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Tag: ownership

Dec 15 2010 by tom

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

Posted in Copyright Law

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.


Sep 30 2010 by tom

Who owns my logo? The graphic design company that developed it or me?

Posted in Business Law, Copyright Law, Trademark Law

You may have hired a graphic artist or agency to develop your company’s logo. Do you know who owns the rights in it?

There are two main types of intellectual property rights that can reside in a logo: copyright and trademark. Copyright protects an original work of authorship fixed in tangible means of expression; typically, a creative or artistic piece that is drawn, painted, saved, or otherwise recorded. Trademark rights protect the use of a symbol or identifier in connection with the sale or advertisement of a product or service.

Copyright usually vests in the person that created the work. However, when someone is hired by another to develop a work, the copyright may be owned by the employer or hiring party. Generally, in standard salary-based employment relationships, the employer will own copyright in works produced by the employee. But a graphic artist hired to develop a logo isn’t a standard employee – he or she is an independent contractor. The fact that the work is being produced expressly for the company’s use as an emblem for its identity likely weighs toward finding that the company is the owner of the copyright in the work, but it doesn’t provide a guarantee. A contract should be in place between the company and the graphic artist defining the relationship, and it should also cover the copyright in the work(s) produced.

Why is copyright a concern? Technically, if it were determined that the graphic artist retained ownership in the copyright, then the company would be infringing that copyright each time it used the work as its logo (absent a licensing agreement). Ouch. Or, if the company wanted to make a similar logo with a few slight differences, that newer logo could be considered an infringing derivative work of the original. Losing control of the copyright effectively equates to a loss of the ability to use and develop the logo.

Trademark rights are more clear-cut. Trademark rights arise only where there is use. While the graphic artist may have developed the logo, she did not use it in a trademark sense; in other words, she did not advertise a product with the mark affixed or sell an item that carried the logo. She has merely created the mark, and creation alone does not spawn trademark rights. Therefore, trademark concerns shouldn’t be too problematic when using a graphic artist to develop a logo.

Nevertheless, make sure that the contract with the graphic artist deals with trademark rights. There isn’t a reason for the graphic artist to hold onto any copyright or trademark rights that might arise in the work she creates. Her business isn’t holding copyright and trademark lawsuits over people’s heads; it is helping people develop creative and effective logos for their businesses.


Aug 05 2010 by tom

Love, Marriage, Divorce & Patents

Posted in Patent Law

Patently-O has some interesting discussion regarding the ownership of a patent after a divorce.  The case is Enovsys v. Nextel and stems from Sprint-Nextel’s appeal of a patent infringement verdict.  As part of its argument, Sprint claimed that the plaintiff (the co-inventor’s company) lacked standing to sue, because the co-inventor’s ex-wife did not join the suit.  Why should his ex-wife have been involved?  Well, Sprint noted that all co-owners of a patent must sue jointly; it then claimed that because the ex was married to the co-inventor when the inventor filed the application, she had a community property interest that continued as a legal interest in the patent after the divorce.  Without her, the suit was improper.

The court disagreed.  Well, the court probably would have agreed with that, but found that because the couple signed a divorce decree that stated something like “we’ve got no community property in this marriage,” the ex-wife no longer had any interest in the patent and therefore wasn’t required to be joined in the infringement suit.

I agree with the court, but it did spark a question in my mind.  Whether or not the spouse is a co-owner of a patent, the court decided, is determined as of the patent’s filing date.  I’m not sure about that.  The law that the court relied on was pretty flimsy.  Hard to say that a patent application is property – federal law says “patents have the attributes of personal property,” but it doesn’t say they are property and it doesn’t say patent applications are property.  So is there property before a patent issues from a patent application?  If yes, is there property before the application is even filed?  At what point does the invention go from an idea to actual property – that seems to the point at which the community property/separate property determination should be made.  California law was pretty bare on this, according to the cites in Enovsys v. Nextel, and I don’t know of any Arizona law dealing with this.