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.