pictographs by the Fremont People, Jones Hole Creek, Utah

An author is petitioning the Supreme Court for the second time, arguing that Texas A&M should be liable for copyright infringement after copying an important page from his book.

The case raises questions that the Court has touched upon before:

  • Are the Aggies protected by sovereign immunity?
  • Are the states fee to commit copyright infringement without penalty?
  • Did Texas make an unauthorized taking of the copyrighted work?
  • Is copyright infringement never a taking?
  • Is there any other type of liability here?

In 2020, the court decided Allen v. Cooper, holding that sovereign immunity protected states from copyright infringement claims. This case affected the author’s first petition to the Court.  Now he is trying again, challenging sovereign immunity for copyright infringement and its relationship to the Constitution.

Sovereign immunity is the sometimes qualified protection given to states to infringe on the rights of others. Policy decisions underpin much of sovereign immunity.  But should it allow a state entity – like Texas A&M University – to copy someone else’s hard work and creative expression?  Should Texas A&M be subject to copyright infringement despite the policy?

More available here at Patently-O.

Is The Disney Font Copyrighted?

I have been in Boston the past week, and while visiting Faneuil Hall, my family noticed a storefront sign that felt familiar, shown at right.

Faneuil Hall is a nearly three-hundred-year-old building that a rich merchant, Peter Faneuil, had built to house various merchants.  This “Cradle of Liberty” was a meeting location for patriots in the years before the Revolutionary War.  Atop the Faneuil Hall is/was a golden weathervane in the shape of a grasshopper, apparently a good luck imitation of the grasshopper weathervane above the Royal Exchange in London.

Which brings us to the storefront name, Grasshopper Creamery.  The restaurant itself is gone now; I assume this place sold ice cream and fudge or something similar to tourists like me.  I have no idea why it is gone, but I suspect it was not because of intellectual property infringement.

The storefront sign font clearly is the Disney font.  Or a Disney font.  My wife immediately said, “hey, that looks like Disney’s lettering” when she saw the sign.  And it does.  The A, S, and E in the word signs look very similar.

So, is this trademark infringement?   Probably not.  Without doing something more, trademark rights do not attach to a font set, and they do not attach to particular letters such that the use of a similar font on other letters would constitute trademark infringement.  In other words, Disney’s use of the above trademark for ice cream and other food services would not create such strong rights that it could leverage them against a company with an entirely different name like GRASSHOPPER.

But, is it copyright infringement?  This question is tougher to answer.  To be clear, using a font for ten letters (WALT DISNEY) does not create ownership rights in a full set of 26 letters scripted in that font.  In fact, using a font for ten letters as a name (like WALT DISNEY) does not even create copyright rights in that name, because copyright protection cannot substitute in short phrases in names.

Then is there any infringement, any protection at all?  Potentially.  Typographers do protect fonts with copyright.  When an artist develops a new font, he or she can protect it and can register it for official protection with the US Copyright Office.  This gives the artist strong rights and makes it much easier to license to typesetters, printers, artists, and software companies.  Disney may have done this with its font.  If so, it alone would have the right to use those protected letters, and it alone would have the right to license the use of those letters.  In some cases, fair use can allow permissive use, but those circumstances are specialized, limited, and almost certainly would not cover storefront signage for a commercial enterprise.  I am not certain as to whether Disney did copyright its font set, so this question remains unanswered in my book.

Copyright in Works Made for Hire

Copyright law protects a work from the time it is created in a fixed form. From the moment it is set in a print or electronic manuscript, a sound recording, a computer software program, or other such concrete medium, the copyright becomes the property of the author who created it.

Generally, only the author or those deriving rights from the author can rightfully claim copyright. There is an exception to this principle: “works made for hire.” If a work is made for hire, an employer is considered the author even if an employee actually created the work. The employer can be a firm, an organization, or an individual. The concept of “work made for hire” can be complicated, however, and it can have real effects on the ownership of the copyright and the duration of protection.

Section 101 of the Copyright Act defines a “work made for hire” in two parts:

  1.  A work prepared by an employee within the scope of his or her employment; or
  2. A work specially ordered or commissioned for use as:
    • A contribution to a collective work
    • A part of a motion picture or other audiovisual work
    • A translation
    • A supplementary work
    • A compilation
    • An instructional text
    • A test
    • Answer material for a test
    • An atlas

A typical work – one not made for hire – will have protection for the life of author plus 70 years. Corporations don’t have lives, however, and so the duration of a work made for hire is calculated differently. The term of copyright protection of a work made for hire is 95 years from the date of publication or 120 years from the date of creation, whichever expires first.


Copyright Basics

Below I review some basic informationPhoenix Copyright Attorney about copyright and the creation and ownership of copyright protection.  This protection is available to both published and unpublished works. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

  1. Reproduce the work in copies or phonorecords
  2. Prepare derivative works based upon the work
  3. Distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending
  4. Perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works
  5. Display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work
  6. Perform the work publicly (in the case of sound recordings*) by means of a digital audio transmission

It is illegal for anyone to violate any of the rights provided by the copyright law to the owner of copyright. These rights, however, are not unlimited in scope. One major limitation is the doctrine of “fair use,” which has a statutory basis in the Copyright Act. In other instances, the limitation takes the form of a “compulsory license” under which certain limited uses of copyrighted works are permitted upon payment of specified royalties and compliance with statutory conditions.

Copyright protection subsists from the time the work is created in a tangible medium, or in a fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright. In the case of works made for hire, the employer and not the employee is considered to be the author. A “work made for hire” is defined as:

  1.  A work prepared by an employee within the scope of his or her employment; or
  2. A work specially ordered or commissioned for use as:
    • A contribution to a collective work
    • A part of a motion picture or other audiovisual work
    • A translation
    • A supplementary work
    • A compilation
    • An instructional text
    • A test
    • Answer material for a test
    • An atlas

If the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. The authors of a joint work are co-owners of the copyright in the work, unless there is an agreement to the contrary. Copyright in each separate contribution to a periodical or other collective work is distinct from copyright in the collective work as a whole and vests initially with the author of the contribution.

Copyright protects “original works of authorship” that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable works include the following categories:

  1. Literary works
  2. Musical works, including any accompanying words
  3. Dramatic works, including any accompanying music
  4. Pantomimes and choreographic works
  5. Pictorial, graphic, and sculptural works
  6. Motion pictures and other audiovisual works
  7. Sound recordings
  8. Architectural works

These categories are broadly inclusive. For example, computer programs and most “compilations” may be registered as “literary works”; maps and architectural plans may be registered as “pictorial, graphic, and sculptural works.”  There are limitations in subject matter, however. Several categories of material are generally not eligible for federal copyright protection. These include, among others:

  • Works that have not been fixed in a tangible form of expression (for example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded)
  • Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents
  • Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration
  • Works consisting entirely of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources)


Triathlon Trademark or Copyright Infringement in Magazines

What are the issues presented by the most recent editions of Triathlete and Lava magazines? Are there any? If so, could they have been avoided? For the record, Lava issued a week or two after Triathlete.

Blurring out Clothing on TV

I was recently listening to an interview of Morgan Spurlock, who is coming out with a new film called The Greatest Film Movie Ever Sold or, really, POM Wonderful Presents: The Greatest Movie Ever Sold, which explores the world of product placement and the new media of advertising.  The film is completely funded by the advertisers in the film.

The interviewer said that when you make a show, you’re either getting sued for using the product without permission or getting paid to use it with permission.  And so, the discussion moved into talking about all the gaffer’s tape that gets used in television today because the person on camera is wearing a hat whose manufacturer hasn’t cleared its use with the studio, or the maker of the drink that the reality star is chugging doesn’t have a rights agreement with the broadcaster.  With its abundance of reality shows, MTV has become a master at the art of wrapping a soda can in paper, blurring out a t-shirt, and taping over shoe logos.  They do this for a variety of reasons, but most frequently because they haven’t cleared the ability to display trademarks and copyrights recorded on film.  With the huge number of logos and copyright-protected works that are displayed in a reality show, an effort to obtain licenses for each rights owner would be monumental.

As I’ve discussed before, copyright protection doesn’t currently extend to clothing itself.  Because clothing helps satisfy the basic need of shelter, Congress says that it is important we don’t limit the ability to create a basic-need solution or give control of that solution to just one or two companies.  By preventing clothing from being protected under copyright, we hopefully allow companies to produce both high-end and low-end clothing so that everyone can have access to it.

Various attempts to protect clothing with copyright have nevertheless been pursued in Congress.  As I was listening to the interview, I started imagining what would happen to reality shows if such fashion-protective copyright legislation passed.  Jersey Shore would turn simply into one giant blur-effect.  We’d see the faces of the cast, hear the conversations, but everything else would pretty much be blurred or blacked out.  An interesting consequence, and a helpful reminder to think about all the possible unintended side effects from a decision – legal or otherwise.

Copyright for Tyson’s Face

Did you love The Hangover and are you desperately waiting for The Hangover: Part II to come out in a few weeks?  Well, a tattoo artist is trying to stymie your anticipation by preventing its release!  In The Hangover: Part II, Ed Helms’ character gets a tattoo on his face nearly identical to the one Mike Tyson has, and Victor Whitmill, the man who tattooed Tyson’s face several years ago, has sued Warner Bros. for copyright infringement.

There are already some misconceptions floating around the net about who can sue, what they can sue for, and what the defenses are.  A few issues:

Is copyright even involved?

Copyright protects original works of authorship fixed in a tangible medium of expression.  Pieces of art are usually written on paper, preserved with sound recordings, or set down in film.  A tattoo applied to the skin is sufficiently permanently recorded so that it can be perceived, and as long as the tattoo contains a minimal level of creativity, it would qualify for copyright protection.  Certainly Tyson’s tribal tattoo has creativity to it.  Copyright exists.

So who owns the copyright?

Copyright ownership vests first to the author, but can be transferred by assignment.  Whitmill created the work and thus initially owned the copyright (unless it was a work made for hire), and he apparently had Tyson sign a release recognizing that ownership interest.  (Let’s question the intelligence of essentially giving (or not reserving) control of a piece of your body over to someone else.  I would love to see the release and whether it includes any exceptions for Tyson’s own display of his face tattoo.  But more on Tyson’s specific tattoo later).  Whitmill registered the copyright less than a month ago, no doubt as a precursor to this litigation.  Without the copyright registration, he wouldn’t be allowed to bring a federal lawsuit.

What rights can be asserted?

Copyright gives the owner a number of exclusive rights, but generally it allows the owner to prevent anyone from reproducing, displaying, distributing, or preparing derivative works of the original work.  It is possible here that Whitmill could have contracted away some of his rights in his agreement with Tyson.  But presumably, that deal would be between himself and Tyson and thus wouldn’t exempt conduct by third parties.  Ed Helms’ character’s tattoo implicates at least the derivative works right and more likely the reproduction right.  I can’t really see anything more than a trivial variation between the two tattoos; the tattoos bear much, much more than a substantial similarity with each other.  It would be incredibly difficult to argue that the second tattoo has any degree of originality.

Is there infringement?

The copying is so close here, it would be almost impossible to pass a straight-face test in an argument of no infringement.  Clearly, Warner Bros. knew of the Tyson tattoo (he did appear in the first film, after all), and the second tattoo is essentially a replica.  The similarities between the two tattoos are so exact that your mind instantly thinks of Mike Tyson when you see Ed Helms’ tattoo.  If the case gets to court, which it almost certainly won’t, I have no doubt that this point would simply be stipulated.

Are there any defenses to infringement?

The fair use defense is where the argument really arises.  Fair use is a defense to copyright infringement that evaluates a number of factors, namely, the purpose and character of the use, the nature of the copyrighted work, the amount of substantiality of the work used, and a few others.  Most of these factors fall on the side of Whitmill.  The work is highly creative and it has been co-opted completely by Warner Bros.  The one argument Warner may have is that the use of the tattoo is a parody.  A parody must call recognition to the original work and must make some comment on it as well.  The parody doesn’t have to be successful – even if the parody isn’t very good at making its point, it may still be considered fair.  Obviously, there can be a lot of discussion about the comments that the movie is making about the tattoo or Tyson himself.  Until the movie comes out, though, we won’t know for sure what the commentary is, but there may be a strong argument here.

Nevertheless, this case is likely to settle out.  Whitmill has a pretty decent argument, and Warner Bros probably doesn’t want the movie to come out late.  An injunction request has been filed to halt the release of the movie, but a delay of the movie isn’t likely worth the cost of a quick settlement to Warner Bros.

The Takeaway from the Hangover: Applaud the tattoo artist here for being so forward-thinking in retaining his rights in the tattoo.  I’m not sure if releases like this are common at tattoo parlors, but I think they might be after this.

Oh, and why wasn’t there a suit for the first Hangover?  I have a few suspicions.  Copyright law includes a policy known as the first-sale doctrine.  Typically, a copyright owner is given the first chance to distribute his or her work publicly.  Once that first sale is made, however, the owner of the actual work (or the thing in which the work is inherent) can distribute it as he pleases.  It could certainly be arguable that once Tyson paid for the tattoo, he owned that particularly copy and could distribute it as he please.  Thus, it is possible that Tyson didn’t need any provisions in the tattoo agreement allowing him to use or display his face around town, and he could give permission to Warner Bros to reproduce the tattoo on his face in the first movie.

IP Subject Matter Expansion

Professor Andrew Beckerman-Rodau has recently written in the Yale Journal of Law & Technology that intellectual property protection has expanded beyond its intended, or appropriate, scope.  This has resulted in the lines between subject matter (and their corresponding intellectual property) being blurred or completely erased.  In turn, it’s created problems because the typical trio of protection – patent, trademark, and copyright – were developed to carefully balance each other and establish particular creative incentives.   With the areas of protection now merging, the incentives are skewed, the balance is removed, and those original doctrines to which IP was tailored are no longer relevant.

The professor has a great point, and we can find many examples of multiple forms of protection on the same item.   The article explores those original policies, details how change has come about, and considers what problems have developed because of the overlapping IP protection.   Over at IPWatchdog, I played devil’s advocate and questioned whether this necessarily was a bad thing and, if so, whose role it was to correct.  Is it fair to say that intellectual property laws are fundamentally capitalist tools, geared toward innovation, entrepreneurialism, and creativity, and as such, the law should be played out to the fullest extent possible so that those ends are achieved?  Or do we risk serious damage to the economy and the system of innovation by failing to respect the original principles that today are not quite as fully embodied in the law?

MDY v. Blizzard – Ninth Circuit Weighs in on Software ownership and DMCA Anti-Circumvention

The Ninth Circuit Court of Appeals yesterday released an opinion in a World-of-Warcraft case that has meaning both for the nature of software ownership and for a circuit battle ripe for review by the Supreme Court.  The case is detailed nicely over at EFF.

One of the claims made by Blizzard, the WoW creator, against Blizzard, creator of a Glide bot that ran on WoW, could have laid the groundwork for serious damage whenever a software user went beyond the scope of the license.  There is an argument that the license defines the scope of use, and that any use outside that scope is unauthorized.  A copy of software must necessarily be made in the computer for the software to run, so when the use of that software is unauthorized, it is arguably infringing.  And so went the claim: by operating the Glide bot in defiance of the WoW terms and conditions, the gamer was running an unauthorized copy of WoW and thus infringing the WoW copyright.

This line of logic is a powerful tool that could have been used to attack anyone using software in an unauthorized way with not just a contract claim, but a copyright infringement claim.  Double-dipping in this way creates some serious repercussions.  However, the court parried the argument and denied the copyright claim.

The Supreme Court comes into play because of the Ninth Circuit’s ruling on the DMCA provision.  The DMCA has many facets; one of them making it illegal to circumvent technological protections that protect copyrighted material.  The Fifth Circuit’s ruling in MGE UPS Systems Inc. v. GE Consumer and Industrial Inc., in July on this provision stated that liability would arise only if there were circumvention and copying.  In other words, merely breaking through technological protection and viewing or accessing the copyrighted work would not create problems – copying also would have to take place.  The Ninth Circuit has adopted a different track, however, and in this case it holds that both elements need not be present.  This adds another case to the circuit split among several appellate courts, meaning the issue could be ready for final decision by the Supreme Court.

What is a copyright search?

Some law firms provide copyright searches to find out if an image or work might infringe someone’s copyright.  Trademark searches are performed to see if a potential mark is likely to be registered or face obstacles during prosecution.  Patent searches are performed to see if an invention is novel and nonobvious and can be patented.  Copyright searches are a bit different, and often dangerous.

Copyright protection exists from the moment a work is created.  As these words flow from my fingers, I’m contemporaneously obtaining copyright protection in them.  Just about everything with a minimal level of creativity has copyright protection.  Federal registration of a copyright is another thing.  Copyrights that are registered are relatively easy to search and discover.  This makes sense – the government has a list of them catalogued away.  It would be impossible, however, to find all relevant, non-registered, copyrighted images.  Most works are never registered for copyright protection.  Think school essays, restaurant menu designs, website layouts, childhood drawings, and on and on and on….  All of these things have copyright protection, but they will be almost impossible to find because they are usually never registered.  If I draw something and file it away, it has copyright protection, but no one will ever really know about it.

The impossibility of finding them isn’t necessarily a problematic thing.  Because copyright infringement generally requires proof of both access and copying, the impossibility of searching and finding a work could correlate with it not being initially accessed, and therefore, not copied.  This, too, makes sense: the fact that one kid’s picture of the family, the house, the dog, and the sun looks like another kid’s doesn’t mean they are copies – it simply means they look alike.  If the first kid never had access to the other kid’s work, he couldn’t have copied it.

Doing a search opens a can of worms, and that can has the label “access.”  If you were to do a search of registered or non-registered copyrighted images and did find something that is similar to your work, you have now accessed that similar work.  If you then continue to use your work with your new-found knowledge of the similar work, there is an argument that you have now infringed the similar work’s copyright.  So a search doesn’t really help “avoid” infringement: if you copied your image from a work, then you know about the underlying work, and the search is unnecessary.  If you didn’t copy your image from a work, then you will only risk acquiring knowledge of a similar work by performing a search and exposing yourself to an infringement claim.