marie-andree@maw-law.com, Author at MAW-LAW Web Site

Monkey Business (Law): A TTLF Post

April 8, 2016 · by marie-andree@maw-law.com ·

The infamous monkey selfie is quite an interesting copyright case. I wrote about it in the latest issue of the Transatlantic Technology Law Forum (TTLF) newsletter. The blog post is here. What is the case about?

A human photographer set a camera in a reserve in Indonesia. A macaque named Naruto clicked the button while looking at the camera. A beautiful selfie is taken. Who owns the copyright of this photograph? Is the selfie in the public domain? Does the human photographer own the copyright? Or does Naruto own it?

The human photographer published a book featuring the selfie, along with other pictures taken by Naruto. The People for the Ethical Treatment of Animals (PETA) filed a complaint against him and the publisher, acting on behalf of the monkey. PETA lost the case.

Naruto had argued that he had:
“the right to own and benefit from the copyright in the Monkey Selfies in the same manner and to the same extent as any other author. Had the Monkey Selfies been made by a human using Slater’s unattended camera, that human would be declared the photographs’ author and copyright owner. While the claim of authorship by species other than homo sapiens may be novel, “authorship” under the Copyright Act, 17 U.S.C. § 101 et seq., is sufficiently broad so as to permit the protections of the law to extend to any original work, including those created by Naruto.”

Alas! Animals have no standing under the Copyright Act, meaning they cannot filed a copyright infringement suit (or any other lawsuit for that matter.) In Cetacean Community v. Bush, the Ninth Circuit Court of Appeals held that “if Congress and the President intended to take the extraordinary step of authorizing animals as well as people and legal entities to sue, they could, and should, have said so plainly.”

But that does not necessary mean that the human photographer owns the copyright in the selfie. The selfie is probably in the public domain in the U.S., but may not be in the European Union.

Image is courtesy of Flickr User Carine06 under a CC BY-SA 2.0 license.

Filed Under: Copyright, TTLF Newsletter · Tagged: copyright infringement, Public Domain, Selfie

Crowdfunding May Take Fair Use Where It Has Never Gone Before

April 8, 2016 · by marie-andree@maw-law.com ·

On December 29, 2015, Paramount Pictures and CBS Studios sued Axanar Productions and its principal Alec Peters, claiming that its short movie Prelude to Axanar infringes their copyright in Star Trek, as it is an unauthorized derivative work (Complaint). On February 22, 2015, Defendants filed a motion to dismiss (Motion), claiming that the complaint does not contain sufficient factual matters to put Defendants on fair notice of the claims against them.

Star Trek first appeared on television in 1966, and the original series ran three seasons until 1969. The franchise now comprises six television series and twelve movies. Another movie is set to be released on July 22, and another television show is planned. The Complaint claims that Star Trek is “one of the most successful entertainment franchises of all time.”

In one of the episodes of the original series, Captain Kirk, the captain of the U.S.S. Enterprise, meets his hero, former Starfleet captain Garth of Izar, and they discuss the battle of Axanar between the Klingon Empire and the Federation, which was won by Garth. Reading about the battle is required at the Starfleet Academy, of which Captain Kirk is a proud graduate. This is the only time the battle is mentioned in Star Trek.

The battle of Axanar is the topic of a short movie written, directed and produced by Defendants after a successful crowdsourcing campaign on Kickstarter. The movie has been shown for free on YouTube since 2014. Defendants are now raising money through crowdsourcing to produce a longer Axanar movie.

However, Defendants moved to strike Complaint’s allegation that they “are in the process of producing a film called Axanar.” They also argued the copyright infringement claim regarding the movie is premature, at it has not yet been made, and that “seeking to stop the creation of a work at this stage would [be] an impermissible prior restraint” (Motion to Dismiss p. 10).

Fan Fiction

The Complaint states that Star Trek “has become a cultural phenomenon that is eagerly followed by millions of fans throughout the world.” Indeed, Star Trek has its own fan fiction cottage industry. It includes short stories, novels, and even new episodes, such as those produced by “Star Trek: New Voyages,” a project which is also crowdfunded and produced by a non-profit. The first New Voyage episode was released in 2004 and the project is still going strong, without apparent concern from CBS and Paramount.

In an article published in 1997, Professor Rebecca Tushnet traces “[f]an fiction and organized media fandom… to the second season of Star Trek in 1967,” and cites a much earlier instance of fan fiction when Lord Tennyson imagined what happened next to Ulysses.

Under Section 106(2) of the Copyright Act, the copyright owner has the exclusive right to prepare derivative works. There is no doubt that fan fiction is derivative work, that is, “a work based upon one or more preexisting works.” Is fan fiction copyright infringement?

Copyright Infringement

Plaintiff in a copyright infringement suit must prove ownership of the copyright and must also prove actual copying. Copying may be proven by circumstantial evidence by showing access to the protected work and substantial similarity.

Plaintiffs claimed they own copyrights in the Star Trek television series and motion pictures. However, Defendants argued that the Complaint “lump[s] both Plaintiffs together and appear to allege collective ownership of all of the Star Trek [c]opyrighted [w]orks,” even though Plaintiffs cite a copyright assignment from Paramount to CBS, and “fail[ed] to specify which of those copyrights Defendants have allegedly infringed.”

Defendant, of course, had access to Star Trek. But Plaintiff must also prove substantial similarity between the original and the derivative work. The Ninth Circuit uses the extrinsic/intrinsic test created in the Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp. case. The extrinsic text is thus called “because it depends not on the responses of the trier of fact, but on specific criteria which can be listed and analyzed. Such criteria include the type of artwork involved, the materials used, the subject matter, and the setting for the subject. Since it is an extrinsic test, analytic dissection and expert testimony are appropriate” (Sid & Marty Krofft at 1164).

The Complaint claims that Defendant’s short movie is substantially similar to the Star Trek works, listing similar characters, the use of the Federation, similar costumes, sets, props, and logos, and further claims that the “feel and the mood” of Defendant’s work is similar to the original works.

It is interesting to note that the Star Trek New Voyages project has also replicated some sets of the original series, such as the transporter room, the sick bay and the bridge of the Starship Enterprise, and used Star Trek characters and costumes, without having been sued for copyright infringement.

Possible Defense

Plaintiffs argue that the Axanar short movie is neither a parody nor fair use. Defendants calls it a “short mockumentary.” Could the fair use defense be successful? Defendants did not address the issue, arguing instead that the claim is unripe.

The four fair use factors are 1) purpose and character of the use, 2) nature of the copyrighted work, 3) amount and substantiality taken, and 4) effect of the use upon the potential market.

The purpose and the character of the use factor inquiry includes whether the use is commercial. Defendants explained on their website that Axanar is not licensed by Paramount and CBS, but that it is an “independent project that uses the intellectual property of CBS under the provision that Axanar is totally non-commercial. That means we can never charge for anything featuring their marks or intellectual property and we will never sell the movie, DVD/Blu-ray copies, T-shirts, or anything which uses CBS owned marks or intellectual property.” This statement has been since deleted. In a crowdfunding pitch video , Alec Peters explains that CBS has “graciously allowed” that he and others make Star Trek movies as long as they do not profit from it, sell anything with ‘Star Trek’ on it, and that they “have to honor the best story – telling tradition of Star Trek.”

Indeed, this is what Star Trek New Voyages has been doing for years. Defendants claim in their Motion that Prelude to Axanar is a ‘mockumentary,’ and indeed the video narrates the battle of Axanar using a format favored by the History Channel, as explained on Defendants’ site.

As for the nature of the copyrighted work, there is little doubt that the argument would go in Plaintiff’s favor, as the television series and the movies are highly creative. The third factor, the amount taken, could be in Plaintiffs or Defendant’s favor. It is hard to say without engaging in a complete analysis.

As for the effect upon the potential market, it could be argued that it is actually beneficial for Plaintiffs, not detrimental, and thus the fourth factor could be in favor of Defendants. Professor Tushnet noted in her article on fan fiction that the great success of the official Star Trek derivative works co-existed with numerous Star Trek fan fiction, and that this “provides strong evidence against the claim that fan fiction fills the same market niche as official fiction” (p.672). Could the same be argued for the Axanar movie if it is ever produced?

This Case May Very Well Stretch the Limits of Fair Use

This case is interesting as it shows that crowdfunded User-Generated Content could stretch the limits of fair use. It seems that CBS and Paramount have tolerated Star Trek fan fiction for years, understanding that what a copyright attorney may regard as unauthorized derivative work is indeed valuable user-generated marketing and promotional content.

But written fan fiction, even if published online, may not replace the experience of watching a Star Trek movie or television show. Crowdfunding has allowed the Axanar project to be built as a non-profit project, and it would not be shown in movie theaters. But it could nevertheless compete on the market with official Star Trek movies. Watching the Axanar short movie was quite entertaining, and I expect the future movie to be as well.

Producing such fan movies is not possible without crowdfunding. As more fan fiction is likely to be financed this way in the future, it will be interesting to see the effect of this practice on fair use, although I do hope fair use will live long and prosper.

This blog post was first published on The 1709 Blog.

Image of Star Trek figurines is courtesy of Flickr user Kevin Dooley under a CC BY 2.0 license.

Image of Spock being watched is courtesy of Flickr user JD Hancock under a CC BY 2.0 license.

Filed Under: Copyright · Tagged: Copyright, Crowffunding, Fair Use

Employer Cannot Ask Employee to Delete Tweets about Wages and Work Conditions

April 1, 2016 · by marie-andree@maw-law.com ·

On March 14, 2016, Administrative Law Judge Susan A. Flynn from the National Labor Relations Board (NLRB) ruled that Chipotle had violated Section 8(a)(1) of the National Labor Relations Act (NLRA) when it asked an employee to delete some of his tweets about employees’ wages or other terms and conditions of employment. The case is Chipotle Services LLC d/b/a Chipotle Mexican Grill.

Chipotle operates a nationwide chain of restaurants, and the employee who had posted the tweets at stake worked for one of Chipotle’s restaurants in Pennsylvania. While working there, he posted several tweets which attracted the attention of his employer’s national social media strategist, whose responsibility was to review social media postings made by employees in violation of Chipotle’s social media policy.

The employee’s tweets commented on the hourly wage offered by Chipotle and on the fact that employees had to go to work on snow days. The regional manager was informed about these tweets by the social media strategist. He came to the restaurant where the employee worked, showed him Chipotle’s social media policy and asked him to delete the tweets, which he did. However, the manager relied on an outdated social media policy, which had been forwarded to him by the social media strategist.

Later on, the employee circulated a petition asking the restaurant where he worked to stop denying breaks to employees, which he alleged was then occurring regularly. Following a testy conversation with his manager about the petition, he was asked to leave the premises, and was eventually fired. I will only discuss in this post the issue of the unlawfulness of asking the tweets to be deleted.

The outdated social media policy was unlawful

After the fast food worker’s Union filed the complaint, Chipotle moved for summary judgment, arguing that allegations based on an outdated social media policy are moot. However, Judge Flynn denied the motion, as the outdated policy may have played a role in the actions taken against the employee.

The two challenged provisions of the outdated social media policy were:

“If you aren’t careful and don’t use your head, your online activity can also damage Chipotle or spread incomplete, confidential, or inaccurate information.”

“You may not make disparaging, false, misleading, harassing or discriminatory statements about or relating to Chipotle, our employees, suppliers, customers, competition, or investors.”

The policy informed employees that violating these rules may lead to disciplinary actions, including termination.

However, Section 8(a)(1) of the NLRA prohibits employers “to interfere with, restrain, or coerce employees in the exercise of the rights guaranteed in section 7 [of the NLRA].” Under Section 7, employees, whether they belong to a union or not, have the right to engage in “concerted activity for the purpose of collective bargaining or other mutual aid or protection,” NLRA §7, 29 U.S.C. §157.

Judge Flynn quoted the NLRB Lafayette Park Hotel 1998 case and the NLRB Lutheran Heritage Village-Livonia 2004 case to explain that under NLRB case law, an employer violates Section 8(a)(1) “when it maintains a work rule that reasonably tends to chill employees in the exercise of their Section 7 rights.” Indeed, the NLRB considers that a work rule violates Section 8(a)(1) if it explicitly restricts activities protected by Section 7 or if the challenged rule is such that: (1) employees would reasonably construe its language to prohibit Section 7 activity; (2) the rule was promulgated in response to union activity; or (3) the rule has been applied to restrict the exercise of Section 7 rights.

In this case, the challenged social media policy did not explicitly prohibit Section 7 activity, but Judge Flynn found that employees would reasonably construe portions of the policy to restrict their rights under Section 7.

Prohibiting false, misleading, inaccurate and incomplete statements is unlawful

Judge Flynn found the provisions of the social media policy which prohibited spreading false or misleading statements to be unlawful. Such statements only lose their NLRA protection if the employee had a malicious motive in making these statements, meaning that the employee knew these statements were false, or that the employee had reckless disregard for their truth or falsity.

Prohibiting disclosing confidential information is unlawful

Judge Flynn noted that the social media policy did not define “confidential” and thus the word is “vague and subject to interpretation, which could easily lead employees to construe it as restricting their Section 7 rights.”

Prohibiting disparaging statements is unlawful

As for “disparaging,” Judge Flynn noted that prohibiting disparaging statements “could easily encompass statements protected by Section 7” and that the NLRB “has found rules prohibiting derogatory statements to be unlawful.” Judge Flynn quoted the recent Costco Wholesale Corp. case, where the NLRB determined in 2012 that a rule prohibiting speech “that damage the Company, defame any individual or damage any person’s reputation” was overbroad and thus violated the NLRA. Judge Flynn concluded that “[t]hus, disparaging statements would reasonably be construed to include matters protected by Section 7.”

Prohibiting harassing or discriminatory statements is lawful

However, Judge Flynn did not find that the prohibiting harassing or discriminatory statements violated the NLRA, as the NLRB does not consider such statements to be unlawful, even if they could be interpreted by an employee to apply to activities protected by Section 7.

Disclaimer does not cure unlawfulness of the social media policy

Chipotle’s social media policy ended with this disclaimer:

“This code does not restrict any activity that is protected or restricted by the National Labor Relations Act, whistleblower laws, or any other privacy rights.”

However,” [t]hat sentence does not serve to cure the unlawfulness of the foregoing provisions” according to Judge Flynn, citing Allied Mechanical, 349 NLRB 1077, 1084 (2007).

It was illegal to ask the employee to delete the tweets, because there were concerted activities

Section 7 of the NLRA protects the employee’s right to engage in concerted activities for the purpose of mutual aid or protection.

The tweets posted by the Chipotles’ employee were concerted activities under Section 7. They addressed working conditions and salaries at the restaurant, and “[w]ages and working conditions are matters protected by the [NLRA].”

The tweets were concerted activity even if the employee had not consulted his colleagues before posting them because they sought to initiate, to induce or to prepare for group action, or could be considered to be complaints brought to the attention of management. Also, the tweets were for the purpose of mutual aid or protection, as there was a link between the activity and the matters concerning the workplace or employee’s interests as employees.

Judge Flynn concluded that since the tweets were concerted activities, asking the employee to delete them violated Section 8(a)(1). Also, the judge found that management had implicitly directed the employee not to post similar tweets in the future, and thus had prohibited an employee from engaging in protected concerted activity.

Judge Flynn ordered Chipotle to “[c]ease and desist from directing employees to delete social media postings regarding employee wages or other terms or conditions of employment [and from] [p]rohibiting employees from posting on social media regarding employee’s wages or other terms or conditions of employment” and to further maintain social media policies limiting unlawfully employee’s rights to engage in Section 7 activity.

Judge Flynn also ordered Chipotle to rehire its former employee and to compensate him for any loss or earnings or benefits suffered as a result of his discrimination.

Photo is courtesy of Flickr user Sandy under a CC BY 2.0 license.

Filed Under: Social Media Law · Tagged: NLRB, Social Media Policy, Tweeting and the Workplace

Kendall Jenner Files Right of Publicity Suit

March 25, 2016 · by marie-andree@maw-law.com ·

On February 10, 2016, Kendall Jenner and Kendall Jenner, Inc., filed a right of publicity and trademark infringement suit in the Central District of California against Cutera, a provider of laser dermatological treatments. The case is Kendall Jenner Inc. v. Cutera, CD California, 16-00936.

Who is Kendall Jenner? Well, she is “one of the one of the world’s most popular supermodels” [sic] as the complaint explains (or hiccups?). She has “graced the covers of the world’s most prestigious fashion magazines” and “walked the runways for the elite of the fashion world.” She also is a “successful clothing designer” and a “well-known television personality” as the Keeping Up with the Kardashians reality show airs “in over 160 countries worldwide” (you read that right).

If all these achievements would not be enough, Ms. Jenner is also “one of the largest social media presences of any young woman of her generation,” with over 48 million followers on Instagram, over 15 million followers on Twitter, and some 12 million “likes” on Facebook. Wouldn’t it be nice if Ms. Jenner tweeted about this blog post?

Defendant Cutera is, according to the complaint, a “designer of medical aesthetic applications.” One of its products is Laser Genesis, a laser treatment which dermatologists may use to rid their patients of spider veins, dark spots, wrinkles, and other skin defects.

Just before the beginning of Fashion Week in New York, Cutera started advertising early February the Laser Genesis treatment in New York, particularly “outside New York skin care centers.” The ad features a picture of Plaintiff on the right side and reads at the top: Acne “Completely Ruined” Kendall Jenner’s Self-Esteem. The ad further claims that Laser Genesis is responsible for Plaintiff’s “nearly flawless skin.” The ad has also allegedly been distributed in California, around the U.S. and even around the world.

Alas, Defendant had allegedly not sought permission to use Plaintiff’s name and likeness. If this is proven, it would clearly be an infringement of Ms. Jenner right of publicity.

I will not address the trademark infringement claim in this post. Let’s just note that Plaintiff owns the KENDALL JENNER registered trademark in class 35 for “advertising services, namely, promoting the brands, goods and services of others” and “endorsement services, namely, promoting the goods and services of others.” The complaint alleges that Cutera’s ad is likely to create consumers ‘confusion, and capitalizes on Plaintiff’s good will. The complaint also alleges that the ad confuses the public to mistakenly believe that the famous model sponsors, endorses and is somewhat associated with Cutera, which would be a false association or endorsement under 15 U.S.C. § 1125(a).

Plaintiffs claim that Defendant has violated Ms. Jenner’s right to publicity, as protected by California Civil Code § 3344. The complaint does not elaborate on the right to publicity claim, but indicates that “Plaintiffs have suffered and will continue to suffer damages in an amount to be proven at trial, but not less than a number well into eight figures.”

Indeed, it is obvious that it is Ms. Jenner who is pictured on the ad, and therefore she is, under the California statute, “readily identifiable from a photograph when one who views the photograph with the naked eye can reasonably determine that the person depicted in the photograph is the same person who is complaining of its unauthorized use” (the ad is pictured p. 11 of the complaint).

There is no doubt that the ad is using Plaintiff’s name and likeness under California right to publicity statute “for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services.” Consent would be a defense, but it does not appear to be available to Defendant in this case.The complaint does not mention it, but Cutera tweeted in November 2015: “Have you heard? Kendall Jenner Admits to Getting #cutera #lasergenesis!” with a link to an blog post on the supermarket checkout gossip magazine Life & Style site, which in turn quoted a statement allegedly made by Ms. Jenner on her website. The link to this page on Ms. Jenner’s site now returns a 404 error message and the page seems to have been recently taken down, if one refers to the Internet Archive site. However, even if it would be true that Ms. Jenner had mentioned Laser Genesis on her website, this would not be an endorsement, only the expression of her opinion.

Indeed, if she had mentioned it on her site and not disclose that she had been compensated for the endorsement, it would have been a breach of the Federal Trade Commission Endorsement Guides. However, the part of the ad which quotes her as saying that acne “completely ruined” her life may be protected by the First Amendment, even if Ms. Jenner did not consent to its use , but that would be quite a stretch.

The complaint claims 10 million dollars in damages and further claims that, as Defendant has acted “willfully, maliciously, and oppressively,” Plaintiffs are thus entitled to punitive and exemplary damages as well. The case is likely to settle before going to trial.

Image is courtesy of Flickr User Brian Bald Under a CC BY-NC 2.0 License

Filed Under: Advertising Law, Right of Publicity ·

New York City Accessory Company Files Trade Dress Infringement Suit to Protect its Bucket Bag

March 18, 2016 · by marie-andree@maw-law.com ·

On March 10, Mansur Gavriel, a New York City fashion accessory company founded in 2012 by Rachel Mansur and Floriana Gavriel, filed a trade dress infringement, unfair competition, deceptive trade practices and trade dress dilution suit against several Italian companies, claiming that they are manufacturing, distributing and selling knock-offs of several of Plaintiff’s models, including its famous MG bucket bag. I will only address the trade dress infringement claim in this blog post.

To establish a claim for unregistered trade dress infringement, a plaintiff must demonstrate that the claimed trade dress (1) is distinctive, (2) is nonfunctional and that (3) its imitation would likely cause confusion for consumers as to the source of the product.

Can a bag be protected by trade dress?

A bag can be protected by trade dress, a form of trademark. For instance, the trade dress of Hermès Birkin bag is a registered trademark and so is Longchamp’s foldable bag. To be protected by trade dress, the product must be able to indicate its source, just as a trademark does. This means that when a consumer sees the product, he must be able to recognize which company put it on the market. Mansur Gavriel claims this is the case for their bucket bag and related products.

This is how the complaint describes the MG bucket bag:

“(1) a bag constructed from two pieces of leather that are cut, folded, and sewn to create a design that is clean and crisp, structured and sleek, rigid and minimalist in design, (2) contrasting interior and exterior colors, (3) minimal stitching and hardware, (4) a brand logo in small metallic font centered at the front bottom of the bag, (5) a drawstring closure cinched through openings with no hardware or very subtle hardware, and (6) a long adjustable strap with flat construction and subtle metal detailing.”

As such described, Mansur Gavriel claims that the bucket bag can serve as an indication of origin: you see this bag in a store, you immediately know it is a Mansur Gavriel bag, not, say, a Kate Spade or a Coach bag.

To be protected by trade dress, the bag must be distinctive.

Section 2 (f) of the Lanham Act provides that a descriptive mark can be registered if it “has become distinctive of the applicant’s goods in commerce.” To be protected by trade dress, a bag must be inherently distinctive or must have acquired secondary meaning. However, inherently distinctive trade dress is not required to prove secondary meaning, see Two Pesos, Inc. v. Taco Cabana, Inc., 505 US 763, 774. A trade dress may be registered or unregistered. Masur Gavriel has not registered the trade dress of its bags.

Mansur Gavriel claims in its complaint that the trade dress of the MG bucket bags and the trade dress of its associated bags and related goods are inherently distinctive, non-functional, and have acquired secondary meaning. The complaint further claim that this “unique and distinctive trade dress” extends to the other associated Mansur Gavriel bags and accessories, which also bear a combination of these features.

If the case goes to trial, Mansur Gavriel will have to prove that the bags are inherently distinctive or have acquired secondary meaning. It could do so by showing evidence of the length of use, how much they spend on advertising, their promotion expenditures, media coverage, and sales figures. Plaintiff indeed argues in the complaint that it “has acquired substantial public recognition and good will” for its MG bucket bag, associated bags, and accessories, and further claims that these bags are “instantly recognizable to the public.”

To be protected by trade dress, the bag must be non-functional.

To be protected under section 43(a) of the Lanham Act, trade dress must not be functional, Qualitex Co. v. Jacobson Products Co., 514 US 159,165. In Qualitex, the Supreme Court explained that a product feature is functional, and thus cannot be a trademark, “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,” meaning that the “exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” Therefore, functionality is available to Defendants as a defense.

Defendant could thus argue that what Plaintiff claims to be trade dress are instead functional elements of the bags, which are essential to their use and purpose, or affect their costs. For instance, Defendants could claim that preventing them from not using metallic grommets affects the cost of manufacturing a bucket bag. Also, they could claim that a drawstring closure is what defines a bucket bag, a bag which has a history, as its popularity has come and gone in the last one hundred years or so. Defendants should be well inspired to study closely this chapter of fashion history, and to find historical examples of the use of the same features they used to create their own bags.

Infringement: Plaintiff needs to show confusion.

Since a bag protected by trade dress is recognized by the public as designating its source, a trade dress is infringed by a similar product which creates consumer confusion, which is a “false designation of origin” under Section 43(a) the Lanham Act.

The complaint offers a side by side comparison of Plaintiff’s bucket bag, tote, wallet backpack and lady bag, and the Schöneberg bags which are manufactured and sold online by Defendants, and alleges that Defendant’s bags “are nearly identical to and are colorable imitations of Plaintiff’s unique, distinctive MG [b]ucket [b]ag [t]rade [d]ress.

The complaint further alleges that Defendants’ bags are “likely to continue to cause confusion in the marketplace.” However, the complaint does not list any instances of such confusion.

Several fashion accessories companies have successfully protected their products lately by claiming trade dress infringement, such as Adidas or Christian Louboutin. This new case is thus interesting to keep on our watch list.

Image is courtesy of Flickr user Geroithe Chia under a CC BY-SA 2.0 license.

Filed Under: Fashion Law, Trade Dress, Trademark ·

Update: Pro Bono

March 18, 2016 · by marie-andree@maw-law.com ·

Journalists are pillars of our democracies, and many of them are performing their duties in difficult, if not dangerous conditions. It takes courage to be a journalist. You can be hurt. You can be sued.

But it takes money to go to court. This is why I admire the Media Legal Defence Initiative’s commitment to providing legal help for journalists, bloggers, and independent media all around the world, as legal costs should not be a worry for journalists and citizen journalists, alike on trial for doing their jobs. MLDI fulfills this mission by providing journalists access to pro bono attorneys, by paying their legal fees if necessary, and by helping building stronger cases by filing amici curia briefs.

One of these cases is Butkevich v. Russia, which is currently pending at the European Court of Human Rights in Strasbourg. Applicant Maksim Butkevich, a Ukrainian journalist, was covering a protest which took place during the 2006 G8 Summit in St Petersburg. Applicant claims that he was arrested by the Russian police while taking pictures, even though he had complied with the order to stop taking photographs and even though he showed his press-card to the police. He was convicted of having participated in an unauthorized march and sentenced to two days of detention which he served.

Mr. Butkevich is asking the court to rule that his arrest was unlawful, that he did not receive a fair trial, and that his freedom of expression as protected by Article 10 of the European Convention on Human Rights has been violated.

MLDI has filed their comments on this case with the European Court of Human Rights, jointly with Mass Media Defence Centre and ARTICLE 19.

I had the pleasure to be able to provide MLDI, pro bono, some input about how French press law deals with journalists working on protests.

See MLDI press release here.

Image is courtesy of Flickr user Pierre-Selim under a CC-BY-SA 2.0 license.

Filed Under: Free Speech ·

Hoops, Tattoos, and Video Games

March 16, 2016 · by marie-andree@maw-law.com ·

Football season ended in the U.S. and baseball season (alas!) has not started yet. Basketball season is in full bloom (go Knicks!), but will end in the Spring. People are filling now their NCAA brackets.

But basketball fans may assuage their end-of-season blues by playing basketball video games all year long. These games features digital versions of the current players, and thus are regularly updated. Last fall, video game company 2K Games, Inc. (2K) released the 2016 version of its annual basketball video game, NBA 2K16. Four million copies were sold its first week on the market.

The game reproduces the likeness of basketball players. Some of them, LeBron James, Kobe Bryant, Eric Bledsoe, DeAndre Jordan, and Kenyon Martin sport tattoos in real life, and their digital representation sport the same tattoos in the NBA 2K16 game, as they already did in the NBA 2K14 and the NBA 2K15 games.

The design of these tattoos had been created by several artists who later signed licensing agreements with Solid Oaks Sketches, LLC. (Solid Oaks). Following the release of the NBA 2K14 and NB 2K15, Solid Oaks engaged in a negotiation with 2K in July 2015, in anticipation of the September release of NBA 2K16, as it believes that, by reproducing the tattoos in its video games, 2K infringed Solid Oaks ’copyright.

The negotiation fell through and, on February 1, 2016, Solid Oaks filed a copyright infringement suit in the Southern District of New York (SDNY) against 2K, game publisher Take Two, and game developer Visual. The case is Solid Oaks Sketches, LLC. V. Visual Concept, LLC and 2K Games, Inc., and Take Two Interactive Software, Inc., 1:16-cv-00724.

Are Tattoos Protected by Copyright?

The designs at stake are all registered with the Copyright Office, as tattoo artworks. What about the real tattoos?

Plaintiff argues that tattoos are protected by copyright, as they are “pictorial, graphic, and sculptural works” under17 U.S.C. §102(a) (5). Plaintiff also argues that tattoos are fixed in a tangible medium of expression, noting that “the tattoos designs are imprinted permanently upon the skin of humans, clearly stable and able to be perceived for much more than a transitory duration” (at 28). Tattoos also satisfy the “minimal degree of creativity” requirement set by the Supreme Court in Feist Publications, Inc. v. Rural Tel. Serv. Co.

Plaintiff cites an article by Yolanda M. King, The Challenges Facing Copyright Protection for Tattoos to support its claim but notes, however, that “[t]he issue of tattoo copyrightability has yet to be decided upon in court due to numerous settlements preventing a final judicial opinion.”

It seems that tattoos may be protected by copyright. Is there a defense available to the Defendants?

Possible Defenses: Fair Use and De Minimis

Fair use is a defense to a copyright infringement claim, and the SDNY would look at the four fair use factors, (1) purpose and character of the use, (2) nature of the copyrighted work, (3) amount and substantiality of the portion used in relation to the copyrighted work as a whole and (4) effect of the use upon the potential market for or value of the copyrighted work to find whether the use of the tattoos was fair.

Defendants in this case could certainly claim that the amount taken in relation to the video game was small enough to be fair. They could even claim that the use of original work was so little that it does not even warrant a review by the court, as de minimis non curat praetor, the court does not concern itself with trifles.

However, plaintiff took care to note in the complaint that “On social media, 2K has promoted the improved tattoo customization as a major feature in the game” (at 15) and that “Game reviewers praised NBA 2K16’s improved visuals, which included smoother looking character models and more individualized tattoos” (at 16), and so probably stands ready to argue that the use was significant, both quantitatively and qualitatively.

A Possible Defense: Terms of Players’ Contracts with Their Tattoo Artists

Did the players themselves have a licensing contract with the tattoo artists who applied the designs at stake on their bodies?

Indeed, sports agents should be well advised to explain to their clients that sporting one or more tattoos may impede their ability to monetize their image. While his tattoos make LeBron James an even more interesting player, having a court find out that their reproduction infringes the right of a third party would rather complicate the drafting of a (lucrative) agreement to license his image.

Should players be advised to secure the exclusive right of their tattoos before going under the inky needles? An author has argued for the need of an implied license.

It has been reported in 2013 that the National Football Association Players Association advised agents to recommend that their clients secure a release from the tattoo artist, and even to track down the artists who have done their previous tattoos to secure such release as well. This advice was given following the Whitmill vs. Warner Bros. Entertainment Inc., 11-cv-00752 (E.D. Mo.) case, where the tattoo artist who had created the highly original tattoo sported by Mike Tyson filed a copyright infringement suit to prevent the release of The Hangover2, where actor Ed Helms sports a similar tattoo.

The National Basketball Players Association will probably issue similar advice following the 2K Games copyright infringement complaint, if it has not done it already. Meanwhile, many IP attorneys are hoping the 2K16 case will not settle, so that the SDNY will have an opportunity to rule on whether tattoos in general, and tattoos reproduced in video games in particular, are indeed protected by copyright. It should not be a slam dunk case (sorry).

The post was originally published in The 1709 Blog.

Photo is courtesy of Flickr user Chili Head under a CC BY 2.0 license.

Filed Under: Copyright, Sports Law ·

Defectum Humoris non Curat Lex: The Law Does Not Reward a Lack of Humor

February 22, 2016 · by marie-andree@maw-law.com ·

Plaintiffs in two recent Intellectual Property cases were urged from the bench to have a little bit more humor.

In the first case, Louis Vuitton Malletier, S.A. (Vuitton) sued My Other Bag, Inc. (MOB) for trademark infringement, trademark dilution, and copyright infringement in the Southern District of New York (SDNY). MOB moved for summary judgment and Judge Furman from the SDNY granted the motion on January 6, 2016.

MOB sells canvas tote bags printed with “My Other Bag…” on one side and drawings of luxury handbags, on the other. One of MOB’s bags features a drawing of a Louis Vuitton bag.The handbag at stake reproduced an image drawn to evoke a Louis Vuitton monogram bag, but which did not faithfully reproduce it. For example, the monogram of the MOB bag bears ‘MOB’ initials, not ‘LV’ as in the luxury bags.

Tara Martin, the founder of MOB, testified that the name of her company, “My Other Bag,” was inspired by the “My other car is [insert luxury car]…” bumper stickers often seen on the well-worn bumpers of beaten up or inexpensive cars. Judge Furman wondered if Plaintiff was “perhaps unfamiliar with the “my other car” trope. Or maybe it just cannot take a joke.”

Vuitton claimed the bag diluted its trademark by blurring , but the Judge Furman held that the MOB bags do not dilute the Louis Vuitton trademark by blurring, neither under the Lanham Act, 15 U.S.C. § 1125(c), nor under New York General Business Law § 360-l. Dilution by blurring has been defined by the Second Circuit as “the gradual diminishment of a famous mark’s acquired ability… to clearly and unmistakably distinguish one source through unauthorized use,” Hormel Foods Corp. v. Jim Henson Prods., Inc. The New York statute does not require the allegedly blurred mark to be famous.

Fair Use Defense to Trademark Dilution Claim

The Trademark Act provides for a fair use defense, as 15 U.S.C. § 1125(c)(3) provides that “[a]ny fair use … of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with… identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner” is not dilution by blurring or by tarnishment.

While the Trademark Act does not define “ parody,” the Fourth Circuit defined it, in a case where Louis Vuitton was also the Plaintiff, as the juxtaposition of “the irreverent representation of the trademark with the idealized image created by the mark’s owner, ”Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC.

Judge Furman found that the MOB bag parodied Louis Vuitton bags and was therefore protected by fair use. The MOB bags clearly indicate to the ordinary observer “that the defendant is not connected in any way with the owner of the target trademark.” Judge Furman reasoned that this is precisely what MOB is conveying, by using the well-worn “my other car is [luxurious and expensive]” joke to convey that MOB bag is not a Vuitton bag, and further noted that

“That joke — combined with the stylized, almost cartoonish renderings of Louis Vuitton’s bags depicted on the totes — builds significant distance between MOB’s inexpensive workhorse totes and the expensive handbags they are meant to evoke, and invites an amusing comparison between MOB and the luxury status of Louis Vuitton.

And the fact that Louis Vuitton at least does not find the comparison funny is immaterial; Louis Vuitton’s sense of humor (or lack thereof) does not delineate the parameters of its rights (or MOB’s rights) under trademark law”

While New York law does provide a fair use defense, the SDNY considered that since New York anti-dilution law is “substantively similar” to federal law, both claims “may be analyzed together,” and noted that “courts have held that when a defendant establishes fair use for purposes of federal law, related state law claims also fail.“

No Infringement of Foot Bag Champion Right of Publicity

In another case, Martin v. Living Essentials, LLC, the holder of the world record for the most consecutive hacky sacks (a sort of footbag) kicks sued the maker of a five-hour energy drink. Martin claimed that Defendant’s commercial infringed his right of publicity rights under the Illinois Right to Publicity Act (IRPA) and also was false advertising under the Lanham Act, 15 U.S.C. § 1125. The commercial featured an actor pretending that Defendant’s energy drink had allowed him, in the last five hours, to perform such diverse feats as disproving the theory of relativity, swimming the English Channel (and back!), finding Bigfoot, and mastering origami while beating “the record for Hacky Sack.”

Judge John J. Tharp, Jr. from the Northern District of Illinois, started his order dismissing plaintiff’s claim with an Oscar Wilde quote: “It is a curious fact that people are never so trivial as when they take themselves seriously.”

Judge Tharp found the IRPA claim to be time-barred and dismissed it, but nevertheless discussed the claim and found it would not have succeed even if Plaintiff’s claim had not been time-barred.

Defendant had argued that it had not used Plaintiff’s name or likeness in its commercial. However, this argument alone was not enough to dismiss the claim, as the IRPA broadly defines “identity” as “any attribute of an individual that serves to identify that individual to an ordinary, reasonable viewer or listener.” Being the holder of a footbag record is indeed part of Plaintiff’s identity.

But Judge Tharp found that the phrase used in the commercial, “the record for Hacky Sack,” does not identify Plaintiff, as it is “far too ambiguous to do so.” Judge Tharp pointed out that there are several other records listed as Footbag Guinness World Record, which Plaintiff himself admitted, thus “effectively conced[ing] the ambiguity of a reference to “the Hacky Sack record.”

But the most conclusive argument in favor of dismissing the case was that the commercial was meant to be a joke, and that the outrageous claims made by the actor “[were] not intended to be taken as true.” Judge Tharp also pointed out that the commercial includes a disclaimer, and portrays someone who not only holds a footbag record, but is also a physics genius, accomplished hunter, swimmer and origami master, which Plaintiff does not claim to be.

Judge Tharp concluded:

“To the maxim de minimis non curat lex, then, let us add a complementary proscription: defectum humoris non curat lex—the law does not reward humorlessness. Martin’s premise that the Commercial exploits his identity because someone might believe that the actor (or whoever he portrays) actually broke Martin’s record depends on an interpretation so blind to its comedic nature that it is unreasonable and therefore beyond the law’s protection.”

Plaintiff’s claims for false advertising claim under the Lanham Act also failed because the commercial is

“an obvious farce that would not lead anyone to believe that Martin, or anyone else, had actually accomplished all of the remarkable feats described. Even unsophisticated consumers would get the joke.”

Therefore, there could not have been any consumer confusion, and the commercial is “better described as farce than mere puffery—upon which no reasonable consumer would rely.“

The judges in these two cases pointed out that Plaintiffs lacked a sense of humor. But they also assumed that consumers (us!) generally have enough sense of humor as not to be confused as to the source of a product, or to the identity of a person. The law assumes that the average consumer has a sense of humor. It is comforting to know.

Image is courtesy of Flickr user RLEVANS under a CC BY-ND 2.0 license.

Filed Under: Fashion Law, Right of Publicity, Trademark · Tagged: Right of Publicity, Trademark Dilution

Selfie, Privacy, and Freedom of Speech Collide in France

February 19, 2016 · by marie-andree@maw-law.com ·

On December 12, 2015, Brahim Zaibat, a dancer and choreographer, posted on social media a selfie he had taken two years ago, showing him in an airplane, just a seat behind the one where Jean-Marie Le Pen, the honorary president of the French National Front, had fallen asleep.

Mr. Zaibat wrote under the selfie: “Put them KO tomorrow by going to vote. To preserve our fraternal France !!! ” Mr. Zaibat was referring to the second round of France’s regional elections, which were to take place the next day, on December 13, 2015, as the National Front, a party on the far right, was leading in the first round of the election in six of the thirteen French regions.

Mr. Le Pen took umbrage at this photograph as he considered it to be an infringement of his privacy and of his right to his image (droit à l’image). He sued Mr. Zaibat on December 31, 2015, and asked the Tribunal de Grande Instance (TGI) of Paris, sitting in emergency, to order the selfie to be taken down from the social media site, to order the publication in several magazines of a message informing the public about this judicial measure, and to order Mr. Zaibat to pay a provisional fine of 50,000 euros.

Mr. Zaibat argued in defense that ordering his selfie to be removed would undermine his freedom of expression as protected by article 10 of the European Convention on Human Rights (ECHR). According to Mr. Zaibat, he had “not overstepped the limits of freedom of expression, in a humorous way, in the context of a political debate on a topic of general interest.” For Mr. Zaibat, the selfie was a photograph taken in public, which represented, in a humorous way, a politician whose party was then in the spotlight.

But the judge, quoting both article 9 of the French civil Code, and article 8 of the ECHR, both protecting privacy, considered that the selfie indeed had violated Mr. Le Pen’s privacy and the right to his image. But she considered that since the selfie was “neither degrading nor malicious,” it was appropriate to award the politician only one euro compensation. However, the judge forbade Mr. Zaibat to republish the photograph under penalty of 1,000 euros per infringement.

Mr. Zaibat has appealed the interim order.

No legal definition of privacy

Article 9 of the French civil Code provides that “[e]veryone has the right to respect for his private life” but it does not define what privacy is. Similarly, article 8 of the ECHR guarantees the right to respect for private life, without defining that concept. In 1970, the Parliamentary Assembly of the Council of Europe defined the right to respect for privacy in its declaration on mass communication media and human rights, Resolution 428, as “consist[ing] essentially in the right to live one’s own life with a minimum of interference” which includes “non-revelation of irrelevant and embarrassing facts, unauthorized publication of private photographs.”

Freedom of expression

Article 10 of the ECHR protects freedom of expression, which may nevertheless, under Article 10-2 of the Convention, “be subject to such formalities, conditions, restrictions or penalties as are prescribed by law and are necessary in a democratic society.” The Court interpreted this text in 1979, in Sunday Times v. The United Kingdom, as requiring that such measures necessary in a democratic society must correspond to a pressing social need, which must be proportionate to the legitimate aim pursued. Furthermore, the reasons given by the national authorities to justify such measures must be relevant and sufficient (see Sunday Times v. The United Kingdom § 62).

The difficult balance between freedom of expression and protection of privacy

The selfie violates the privacy of Mr. Le Pen. But does his right to privacy necessarily prevail over the right of Mr. Zaibat to express himself and over the public’s right to be informed?

It can be argued that a public person has the right to fall sleep on an airplane without having his picture taken and the photo published. Mr. Le Pen had argued in court that Mr. Zaibat was not a political debater or a comedian, but a dancer, and thus could not avail himself of free political expression, but that he had “in fact expressed himself as a private citizen and had simply taken advantage of the political agenda to create some “buzz ” by broadcasting a stolen photograph taken two years before.” But freedom of opinion belongs to everyone, dancers, politicians, and media.

In a recent judgment, Couderc and Hachette Filipacchi Associés v. France, the Grand Chamber of the European Court of Human Rights unanimously held that France had violated Article 10 of the ECHR when interfering in 2005 with the right of weekly magazine Paris Match to publish photos of the then secret son of Prince Albert of Monaco.

In Couderc, the Court observed that “[t]he right to the protection of one’s image is… one of the essential components of personal development. It mainly presupposes the individual’s right to control the use of that image, including the right to refuse publication thereof” (Couderc § 85).

The Court added:

“In determining whether or not the publication of a photograph interferes with an applicant’s right to respect for his or her private life, the Court takes account of the manner in which the information or photograph was obtained. In particular, it stresses the importance of obtaining the consent of the persons concerned, and the more or less strong sense of intrusion caused by a photograph… In this connection, the Court has had occasion to note that photographs appearing in the “sensationalist” press or in “romance” magazines, which generally aim to satisfy the public’s curiosity regarding the details of a person’s strictly private life… are often obtained in a climate of continual harassment which may induce in the person concerned a very strong sense of intrusion into their private life or even of persecution” (Couderc § 86).

What about the picture taken by Mr. Zaibat? Does it represent Mr. Le Pen in his private life or in his public life? Mr. Le Pen is a public person. The photo was taken in a public place, an airplane, without the subject of photography being harassed. All persons in the aircraft could see Mr. Le Pen asleep in his seat, if passing by him in the aisle. But does the public have the right to know that he was asleep in this plane?

The judge took the position to subjectively define privacy as the sphere that the person herself defines when determining what can be disclosed by the press.

“In accordance with Article 9 of the Civil Code and Article 8 of the [ECHR] every person, regardless of his reputation, has a right to privacy and is entitled to get protection by setting herself what may be disclosed by the press. ”

But this is an “extreme” conception of privacy according to three law professors (Traité du Droit de la Presse et des Medias, Bernard Beignier, Bertrand De Lamy, and Emmanuel Dreyer, paragraph 1589). The authors note that this conception allows an individual to “oppose any publication even in the presence of a legitimate public interest.” According to the authors, this conception of privacy is “not viable.”

In a case with facts somewhat similar to ours, François Hollande, then First Secretary of the French Socialist Party, was photographed in 2006 while on vacation, in a market in the South of France. The photos were published in a weekly magazine which illustrated them with humorous comments referring to current events. Mr. Hollande sued the magazine for invasion of privacy. The Cour de Cassation, France’s highest civil court, ruled on October22, 2007, that the photos indeed had interfered with the privacy of Mr. Holland:

“Whereas the limits of the protection afforded by article 9 of the civil Code can be interpreted more widely in respect of persons performing official and public functions, the information revealed in this case are not directly related to the political functions exercised by the applicant as the photographs were taken on the occasion of a private activity carried out during his vacation; these elements are therefore not within a legitimate public information, despite the humorous reference in the article to the next organization by François Hollande of a conference on the purchasing power of the French.

Did Mr. Zaibat participate in a debate of general interest by publishing the selfie? In its judgment in Von Hannover v. Germany (n. 2), the European Court of Human Rights explained that:

“an initial essential criterion is the contribution made by photos or articles in the press to a debate of general interest… the definition of what constitutes a subject of general interest will depend on the circumstances of the case“ (Von Hannover v. Germany (n. 2) § 109).

Yet, after its Couderc case of November 2015, the European Court of Human Rights seems to tip the balance in favor of freedom of expression. However, the French courts are often more favorable to the protection of privacy. Stay tuned…

Image is courtesy of Flickr user Gautier Poupeau under a CC BY 2.0 license.

Filed Under: Free Speech, Privacy, Right of Publicity, Uncategorized · Tagged: Droit à l'Image, France, Freedom of Expression, Privacy, Selfie

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