Beauty is in the Eye of the Beholder, not the Fee Holder

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A federal judge in New York awarded 21 graffiti artists a total of $6.7 million after a jury had found that a developer violated their VARA rights by destroying dozens of their murals at the 5Pointz complex when the owner demolished the buildings for redevelopment in 2014, yet property holder may still need schooling on the Visual Artists Rights Act, which gives artists rights that can interfere with the property owner’s right to use its land as it sees fee.

The most recent lesson is being given by Kyle Holbrook, a artist is suing the City Pittsburgh, its housing authority, the Urban Redevelopment Authority, the Port Authority of Allegheny County and numerous landowners and developers over the destruction of his murals, often as part of redevelopment projects.

This article shows some of the murals that were destroyed, and the redevelopment projects that the destruction permitted:

 

 

 

 

 

 

The problem is not the protection of artists, but the consequences of that protection, of which many property owners seem to be unaware.  The critical thing for property owners to remember is that VARA rights under 17 USC 106A can be waived:

The rights conferred by subsection (a) may not be transferred, but those rights may be waived if the author expressly agrees to such waiver in a written instrument signed by the author. Such instrument shall specifically identify the work, and uses of that work, to which the waiver applies, and the waiver shall apply only to the work and uses so identified. In the case of a joint work prepared by two or more authors, a waiver of rights under this paragraph made by one such author waives such rights for all such authors.
Before allowing original art to be installed on one’s property, the property owner should consider obtaining such a waiver.  Otherwise, future use and development of the property may be impaired.

Injunction Vacated; Defendants Free as a Bird to Distribute Film about Lynyrd Skynyrd Plane Crash

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In Van Zant v. Cleopatra Records, Inc., [17‐2849](October 10, 2018), the Second Circuit reversed the judgment of the district court and vacated the injunction against defendants’ distribution of a film about Artimus Pyle’s experience as the drummer for Lynyrd Skynyrd, and the award of $632,110.91 in attorneys’ fees.

Pyle was a late-comer to Lynyrd Skynyrd, and was one of the survivors of the October 20, 1977, plane crash that killed several other band members. Several of the survivors agreed never to use the Lynyrd Skynyrd name, but in 1987 surviving band members embarked on a tribute tour to Lynyrd Skynyrd, which prompted a lawsuit that was settled with a consent order that:

3. Each of the Individual Defendants . . . shall have the right to exploit his . . . own respective life story in any manner or medium, including . . . [a] motion picture[] . . . . In such connection, each of the foregoing shall have the right to refer to “Lynyrd Skynyrd” and related matters and to describe and portray his experience(s) with “Lynyrd Skynyrd;” provided that no such exploitation of life story  rights is authorized which purports to be a history of the “Lynyrd Skynyrd” band, as opposed to the life story of the applicable individual.

Cleopatra approached Pyle for assistance in producing a film titled “Street
Survivors: The True Story of the Lynyrd Skynyrd Plane Crash,” and after a news article revealed that a film was in the works, plaintiff’s brought suit to enforce the consent order.  The district court issued a permanent injunction prohibiting distribution of the Film and other related activities, reasoning that even though Cleopatra not a party to the consent order, it had acted “in concert or participation” with Pyle to produce the Film, which violated the Consent Order.

The Second Circuit rejected the argument that this was a classic First Amendment violation involving an unlawful prior restraint, noting that no government entity was involved in obtaining the order.   The Second Circuit said that nevertheless, the case implicates free speech concerns, and two circumstances counsel caution in permitting an expressive work to be enjoined: first, it involves a restraint on the viewing of an expressive work prior to its public availability, and second, the injunction restricts
the actions of an entity that was not a party to the contract.

Ultimately the Second Circuit concluded that the injunction was unenforceable because it was insufficiently specific, permitting what it also appeared to prohibit.  Pyle was permitted to make a movie that describes his experiences with Lynyrd Skynyrd and to refer to the band, but he may not make a movie that is a history of the band.  The script for the movie that Cleopatra has been enjoined from distributing illustrated the inconsistency, or at least the insufficient specificity, of the terms of the Consent Order. The script tells the story of the plane crash in which some members of the band were killed and from which Pyle walked away.  That crash is part of the “history” of the band, but it is also an “experience” of Pyle with the band, likely his most important experience. Provisions of a consent decree that both prohibit a movie about such a history and also permit a movie about such an experience are sufficiently inconsistent, or at least insufficiently specific, to support an injunction.

Two judges joined the opinion, but wrote separately that in their view the movie script did not violate the Consent Order, further illustrating the point that the Consent order was insufficiently specific.

Private agreements that restrain speech must be clear and unambiguous to be enforceable.

 

The Marking Requirement is Alive and Well; Don’t Forget about Virtual Marking

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The Federal Circuit recently faced a patent marking issue in Arctic Cat Inc. v. Bombardier Recreational Products Inc., [2017-1475] (December 8, 2017).  In that case, the patent owner Arctic Cat had previously licensed the patents in suit to Honda. The license agreement with Honda specifically stated that Honda “shall have no obligation or requirement to mark” its licensed products.  While this provision no doubt made sense to Arctic Cat at the time, it put at risk the damage award against accused infringer Bombardier for the period of time before Arctic Cat received actual notice of infringement.

The Federal Circuit held that an alleged infringer who challenges the patentee’s  compliance with § 287 bears an initial burden of production to articulate the products it believes are unmarked “patented articles” subject to § 287. Once the alleged infringer meets its burden of production, however, the patentee bears the burden to prove the products identified do not practice the patented invention.

Compliance with the patent marking statute can be difficult because the patent owner may have to change the molds or other equipment used in manufacture as the patent issues, and again as the patents expire or are invalidated (lest the patent owner be accused of false marking).  This obligation also extends to the patent owner’s licensees, but it is easy to understand why a licensee, such as Honda in this case, would not want to be bothered with marking.

 

However many patent owners appear to be unaware that the AIA made it easier for patent owners (and their licensees) to comply with the patent marking requirement.  While it could not have helped Arctic Cat and its licensee Honda in their pre-AIA license, amended §287(a) now allows the patentee to mark by “fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent.”  Thus when patents issue or expire, a patent owner simply has to update a website – not change molds or printing plates.

A Report to Congress on virtual marking in 2014 concluded that “virtual marking has likely met its intended objectives of reducing manufacturing costs and facilitating public notice in certain situations.”  This assessment was probably correct, but virtual marking remains under-utilized.  Among virtual markers, some provide online lists:

TIVO: www.tivo.com/patents

Nanoleaf: http://nanoleaf.me/patents/

Densify: http://www.densify.com/company/virtual-patent-marking.htm

Arthrex: www.arthrex.com/corporate/virtual-patent-marking

Hill-Rom: http://www2.hill-rom.com/usa/PDF/Patent_20120609.pdf

 Actifio: https://www.actifio.com/patents/

some provide a downloadable list:

Bunn: www.bunn.com/patents

some provide lists for individual products:

Kimberly Clark www.kimberly-clark.com/patents

and some provide a searchable database:

St. Jude Medical: http://patent.sjmneuro.com/Public.

Virtual patent marking is one of the few benefits of the AIA, but inventors and their assignees do not appear to be taking advantage of it.

 

Copyright Claim from Out of the Blue

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Leslie Weller has sued Gillian Flynn, author of the book Gone Girl, and a host of others for infringing Wellers’s copyright in a novel titled Out of the Blue.  What is interesting about this case (aside from the fact that every successful movie seems to be based upon copyright infringement) is the case for access by defendant.  Plaintiff emailed her script to a consultant whose books were edited by who was represented by the Levine Greenberg  who also represented defendant Flynn

Plaintiff’s claim is on its face plausible, but so convoluted, that defendant may be able to break the chain.  However, this Complaint, and others like it, are a reminder of the importance of keeping records of development, whether its a story as here, or a computer program or some other work, to be able to prove independent creation.

Plaintiff’s Complaint does identify a number of similarities in between Gone Girl and Out of the Blue, and it will be interesting to see the defendants response.  If there was no infringement, hopefully defendants have records to show the independent creation.

 

For God’s Sake, Copyright Does Not Protect Ideas, Only Expression

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On December 6, 2107, Judge Louis Stanton dismissed Randy Brown’s copyright law suit again Time Warner, Turner Broadcasting, Cartoon Network, and others, based upon the claim that the television series Black Jesus infringed his short story Thank You Jesus.

Judge Stanton’s opinion concisely stated what every copyright owner needs to remember:

It is a principle fundamental to copyright law that a copyright does not protect an idea, but only the expression of the idea.

Judge Stanton found that there are “no similarities between the two works beyond the abstract and unprotected idea of an African American male protagonist named Jesus who believes that he is the Son of God.”  Review plot, characters, setting, themes and total concept and feel, he concluded that the concept of an African American Jesus who engages in allegedly “un-Jesuslike” conduct is an abstract idea, which is illustrated and expressed differently by entirely different stories in each work.  Judge Stanton found that no reasonable jury, properly instructed, could finding that the expressions of Thank You Jesus are substantially related to Black Jesus.

While the law does provided limited protection for ideas under certain circumstances, copyright does not.  Merely because a second work is based upon the same idea as a first work does not mean it infringes the copyright in the first work.

 

Not All Pirates are in the Caribbean

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On November 14, 2017, Arthur Alfred II, Ezequiel Martinez, Jr., and Tova Laiter sued The Walt Disney Company in the District of Colorado, alleging copyright infringement, and claiming that the Pirates of the Caribbean franchise of films, video games, theme park attractions, merchandising, casino games, literature and other related items infringe their screenplay of the same name.  The focus of the Complaint is that the Captain Jack Sparrow character in the Disney productions is substantially similar to the character Davy Jones in their screenplay.

Plaintiffs claim that Jack Sparrow is “an expression of a uniquely new ‘pirate.'”  Interestingly, the “idea” of humorous pirates may have been the idea of the rides original designer, Marc Davis, who realizing actual pirates were not particularly glamorous, opted for a more whimsical and romanticized approach that was less threatening to younger audiences.  Moreover Johnny Depp has claimed that his portrayal of Jack Sparrow was his own invention, and almost got him fired.

The court will have to decide whether Jack Sparrow and Davy Jones are similar because they are embodiments of the same idea or because they share the same expression.

He Who Lives by the Suit, Dies by the Suit

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CBS Broadcasting Inc. has sued photographer Jon Tannen for posting still images from the Gunsmoke episode “Dooley Surrenders,” first aired on March 8, 1958. On line posting of images from classic television is fairly common, leaving one to wonder whether there isn’t more to the story, and it turns out there is.  As CBS Broadcasting explains in Paragraph 1 of its Complaint: “Tannen hypocritically engaged in this act of infringement while simultaneously bring suit against Plaintiff’s sister company, CBS Interactive Inc., claiming it had violated his own copyright.”

Tannen sued CBS Interactive in February, claiming that the online division of CBS had used two of his photographs without permission to illustrate an article about high school football player Sofian Massoud.

Despite being created by statute (17 USC 107) the only thing certain about copyright fair use is that it not as broad as everyone thinks it is.  Grabbing pictures from Google image searches to make a point or make a joke is common, but not every such use is technically a “fair use.” Although the widespread use of images in this manner probably is broadening the definition of fair use.  The Tannen v. CBS v. Tannen situation is a reminder that not all online uses of images are fair uses, and more importantly, if you are going to complain about something, you better not be doing what you are complaining about.

 

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Technology Policies Protect The Company and its IP

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A computer and technology policy is an important part of protecting and managing intellectual property.  A business should consider establishing a policy addressing the following points:

Use of Company Technology

The technology provided by the company, including computer systems, communications networks, company-related work records and other electronically stored information in general should be used for only for the business of the company. Whatever the purpose, employees should be prohibited from transmitting, retrieving, or storing any communications or other content of a defamatory, discriminatory, harassing or pornographic nature. No messages with derogatory or inflammatory remarks about an individual’s race, age, disability, religion, national origin, physical attributes or sexual preference may be transmitted. Harassment of any kind should be prohibited.

Restricted Access to Computer Systems and Data.

The  Federal Computer Fraud and Abuse Act (18 U.S.C. §1030) provides protection against the improper accessing of computer systems and data, but the key to its protection is that the access is unauthorized.  Because an employee is generally authorized to access the company’s computer system, the protections of the CFAA are frequently held not to apply to the actions of employees.  By carefully defining what employees are authorized to do with the company’s computer systems and data, and what an employee is not authorized to do, the company may be able to extend the protections of the CFAA to disloyal that activities of disloyal employees.  Many states have laws that parallel the CFAA, for example Missouri’s Computer Tampering Statute Mo.Rev.Stat. §537.525.

 

Unlicensed Software

Employees downloading, installing, and running software can jeopardize the company’s computer system, and their installing and running unlicensed software can create substantial copyright liability.  Civil damage awards of up to $150,000, plus attorneys’ fees and costs, are possible as well as criminal penalties including substantial fines and imprisonment.  Employees should be restricted from downloading software and plug-ins without permission from IT, and Employees should be prohibited from installing unlicensed software on company computers.  Employees should further be prohibited from using unlicensed software on their personal computer to perform work for the Company.

Copyrighted Material

Copyrighted materials belonging to third parties should not be transmitted or stored on the company’s network without permission of the copyright holder. Employees should be encouraged to share links rather than actual copies.  Employees should be educated about the limits of fair use an incorporating copyrighted materials into company work product.

Social Media

The company should consider whether it wants employees posting anything about the company (good or bad).  Even well-intentioned posts can interfere with the coherent message that the company is trying to project.  At a minimum the company should instruct employees about the message that the company is trying to project on social medial.

The company should also consider whether it wants employees to identify themselves as employees of the company when participating in social media. Views expressed by employees could be attributed to the company by the mere fact of their employment,

Using Company email and email Addresses

The company should consider whether it wants employees using company email and in particular a company email address in conducting personal business.  Having the company’s email address associated with on-line postings could result in the employee’s personal opinions being attributed to the Company.  Email is also a tool for stealing electronic files.  The company should monitor employee emails, and advise employees that they are doing so.

Employees should be regularly reminded that company emails are business records that may be discoverable, and their content should be prepared accordingly

No outside media

Not only are flash drives and similar devices a tool for stealing electronic files, but they are a vector for computer viruses and other malware.  However they are beneficial and convenient and a complete prohibition could interfere with the proper conduct of the business.

 

 

 

Non-parties to an Arbitration Agreement are Generally Not Bound to Arbitrate

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In Waymo LLC v. Uber Technologies, Inc., [2017-2130] (September 13, 2017), the Federal Circuit affirmed the district court decision that Uber Technologies, Ottomotto LLC, and Otto Trucking LLC could not compel Way merely because they Waymo was arbitrating a related dispute with Levandowski, who did have an arbitration agreement with Waymo.

The Federal Circuit said that Contract law principles hold that non-parties to a contract
are generally not bound by the contract, and a contract to arbitrate is not an exception. A party cannot be required to submit to arbitration any dispute which it has not agreed so to submit.  The Federal Circuit noted that the California courts have, in a few situations, compelled arbitration against an entity that was not a party to an arbitration agreement. The Federal Circuit said that the issue was whether the circumstances are such that Waymo can be compelled to arbitrate on equitable grounds, in Waymo’s suit against Uber, Ottomotto, and Otto Trucking, where there is no agreement to arbitrate.  The district court concluded that it could not, noting that Waymo had disclaimed reliance on the contracts with the employee, and Waymo need not rely on the terms of its written agreements merely because it makes reference to such agreements.

The Federal Circuit said that while equitable doctrines permit departure from the principle that non-parties cannot be compelled to arbitrate, when necessary to avoid
inequity, California precedent guides that unless the issues of the complaint are intimately intertwined with the non-party agreement containing an arbitration clause,
compulsion to arbitrate is inappropriate.  The Federal Circuit concluded that the district court correctly concluded that arbitration should not be compelled.