Tuesday, October 7, 2014

Sirius XM Loses Lawsuit Based on California Copyright Law

Yes, I know, if you ever were a student of mine and heard me lecture/discuss Copyright law, you read that title and said "wait, Professor McCliman, said that the Federal Copyright Act preempted State copyright laws!"  Well, that is true, except the Federal Copyright Act only applies to sound recordings made after February 15, 1972.  According to the Copyright Act, this carve out expires on February 15, 2067.

So, a recent decision by Judge Gutierrez in a case brought by founding members of the band The Turtles against Sirius XM for playing their songs (which were recorded in the 1960's) found that Sirius XM publicly performed The Turtles' songs without authorization, and therefore, violated California copyright law. What is California's copyright law? I am glad you asked.

California Civil Code sections 980, et seq. is California's copyright law.  Section 980(a)(2) provides that the author of a sound recording fixed prior to February 15, 1972 has protection until February 15, 2047.  Seems pretty straightforward, right? Well, one of the main issues before Judge Gutierrez was whether the language of the California statute encompassed public performance (i.e. playing the songs on satellite (or any other) radio).  There was no dispute that Sirius XM played the songs, so it had really no choice but to argue that the playing of the songs did not infringe pursuant to California's copyright law.  Judge Gutierrez did an admirable job of setting out how he interpreted the statute and how it is that he determined that the California statute included public performance.  As such, the court found that Sirius XM infringed The Turtles' California copyrights.

While this ruling can have overarching implications with regard to the various other music providers (Pandora comes to mind immediately), keep in mind that these cases invoke state laws, and therefore, are only applicable in those state where there are such laws.  Nevertheless, it is almost certain that the likes of Sirius XM will find themselves having to defend several similar lawsuits in various states across the country. 

Wednesday, October 1, 2014

"Google" Has not Become Generic . . . yet

 A long time ago, Xerox created an ad campaign urging consumers not to use "Xerox" to mean "make a copy." The reference to "aspirin" in the advertisement was to another trademark which became the name for the product and no longer served as a trademark.  There is also another advertisement by Xerox with cemetery headstones of several other trademarks which lost their trademark-ability because of genericide (I could not locate that ad quickly, but the ones I can recall are: thermos, escalator, dry ice, cellophane, linoleum, brassiere, just to name a few).  Xerox understood that doing so would make their trademark "Xerox" generic for the term.

The term "Google" seems to be awfully close to genericide.  However, according to at least one Federal Court, the rumors of Google's trademark demise are greatly exaggerated.  The Court stated:  "It cannot be understated that a mark is not rendered generic merely because the mark serves a synecdochian 'dual function' of identifying a particular species of service while at the same time indicating the genus of services to which the species belongs."  Well, that certainly is a mouthful and really a long-winded way to say that Google may become generic in the future. 

Indeed, how many times have you or someone you know said "I Googled it" (or something similar) but still conducted an internet search engine?  Seems to me, that if the term "Google" is becoming understood to identify internet searches no matter which search engine the person conducting the search uses, then it can no longer really act as an indicator of the genus of search engines, namely Google. 

Of course, the Federal Court disagreed based in part on some good evidence that over 90% of persons who "Google" something do so using Google's internet search engine.  So, maybe there is hope for the Google trademark after all.  Now, if the gentlemen announcing the NFL games continue to use the term "iPad" to describe the Surface tablets by Microsoft (Microsoft is a sponsor of the NFL), the trademark "iPad" may become generic.  But alas, that may be a blog for a different day.

Tuesday, September 9, 2014

Bring Your Own Devices Bill Signed Into Law by Governor Brown

It has long been thought of a cost-saving measure to allow employees to use their own smartphones or other devices at work.  Makes sense, right?  The company does not have to buy the devices or pay for the cellular plan.  The new law coupled with a recent California Court of Appeal decision makes the bring your own device policy more costly for employers.

First, the law requires all smartphones sold in California to have a "kill switch" allowing someone to remotely disable lost or stolen phones.  Second, the California Court of Appeal ruled that employers need to reimburse employees who use their personal phones for work-related calls (and presumably, e-mails).  Analysts believe that these laws may become the standard across the nation, not just limited to California in the near future. 

I know, you are wondering how these laws make it more costly for companies.  Well, companies need to purchase and maintain software to manage and secure their employees' devices.  The employer would definitely want to ensure that its trade secrets and other confidential/proprietary information could not be obtained by third parties by hacking into an unprotected/lost/stolen device owned by the employee.  It also requires much more IT support than originally anticipated. 

Tuesday, September 2, 2014

Cal State Universities Using Branding to Get Funding

The California State University campuses are turning to slogans, acronyms, and other branding techniques in an effort to raise their ability to market each campus.  The campuses wish to maintain the benefits of being a part of the 23-campus system, while still forging an identity that sets their campus apart.  A few early examples of rebranding, include San Jose State, Sonoma State, and San Diego State.  All of these campuses dropped the "California State University, [enter city name here]" moniker for the easier to remember and shorter "[City Name] State" brand.  Now, it appears that CSU Long Beach wishes to follow suit.  CSU Long Beach is now working to brand itself as Long Beach State and "Beach" for sporting events.  Cal State Northridge adopted the serendipitous acronym "CSUN" for its "new" brand.  "Sea-sun" is so much easier than California State University, Northridge, don't you think? 

One of the main impetuses for this focus on branding was the continued funding cuts by the State.  Those cuts forced these campuses to turn to other ways to raise funds.  One way, would be to create these "new" brands in a way to distinguish themselves from other campuses and schools.  For example, CSU Los Angeles constantly fights confusion with its neighbor, UCLA. 

Hopefully, these CSU campuses will learn from the rebranding effort of UC Berkeley which was a miserable failure. 

Monday, June 23, 2014

Who Owns the Copyright for a Tattoo?

As if it were not enough that college athletes are seeking compensation from video game makers for using their names and likeness, now there is a group of tattoo artists suing video game makers who re-create an athlete's image--including their tattoos.  As with several other emerging copyright issues there are two schools of thought.  One is that, once the athlete pays for the tattoo, it belongs to them.  The other is that the tattoo still belongs with the artist, and therefore, any recreation of that tattoo as part of a game is a violation of the artist's copyright rights.

The ensuing litigation has caused the NFL Players Association--which licenses images of the players to EA Sports--began encouraging athletes to obtain licenses to their body art in order to avoid claims by the tattoo artists against EA Sports. 

Generally, a work remains the property of the author who created it (in this case, the tattoo artists).  However, there is an exception for what the Copyright Act deems "works made for hire."  The works made for hire doctrine allows an employer to be the author of a work created by its employee within the course and scope of his/her employment.  It also applies in the context of a commissioned work (i.e. a work specially ordered or commissioned for use in certain circumstances).  This part of the Copyright Act does not explicitly cover tattoos.  But, if the courts find that the tattoos are, indeed, works made for hire, then there must be a written document indicating that it is a work made for hire. Essentially, this writing transfers the copyright rights to the person receiving the tattoo.  Otherwise, the artist maintains the rights. 

Now, I am pretty sure that before this influx of lawsuits, there were no real written agreements between a tattoo artists and their customers.  I would venture a guess that there are more tattoo artists being asked to sign agreements assigning or licensing their copyright rights to their customers. 

Thursday, June 12, 2014

Leahy Kills Proposed Patent Reform Legislation Targeting Patent Trolls

Patent trolls rejoice! Senate Judiciary Committee Chairman Patrick Leahy killed the Innovation Act which sought to curb patent trolls.  Patent trolls are firms that obtain (horde) patents and use them primarily to threaten lawsuits.  The Innovation Act sought to impose a loser pays regime in patent lawsuits, protect end-users from being threatened with legal action for using commonly available products, and would have required more detailed descriptions of the alleged damage suffered by the trolls in their initial pleadings.

Not surprisingly, the Innovation Act was popular over a broad spectrum of companies, by persons on both sides of the aisle, and the President. Unfortunately, the trial lawyers and drug manufacturers were not such big fans.  Hmmm.  Leahy claimed that the Innovation Act would have "severe unintended consequences on legitimate patent holders."  So, we should let the illegitimate patent holders keep making profits by way of lawsuit extortion?

Monday, June 9, 2014

Another Group Joins the Call to Change the Copyright Act

If you follow this blog at all, you will know that I am not a big fan of the Copyright Act in its current form.  Well, I can happily say that I am not alone.  A group of academic authors known as the Authors Alliance are seeking changes to the Copyright Act to reflect the reality of publishing in the digital age.  In particular, this group wants the Copyright Act changed to allow librarians, archives, and heritage groups to reproduce and store books digitally.  The Authors Alliance says that in denying these groups the ability to digitize books could mean losing "long-term cultural and intellectual history."

I could not agree more.  Unfortunately, the Authors Guild vehemently disagrees.  The Authors Guild feels that making works easily available and sharable digitally will undermine the literary industry--sort of like music sharing has "undermined" the music industry. 

It appears as if the Authors Guild is doing what the music industry did when faced with the digitization of their works, trying to maintain the status quo.  I said it at the time when I was a fairly fresh-faced intellectual property attorney and the Napster case was wending its way through the court system:  the music industry then should have embraced Napster and worked with it to achieve its goals (maintaining profitability for the artists and allowing the copyright holders the ability to control their songs).  Instead, they fought tooth and nail and are now losing terribly.  The Authors Guild should learn from the music industry's mistake. 

The artists should ultimately have a say in how and what type of protections they want to have for their works. As I've written before, some authors are okay with looser restrictions, others want to maintain a vice grip on their intellectual property.  There has to be a way to modernize the Copyright Act to achieve some middle ground given that digitization is going to happen one way or another.