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COPYRIGHT NEWS


Matthew D. Marquardt, Editor

Articles:

House Hears Testimony on Bill to Enact WIPO Copyright Treaties
Copyright Invalidated by Unauthorized Use of Olympic Rings
Costumes Based on Copyrighted Cartoon Characters Not Protectable as Derivative Works
Third Copyright Term Extention Bill Introduced in House
No Infringement Following Oral Agreement for use of Baseball Song
Europe Takes Lead in Database Protection
Similarity of Action Characters Not to be Judged through Detailed Dissection
Changes to Legal Opinions Too Trivial to Protect
Fair Use for News not Automatic
No Fair Use for "The Cat NOT in the Hat!"
Wedding Dresses Protected Under Copyright Theory
Russian Newspapers Protected by US Law Under Berne Convention
Check Endorsement Qualifies as Writing in Work-for-Hire Arrangement
Fogarty Case Invoked in Attorneys' Fee Award
Record Pirate Ordered to Pay Restitution
WIPO Copyright Treaties Adopted
Copyright Exception Becomes Law
Federal Appeals Court Reiterates Finding of Copying in RAM Loading




House Hears Testimony on Bill to Enact WIPO Copyright Treaties

The House of Representatives heard testimony on September 16 and 17 on a bill (HR 2281, introduced by Representative Coble) intended to implement two Copyright treaties signed by the United States in Geneva last year. The treaties, sponsored by the World Intellectual Property Organization, are meant to improve protections for computer programs and recordings. Most of the provisions covered by the treaties are already covered by U.S. law; however, legislation would be required to protect individuals against technologies designed to defeat encoded copyright protection systems such as those widely used on computer networks. Debates center on the necessity for additional fair use provisions, piracy, and the immediacy of the need for changes. No date has been set for a committee vote.

Sources: BNA's Patent, Trademark & Copyright Journal, 9/18/97



Copyright Invalidated by Unauthorized Use of Olympic Rings

The U.S. District Court for Northern Illinois on July 8 dismissed copyright infringement claims brought by a t-shirt designer whose design incorporated, without authorization, the Olympic ring symbol. The plaintiff attempted to sell the design to a clothing distributor but was rejected. When the same distributor later began selling shirts bearing a generally similar design, the lawsuit ensued. The court found that the shirts were not entitled to protection under section 103(a) of the Copyright Act because copyright does not extend to any part of a derivative work in which preexisting copyrighted material is used unlawfully. While the Olympic rings are not copyrighted, they are protected under 36 USC 380 by what the Supreme Court has described as "more than a normal trademark." The court took this to be sufficient. The ruling was bolstered by a finding that the similarities between the t-shirts were in any case limited to unprotectable elements. In other words, the scope of any copyright which could have existed was insufficient to support an infringement finding.

Sources: BNA's Patent, Trademark & Copyright Journal, 8/28/97



Costumes Based on Copyrighted Cartoon Characters Not Protectable as Derivative Works

The U.S. Ninth Circuit Court of Appeals, which oversees lawsuits brought in much of the western United States, affirmed on August 18 a summary judgment finding by the U.S. District Court for Northern California that inflatable costumes representing copyrighted two-dimensional cartoon figures lack sufficient originality over the original characters to merit separate copyright protection as derivative works. Adopting the reason of the (east coast) Second Circuit's ruling in Durham Industries Inc. v. Tomy Corp., the court explained that in order to warrant derivative protection the original aspects of the new work must (1) be more than trivial and (2) reflect the degree of the derivative work's reliance on the original underlying work. In the case at issue, the court found that the differences were either functional -- and therefore not susceptible of copyright protection -- or trivial.

Plaintiff Entertainment Research Group, which manufactures inflatable costumes used for publicity events, sued a former customer who turned to a third party for costumes after their business relationship deteriorated. At least some of the ultimate customers for the costumes were the owners of the copyrights for the characters upon which the costumes were based.

Sources: BNA's Patent, Trademark & Copyright Journal, 8/28/97



Third Copyright Term Extention Bill Introduced in House

Representative Sonny Bono (R-Cal.) on May 15 introduced to Congress a third bill aimed at extending most copyright terms by twenty years. This bill, HR1621, joins bills HR 604 and S 505 in aiming to amend sections 301 and 302 of the copyright act to change copyright terms for most authors to life plus 70 years and to extend minimum terms of pre Feb. 1972 sound recordings. All three bills also call for amendment of section 108 of the Copyright Act to permit copying and distributions of works by libraries, archives, and non-profit educational organizations during the last 20 years of the copyright term.

Sources: BNA's Patent, Trademark & Copyright Journal, 5/22/97; HR 1621, HR 604, S 505.



No Infringement Following Oral Agreement for use of Baseball Song

The Eleventh Circuit Court of Appeals, which reviews cases arising in the Southeastern United States, ruled April 18 that an oral agreement to allow the playing of a song recording may be inferred to create a non-exclusive license to use the work, despite the expressed intention of the parties -- who in this case apparently tried to create an exclusive license contrary to the provisions of sections 204 and 101 of the Copyright Act, which provide that such licenses must be made in writing. Declining to accept a minor league baseball team's assertion that the agreement failed under the Copyright Act to give rise to any license whatsoever and that the playing of the song by the baseball team's operators therefore constituted infringement, the court instead found that it had "no choice but to look at alternatives beyond the parties' intended arrangement" and salvage as much of the parties intent as possible, consistent with the law. Finding that in making the oral agreement the writer of the song, which was intended to serve as the team's theme, waived the right to sue for infringment, but retained his rights under state contract law to agreed compensation, the trial court dismissed the the copyright claim and sent the case to state court. The Eleventh Circuit affirmed.

Sources: BNA's Patent, Trademark & Copyright Journal, 5/15/97; Jacob Maxwell, Inc. v. Veeck (CA 11 No. 96-2636),



Europe Takes Lead in Database Protection

With national enactment of legislation implementing the Directive governing protection of infromation databases adopted by the European Parliament in 1996 due no later than January 1 of next year in each of its 15 member nations, the Eurpoean Union has taken the world lead in database protection -- a step which could give it a significant advantage in the next stage of the information revolution. Legislation required by the Directive must give onwers of collections of "independent works, data, or other materials arranged in a systematid or methodical way and individually accessible by electronic or other means" the right to stop unauthorized "extraction" or "re-utilization" of "substantial" portions of the works. By extending protection to factual works solely on the basis of the effort required to put them together, the Directive moves beyond traditional patent and trademark law without the limitations imposed by trade secrecy requirements. From the point of view of American companies, a major drawback of the Directive is that it extends protection only to nationals of EU states or those having "habitual residence" there.

Thus far the United States has resisted the move toward database protection. The Supreme Court case of Feist Publications v. Rural Telephone Service Co. put databases outside the scope of copyright protection, and a database protection bill died in Congress last session, without thus far having been reintroduced. And at the WIPO copyright conference last winter, which produced new agreements on protection of works on the internet and in other electronic media, the United States delegation staunchly opposed and defeated adoption of a database treaty.

Source: National Law Journal, 6/9/97.



Similarity of Action Characters Not to be Judged through Detailed Dissection

The test for similarity between screenplays centered on allegedly similar characters is not a detailed analysis of the characters' traits, but a review of the total concept and "feel" of the shows, including their characters, themes, plots, sequences, paces, and settings, ruled the United States District Court for Southern New York on April 10. The court refused to grant summary judgment to CBS on the alleged dissimilarity of the characters in the movie McQuade and the television show Walker: Texas Ranger. CBS had claimed that the main characters, both played by actor Chuck Norris, were similar only in a number of unprotected traits -- their "maverick" devotion to justice, their mistrust and avoidance of authority, their employment, their use of martial arts, their dress, and their vehicles, among others -- but were dissimilar in more important ways -- e.g., the cleanliness of their jeans and vehicles.

The infringement claims were dismissed, however, on the basis of a retroactive licence granted to CBS in settlement by one of the plaintiffs.

Sources: BNA's Patent, Trademark & Copyright Journal, 5/22/97; Lone Wolf McQuade Assoc. v. CBS Inc.



Changes to Legal Opinions Too Trivial to Protect

The US District Court for the Southern District of New York ruled May 19 that the addition of page numbers, attorney names, parallel citations, spelling and grammar corrections, and the abbreviatioin of case titles in legal decisions published by the West Publishing Company do not rise to protectable levels as derivatives of works created originally by the US government. Hyperlaw, Inc., a publisher of CD-ROM legal products, sought the ruling in a declaratory judgment action preparatory to extensive scanning of the West database. In making the ruling the court obviated the necessity of ruling on fair use and copyright notice issues, but hinted that West's failure to give notice of what it considered to be protectable portions of its decisions would weigh in favor of an accused defender under the doctrine of fair use. Section 403 of the Copyright Act requires that publishers of marterials consisting primarily of US government material must give notice in the published word of what they consider protectable.

In a previous ruling in the same case the court had found West's addition of page numbers to be unprotectable also.

It was not clear whether West would appeal the decision.

Source: BNA's Patent, Trademark & Copyright Journal, 5/22/97; Matthew Bender & Co. v. West Publishing.



Fair Use for News not Automatic

The Ninth Circuit Court of Appeals, which oversees federal appeals for most of the Western United States, ruled March 11 that an unauthorized, unattributed use of a videotape of the Reginald Denny beating on a news broadcast did not qualify under the fair use exception to copyright infringement. Plaintiff Los Angeles New Service made the tape during riots following the Rodney King police beating verdict. Defendant KCAL was denied a license to use the tape, but obtained a copy from another source and used it anyway, stating later that the tape was a "unique and newsworthy videotape of significant public interest." The court disagreed, denying KCAL summary judgement on the exception and noting that KCAL failed to show that alternatives to the use of the tape did not exist, and that KCAL failed to attribute the tape to the copyright owner.

Source: National Law Journal 3/31/97




No Fair Use for "The Cat NOT in the Hat!"

The Ninth Circuit Court of Appeals ruled March 27 that a Seussian satire of the O.J. Simpson trial, written in a poetic style reminiscent of the late Theodore Geisel and featuring numerous renditions of the red-and-white banded top hat of the Cat in the Hat, was not entitled to a parody fair use exception for its borrowings from the great opus for children. While acknowledging that the work did broadly mimic the Seuss work, the court found that the actual parodic target of the work was not Geisel or his work but the Simpson trial, and that the parody exception therefore could not apply. The Court drew a distinction between parody, which it sees as targeting the copied work, and satire, which uses the copied work as a vehicle for commentary on other subjects.

The case also included affirmation of a preliminary injunction granted by the district court on the basis of a trademark infringement claim. The court described parody not as a separate defense to trademark infringement, but as an alternative way of describing a lack of likelihood of confusion.

The Ninth Circuit is one of the nation's most influential copyright courts, overseeing as it does cases arising in Los Angeles and other major western centers.

Sources: National Law Journal; BNA's Patent, Trademark & Copyright Journal, 4/3/97




Wedding Dresses Protected Under Copyright Theory

The United States District Court for Southern New York ruled on March 19 that while clothing as such is not copyrightable, the design of fabric used in the making of the clothing may be protectable, and the protection of the protected fabric may extend to injunctions against further manufacturing and sale of the clothing into which it has been fashioned. The case involved competition in the wedding dress industry. Eve of Milady, Inc., which produces "limited editions" of high-end wedding dresses, noticed shortly after it began marketing of one of its new designs that competitor Impression Bridal, Inc., was marketing very similar dresses, and a lawsuit ensued.

In finding copyright infringement, Judge Scheindlin of the District Court noted that "The use of lace designs in a bridal gown will garner careful scrutiny by the bride who purchases and subsequently wears the gown, both at the wedding ceremony and in photographs memorializing the nuptials..." It appears from the opinion, however, that the court actually relied on the overall similarity of the dresses as well as underlying protected lace: "The similarity extends to the designs of the laces, as well as to the placement of the lace designs on the dress. It is unlikely that a consumer or retailer would discern any sufficiently qualitative differences between the dresses... Therefore, I find that plaintiffs have demonstrated similarities that are probative of copying by defendants of plaintiff's bridal dresses..."

It was not immediately clear whether the case would be appealed.

Sources: National Law Journal 4/7/97; BNA's Patent, Trademark & Copyright Journal, 4/17/97




Russian Newspapers Protected by US Law Under Berne Convention

The United States District Court for Southern New York ruled March 10 that several Russian news groups were entitled under the Berne Convention to protection in the United States for works registered in Russia but not in the United States. The news groups sued a US Russian- language paper that repeatedly copied and distributed cut-out-and-pasted articles from their papers and were granted a TRO and a preliminary injunction prohibiting further copying. The case also involved the deciding of several questions of Russian law, none of which have yet been tested by Russian courts, including work-for-hire provisions.

Source: BNA's Patent, Trademark & Copyright Journal, 4/3/97




Check Endorsement Qualifies as Writing in Work-for-Hire Arrangement

The United States Second Circuit Court of Appeals ruled March 25 that check endorsements may serve as writings for the creation of a work-for-hire arrangement under section 101 of the Copyright Act of 1976. Playboy Enterprises, Inc., placed writing on the backs of checks issued to artist Patrick Nagel, stating that endorsement of the checks signified the consent of the signor to a work-for-hire contract. Nagel himself signed many of the checks, with others being signed on his behalf by others. Each of the works covered by checks signed by Nagel were declared to be works-for- hire, but the status of the remainder was held for consideration on remand to the District Court. The court indicated that if the signors of those checks were authorized to enter contracts on Nagel's behalf, those paintings too should be considered works for hire.

The appeals court also indicated that in at least some circumstances under the previous copyright act (in effect until 1978) the course of dealing between the parties might determine whether works were made for hire in the absence of a written agreement.

Source: BNA's Patent, Trademark & Copyright Journal, 4/10/97




Fogarty Case Invoked in Attorneys' Fee Award

The United States First Circuit Court of Appeals on March 28 used the famous John Fogarty Supreme Court case to overturn a lower court ruling and impose an attorneys' fee award against a plaintiff it found to have unreasonably filed a copyright infringement suit. The Appeals court found that the trial court had focused too narrowly on "frivolity", and had overlooked the Fogarty case's instructions to treat plaintiffs and defendants equally and to consider other factors. The court described the suit as "inescapably highly unreasonable, if not frivolous."

Source: BNA's Patent, Trademark & Copyright Journal, 4/3/97




Record Pirate Ordered to Pay Restitution

A California appeals court in March affirmed a criminal court ruling ordering a man to pay restitution to the Association of Latin American Record Manufacturers, a non-profit organization providing coordination and assistance to Latin record producers, for the piracy of over 50,000 cassette tape recordings. The restitution was to be received on behalf of the companies represented by the Association. The man had argued that the Association had no standing under state law as a direct victim of the crime to receive restitution, but the court disagreed, saying that if the Association could serve as a representative of the record companies in enforcing copyrights it could receive their restitution as well.

Source: BNA's Patent, Trademark & Copyright Journal, 4/3/97




Sharp US Debate Expected Over Ratification
of WIPO Digital Copyright Treaties

Bitter and protracted debate is expected in the US in the wake of adoption by the World Intellectual Property Organization (WIPO) of a pair of treaties designed to bring worldwide copyright laws into line with electronic reality, as Congress moves to ratify the treaties and adopt conformal legislation enacting the treaties' terms.

The two treaties -- the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty -- were adopted December 21, 1996, after weeks of intense negotiation, and are expected to pitch Internet Service Providers, the public, copyright owners, and publishers into fierce argument over ratification and enactment of conformal laws. Between them, the treaties would require the establishment and protection, at the national level, of a new right of communicating works to the public; enactment of measures to outlaw technologies used to defeat copy protection; and the extension of the definition of fair use to fit the electronic environment.

A particularly controversial issue left by the treaties to resolution at the national level is the question whether temporary storage of digital copies, such as storage in computer RAM, caching, and Internet browsing, will infringe reproduction rights -- and if so what the liabilities for infringing acts of, among others, ISP's should be.

A third and more controversial treaty, the WIPO Treaty in Respect of Databases, was left in draft stage and set aside for future WIPO negotiations. As currently drafted, the treaty would create rights to data as such when included in databases.

The Copyright Treaty would include computer programs in the definition of literary works, would protect data compilations (but not the data itself), and would give authors the exclusive right to control posting of works on Web sites.

The Performances and Phonogram Treaty would create "moral rights" to fixed and live performances, and would grant rights for performers as well as to performances for fixed audiovisual performances.

In the US, it is expected that copyright owners will push for expanded protection for their digital works, while Internet service providers will seek specific exemptions to keep them from being forced to underwrite the infringing acts of their customers and users. Consumer groups will insist that fair use issues be settled in such manner as to allow limited downloading and use of electronically posted works. (2/97. Sources: National Law Review, AIPLA Washington Newsletter, Library of Congress Website, WIPO Website)





Copyright Exception Becomes Law

Deep within an appropriations bill passed last summer by Congress and signed into law sometime thereafter by President Clinton lay language adding a new section to the Copyright Act. New section 121 provides that "it is not an infringement of copyright for an authorized entity to reproduce or to distribute copies or phono records of a previously published, nondramatic literary work if such copies or phonorecords are reproduced or distributed in specialized formats exclusively for use by blind or other persons with disabilities." "Authorized entity" is defined by the bill to included nonprofit or governmental organizations having "a primary mission to provide specialized services relating to training, education, or adaptive reading or information access needs of blind or other persons with disabilities." "Specialized formats" means "braille, audio, or digital text which is exclusively for use by blind or other persons with disabilities."

The bill makes no provisions for safeguards for publishers who wish to serve disabled persons themselves, such as, for instance, a waiting period to allow the copyright owner time to serve those markets itself. The bill was introduced in the Senate by senator Chafee. (1/7/97)





Federal Appeals Court Reiterates Finding of
Copying in RAM Loading

The Federal Ninth Circuit Court of Appeals, which reviews district court decisions for most of the western United States, recently reaffirmed its 1993 ruling that the loading of a computer program into a computer RAM may constitute the making of a "copy" within the meaning of the Copyright Act. In the same ruling, the Appeals Court decided that the use of such a "copy" in competition with the owner of the "copied" program may not qualify as fair use under the statute. (1/7/97)





The Editor

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