Equifax Data Breach: What you need to do

The recent hacking of credit reporting giant Equifax has put as many as 143 million Americans and some U.K. and Canadian residents at risk of identity theft. The security beach includes names, Social Security numbers, birth dates, addresses and other private information. In addition, credit card numbers for about 209,000 U.S. consumers and dispute documents with personal information for around 182,000 consumers may have been accessed.

Equifax says it will be mailing letters to people whose information is included in the breach. This is helpful, but records sometimes contain erroneous or outdated address information, and despite the best efforts of Postal Service employees, letters do sometimes get lost in the mail. A quicker way to check is to visit the web page Equifax has set up for this purpose at  www.equifaxsecurity2017.com. Because this service will require you to provide personally identifying information, you should only access it from a secure computer using an encrypted network connection.

This service will tell you if your data “may” be at risk. Despite the ambiguity of this language, claims that it will return an affirmative in every case are unfounded. It has returned affirmative and negative responses to different consumers. It is likely that the company used the term “may” because they wished to err on the side of caution.

If you are told that your data may be at risk, you will be offered a chance to use Equifax’s credit monitoring service, TrustedID Premier for free for one year.

Should you sign up for TrustedID Premier?

As it was originally set up, a person wishing to use TrustedID Premier would need to agree to Terms of Service that included an arbitration clause. The problem with arbitration clauses is that they can impair the ability to file a legal claim in court or to join in a class-action lawsuit.

Equifax has since removed the arbitration clause from the www.equifaxsecurity2017.com website. It has issued a statement clarifying that Equifax’s general Terms of Service do not apply to the TrustedID Premier service:

We’ve added an FAQ to our website to confirm that enrolling in the free credit file monitoring and identity theft protection that we are offering as part of this cybersecurity incident does not waive any rights to take legal action. We removed that language from the Terms of Use on the website, www.equifaxsecurity2017.com. The Terms of Use on www.equifax.com do not apply to the TrustedID Premier product being offered to consumers as a result of the cybersecurity incident.

A quick glance at the Terms of Use at www.equifaxsecurity2017.com confirms the clause has indeed been removed. This should alleviate concerns about losing the right to litigate claims or join in a class action lawsuit against Equifax.

The benefits of enrolling in TrustedID Premier are: (1) free copies of your Equifax credit report; (2) credit file monitoring and automated alerts of key changes to your Equifax, Experian and TransUnion credit files; (3) allows you to prevent access to your Equifax credit report by third parties (to some extent); (4) searches suspicious web sites for uses of your Social Security number; (5) gives you up to $1 million in identity theft insurance.

The TrustedID Premier service will not prevent access to your credit file at Experian, TransUnion or other credit reporting agencies. It also will not prevent access to your Equifax file by government agencies; by companies reviewing your application for employment; by companies that have a current account or relationship with you; by collection agencies acting on behalf of a creditor; by companies that wish to make pre-approved offers of credit or insurance to you; for fraud detection and prevention purposes; or by Equifax.

The identity theft insurance could be a worthwhile benefit, but be sure to read the terms, conditions and exclusions in the policy carefully.

Is signing up for TrustedID Premier enough?

Unfortunately, if you are one whose data may have been breached, signing up for a free year of TrustedID Premier probably is not enough. It is only free for a year, but it can and often does take more than a year for stolen data to be used or offered for sale on the Dark Web. The threat of identity theft due to a data breach like this could be life-long. Moreover, as the TrustedID Premier website points out, the service will only enable you to prevent third-party access to your Equifax credit file, not those of other credit reporting agencies.

Credit freeze

Even if you sign up for TrustedID Premier, you should also consider setting up a credit freeze if you are among those who may be affected by the data breach. This restricts people from accessing your credit reports and scores. Because lenders check credit reports before approving applications for loans and credit, a credit freeze can go a long way toward preventing an identity thief from opening new accounts using your personal information.

Initiate the process by contacting credit reporting agencies. The three major ones are:

  1. Equifax — 1-800-349-9960
  2. Experian — 1‑888‑397‑3742
  3. TransUnion — 1-888-909-8872

A small fee may be required. If you have already been a victim of identity theft, you can initiate a credit freeze for free by providing copy of your police report or such other supporting documents as may be required in your state. Some states grant discounts to seniors over 65 and minors.

When the freeze is implemented, the credit reporting agency will send you a PIN code or password. These will be needed if you ever want to lift the freeze, so keep them in a safe place.

In most states, the freeze will remain in effect indefinitely. In a few states, it will automatically expire after a specified number of years.

A credit freeze will not affect your credit score, but you will not be able to open new credit accounts unless and until you lift it. If you temporarily lift the freeze (such as for a potential employer, etc.), you may need to pay a reinstatement fee.

During a credit freeze, your credit report may still be obtained by you; your current creditors and their collection agents; and persons acting pursuant to a court order, subpoena or search warrant.

An alternative to a credit freeze would be to place a fraud alert on your credit files. This warns creditors that the subject of a credit report may be a victim of identity theft and that they should verify the identity of the person seeking the credit. This is not as effective as a credit freeze because it does not prevent a careless or unscrupulous creditor from going forward with a credit transaction despite the warning.

Review your account statements

A credit freeze will not prevent identity thieves from using existing credit card and bank accounts to make unauthorized charges or withdrawals. Accordingly, even if you sign up for TrustedID Premier and/or a credit freeze, you should also monitor your account statements regularly for suspicious activity.

Exercise your right to a free annual copy of your credit report

Whether you sign up for TrustedID Premier or not, you have a right to one free copy of your credit report from each of the credit reporting agencies (Equifax, Experian, Transunion.) You may do this at annualcreditreport.com.

Don’t take bait from phishers

After a major data breach like this, “phishing” and other email scams are likely to proliferate. Phishing is a kind of scam in which a person pretends to be someone else in order to get someone to visit a website and/or divulge private information like their birth date, Social Security number, or the like. You can count on a flurry of phishing activity by identity thieves who will be sending emails fashioned to look as if they are from Equifax, a government agency or a fraud prevention or identity theft protection outfit of some kind. Don’t take the bait.

More information

For more information about what to do about identity theft, visit this FTC website.

The Monkey Selfie Returns

When I was in law school, a final exam question presented a scenario involving a squirrel who falls into an open container of gasoline on private property, scurries to another property where a cinder from an outdoor fire ignites him, and then proceeds to run into a pile of dry leaves on the first property, ultimately causing the whole damn neighborhood to burn down. I was directed to “discuss liability.” After hitting all the expected theories of liability and defenses, I proceeded to discuss the rights and liabilities of the squirrel. I got an ‘A’ but the professor wrote in the margin of my squirrel discourse, in giant red letters, “We need to talk!” When I met with him in his office, he explained that he wasn’t sure if I was trying to make a mockery of tort law or if I was so truly insane that I actually believed animals have standing to sue to vindicate legal rights. I wish I could travel back in time and have a little chat with him now.

The “monkey selfie” saga began in 2011 when British nature photographer David Slater traveled to Indonesia and set up a camera on a tripod. He left the remote trigger accessible to a macaque monkey, who then proceeded to take “selfies” with it. Later, someone uploaded the images to Wikimedia Commons. Slater, claiming copyright infringement, demanded either payment for the photographs or their removal from the site. Wikimedia Foundation refused, asserting that the images are in the public domain because they were not created by a human being.

According to some British attorneys, the photographs may be protected by European intellectual property laws. The United States Copyright Office, however, has issued a statement that works created by non-human animals, including monkeys, are not protected by copyright.

People for the Ethical Treatment of Animals (PETA) then entered the fray, filing a lawsuit in federal court against Slater and others for infringing the monkey’s copyright. Naturally, PETA also asked to be put in charge of administering proceeds from the photographs.

In 2016, the federal district court judge dismissed the lawsuit, adopting the U.S. Copyright Office’s position that copyright protections do not extend to non-human animals. PETA appealed the decision to the 9th Circuit Court of Appeals. Oral arguments were heard on July 12, 2017. According to reports, Slater has gone broke defending against the lawsuit.

So, Professor Goldberg, is PETA making a mockery of tort law or are their attorneys insane for believing animals can own property? What do you think?

Let’s Go Crazy, Just Not This Way

Micahmedia at en.wikipedia [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons[Photo: Micahmedia at en.wikipedia [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons]

Minnesota’s proposed new publicity rights law

Minnesota is poised to enact a sweeping new publicity right into law. Publicity rights legislation has been needed in Minnesota for a long time, but this isn’t the way to do it.

Background

Publicity rights are a matter of state law, growing out of the common law right of privacy.1

Although initially springing from the common law cause of action for invasion of privacy, misappropriation of personality (a person’s name or likeness) developed along a different path. The other causes of action – intrusion upon seclusion, false light, and publication of private facts – continue to be concerned with the indignity, the emotional suffering, that an invasion of privacy causes. Misappropriation of personality has drifted away from that focus. The modern trend is to treat publicity rights (i.e., the exclusive right exploit one’s own name, likeness, voice, etc. commercially) as a kind of intellectual property. The concern now is with the unfair use of another person’s identity to make money, not so much with the indignity suffered when one’s name is used for base commercial purposes. This has been good news for celebrities. It is not very often that a modern-day celebrity is in a position to contend that being associated with mercantilism is embarrassing or repulsive to him/her.

Today, most states recognize, either by court decision or statute, a right to recovery for unauthorized use of a person’s name, likeness, voice, etc. In Minnesota it was established by court decision.2 The question that remains unanswered, in Minnesota and several other states, is just how many of the attributes of a property right it will take on.

The question whether the right continues to exist after a person’s death forces the issue. If the cause of action is a personal one, designed to make a person whole for indignities suffered, then it cannot. Dead people feel no pain. (Or at least, there is no known way to prove that they do.) Prompted by the death of Prince, who was indisputably the most commercially successful musical artist the state has ever produced, the Minnesota legislature is set to take action on a proposal to enact a statute that would both clarify and codify existing case law, while at the same time greatly expanding it.

The Minnesota bill

The Senate version of the bill is attracting a good deal of attention. In part, this is because of the retroactive postmortem protection provisions it contains These kinds of provisions aren’t new. They have been enacted in several states now, including Washington (former home to Jimi Hendrix.) Those states, however, have imposed finite term limits, like 50 or 70 years, tending to correspond, roughly, to copyright terms. The Minnesota bill, by contrast, calls for post-mortem publicity rights of potentially infinite duration. This means that sometime in the future (after 2086), assuming Prince’s heirs haven’t abandoned the right by then, a tribute band could freely exploit Prince’s music so long as it didn’t mention him by name. Instead of marketing their albums or performances under the banner, “The Knock-Off’s play Prince’s greatest songs,” they would have to say something like, “The Knock-Off’s play the greatest songs of some dude we can’t name.”

The “fair use” provision in the Senate version is the more worrisome part, though. As written, it provides an exception from liability for when a person’s name, likeness, photograph, etc. is used for “a news, public affairs or sports broadcast or account.” This leaves out entire categories of reverential uses, like editorials and opinion pieces, not to mention fan sites — regardless of how respectful they are of copyright and trademark rights.

The bill does say that the mere fact that a website has paid advertising on it isn’t enough to establish commercial use. Instead, it is left to the courts to decide, on a case-by-case basis, whether the name or likeness appearing on the website is “connected” with a website’s sponsorship or paid advertising. Great. So what will a court do about personal blogs and websites with Google AdSense on them? Since AdSense correlates revenues to the number of visits to a site, all of the content on these sites is “connected” with paid advertising. If the number of visits to a blog site increases after a guest blogger posts an elegy for a beloved artist (resulting in increased revenue of, say, $0.02), couldn’t a court say the mention of the artist’s name was “connected” to advertising revenues, thereby making the elegy a “commercial” use?

(By the way, why are news and sports broadcasts given special dispensation? What about comedy, online book club discussions, movie reviews, and so on? It seems unlikely that this distinction could withstand First Amendment scrutiny.)

And then there is the clause providing that not only can a court order the impoundment and destruction of infringing goods, but the State can use its police power to seize “all instrumentalities used in connection with the unauthorized use” for “forfeiture to the state.” So not only can someone get a court to issue an order for the destruction of all the T-shirts with the word “Prince” on them that you’ve been selling, but now the police will have the authority to come into your house and take away your computer and modem. Not for the benefit of an aggrieved person or his heirs, mind you, but simply to add to the State’s collection of the many other assets it is already confiscating from its citizens under other laws.

Yes, it is disgusting to see people who never had anything respectful to say about Prince while he was alive trying to cash in on his popularity now that he is dead. And yes, codification and clarification of the law of misappropriation of personality to specifically address the question of postmortem rights is needed in Minnesota. But we also need First Amendment freedoms. Without them, Prince’s musical genius would not have been able to flourish in the first place.

Believe it or not, we can have both. It will just take a little more thinking, that’s all.

 

  1. Nizer, The Right of Privacy – A Half Century’s Developments 39 MICH. L. REV. 526, 535-36 (1941).
  2. See Lake v. Wal-Mart Stores, Inc., 582 N.W.2d 231 (Minn. 1998).

Trademark Liability for Wearing a Costume to Solicit Candy

100_0126

The donning of costumes on Halloween is a long but increasingly risky tradition. The possibility that a particular costume might insult or offend another person’s religious, cultural, racial, ethnic, sexual orientation, disability status, or political sensibilities has led some schools to simply ban Halloween celebrations and/or costumes altogether.1 Despite these developments, surprisingly little attention has been given to the question whether donning a costume that displays another person’s trademark image, logo, or fictional character creates a risk of trademark liability.

What is a trademark?

A trademark is any word, typographic character, symbol or device, or combination thereof, that is used in commerce to identify the source of goods or services, and to distinguish them from goods or services manufactured or sold by others.

A cartoon character can be a trademark. Batman, for example, is a trademark owned by DC Comics. Many other cartoon and fictional characters displayed on Halloween costumes are protected trademarks.

Is it infringement to go trick-or-treating using another person’s trademark?

The answer, generally, is no. Both at common law and under the Lanham Act, a trademark infringement claim requires proof that the complained-of use creates a likelihood of confusion as to the source of goods or services. Children generally are not attempting to peddle anything when they go trick-or-treating. To the contrary, they are usually trying to acquire goods, not market them.

In addition, using a Halloween costume to go trick-or-treating would probably quality for the referential fair use defense. Merely referring to a trademark, as distinguished from using it in a way that suggests particular goods or services come from a different source than they actually do, is not infringement.

An infringement claim might be a possibility in the rare case where a child in costume offers to go trick-or-treating on someone else’s behalf. In this case, the child may be seen as using the costume to market a trick-or-treating service. Even in this situation, however, wearing the costume would not be infringement unless it can be established that doing so creates a likelihood of confusion about the source of the service. To be liable to DC Comics for infringement for wearing a Batman costume while offering to go trick-or-treating for others, DC Comics would need to prove that consumers are likely to believe that DC Comics sponsored or endorsed the child’s activity.

Of course, additional facts can change the analysis. If, for example, an individual dresses up in a Batman costume and falsely represents to other people that DC Comics has sent him out to offer trick-or-treating services to children, or that DC Comics specifically endorses or sponsors his activity, then there may be liability. It is unlawful to make false statements in connection with an offer of goods or services. Doing so is prohibited by Section 43(a) of the Lanham Act and various state and federal consumer protection and false advertising laws.

Can I modify or make a costume that displays another person’s trademark character image?

The answer to this question is not quite as simple. The probability of liability for infringement is not high (subject to the qualifications noted above.) Replicating a trademark without the trademark owner’s permission, however, implicates more than the possibility of an infringement claim. It also creates a risk of liability for trademark dilution.

Dilution means the unauthorized use of a strong or famous mark in way that weakens the distinctiveness of the mark, or tarnishes it. As one court put it, it is the “gradual diminution or whittling away of the value of a trademark, resulting from the use by another.”2

Unlike infringement, no proof of a likelihood of confusion is required. A person may be liable for dilution even if no one at all believes the product was made or distributed by the trademark owner. The purpose of protecting trademarks from dilution is not to protect the public from confusion as to source, sponsorship or endorsement. It is to protect a company’s investment in the distinctiveness of its trademark as a source identifier.

The two principal forms of dilution are blurring and tarnishing.

Blurring means using a mark in such a way as to diminish its association with a particular source. For example, making a costume that displays the word ROLEX on it would tend to diminish the association of that mark with watches, and therefore could be dilution.

Tarnishment means causing negative associations with a mark. This may occur as a result of the unauthorized use of another person’s mark on poor quality or hazardous goods, or in a disreputable context.

Fortunately for most trick-or-treaters, Section 43(c) of the Lanham Act3 establishes liability only for those who make a commercial use of the mark. Making a costume for your own use, or for your own children, probably would not qualify as a commercial use. Making and selling costumes to others, however, could put you at risk, if in so doing you use someone else’s trademark logo or image without permission.

Referential fair use is a defense to a tarnishment claim. A costume that is a parody of a famous cartoon character trademark might qualify for the protection of this defense.

Other potential legal risks

This article focuses exclusively on the trademark risks associated with wearing a costume on Halloween. The reader should be aware that this activity may implicate other kinds of legal risks, as well. For example, wearing a costume that states or implies something that is not true about a person, business, product or service, might expose you to liability for defamation, trade disparagement, fraud, misrepresentation or unfair competition, depending on the circumstances. In some cases, displaying a costume that communicates a private fact about a person could result in liability for invasion of privacy. Appropriating a person’s likeness without permission may result in liability, in some circumstances. And copying or modifying copyright protected artwork raises the possibility of liability for copyright infringement.

Moreover, it is not inconceivable that an especially scary or offensive costume might generate a tort claim for negligent or intentional infliction of emotional distress, at least in some states.

On the criminal side, a number of jurisdictions have imposed prohibitions against the wearing of masks, at least in certain places and/or at certain times. Some of these expressly make an exception for Halloween, but not all of them do.

This is not a exhaustive list.

Should you be afraid? Maybe so. But isn’t that what Halloween is all about?

 

 

 

  1. See, e.g., Carlson, Suzanne, “Religious Roots, Secular Festivities: Halloween Takes A Hit In Schools,” Hartford Courant (October 26, 2014); Brown, Matthew, “Religious overtones scare school into canceling Halloween celebration,” Deseret News (October 18, 2013), retrieved from http://national.deseretnews.com/article/487/religious-overtones-scare-school-into-canceling-halloween-celebration.html on October 31, 2015.
  2. Plasticolor Molded Prods. v. Ford Motor Co., 713 F. Supp. 1329, 1342 (C.D. Cal. 1989).
  3. 15 U.S.C. § 1125(c)

No More Royalties for “Happy Birthday”

Birthday Song
(from court documents)

Restaurants, business owners, authors and producers no longer have to pay a copyright royalty to perform the “Happy Birthday” song. A federal district court judge has ruled that Warner/Chapelle Music Inc., which has been claiming ownership of the copyright in the song – and charging royalties for its use — does not own the copyright, after all.

Background

Patty and Mildred Smith wrote a song called “Good Morning To All” in the nineteenth century. Originally intended for use in a kindergarten classroom, the lyrics were: “Good morning to you / Good morning to you / Good morning, dear children / Good morning to all.” They published the song in a book, and assigned the copyright to their publisher, the Clayton F. Summy Company.

The Summy Company registered a copyright claim to the song, “Happy Birthday To You” in 1935. Warner/Chapelle succeeded to that claim.

Warner/Chapelle argued the 1935 registration secured ownership of copyright in the lyrics as well as the music. The judge ruled, however, that even if the Summy Company acquired rights to the melody, there was no evidence the Summy Company ever acquired the copyright to the lyrics.

Melody vs. lyrics

The melody for the famous birthday song has been in the public domain for over half a century, the copyright registration having expired in 1949. This meant that anyone could use the song in their business, or in a greeting card, musical composition, sound recording or audiovisual work, provided they used different lyrics. Because Warner/Chapelle claimed ownership of the copyright to the lyrics, the company maintained that anyone wishing to publicly perform, publish or record the words to the song (“Happy birthday to you,” etc.) needed to pay a royalty. Warner has collected millions of dollars of royalties for the lyrics to this song.

Very likely in the public domain

Many reporters are saying the song is now “in the public domain.” This is not accurate. The ruling means that Warner/Chapelle has failed to establish a right to claim royalties for the song, or the lyrics to it. The fact that the Hill sisters did not convey the copyright to the lyrics to the Summy Company simply means that the long-time lyrics rights-claimant Warner/Chapelle cannot assert ownership. It does not mean that nobody else can. In theory, if it can be proven that someone else wrote it, and that the first authorized publication occurred  after 1923, and that all copyright requirements that existed at all relevant times have been met, then that person, or his  successor(s) in interest, may own the copyright to the lyrics. That will not be an easy thing to do, given the existence of a songbook containing the lyrics to “Happy birthday to you,” purporting to have been published “with permission,” with a publication date of 1922 appearing on it.

How much copying is ‘fair use’?

copyright-symbol
Which of the following statements is/are true?

(a) Copying up to 25 words is fair use.
(b) Copying less than 10 percent is fair use.
(c) Copying 25 words or 10% is fair use.
(d) Copying only a small amount is fair use.
(e) If you don’t make money on it, it’s fair use.
(f) It’s fair use if it’s for an educational purpose.
(g) Non-profit organizations can’t be sued for copyright infringement.
(h) It’s fair use if there’s no copyright notice on it.
(i) If the author is dead, you can copy anything he wrote.
(j) As long as you give credit to the author, it’s fair use.
(k) “Fair use” is a myth. There is no such thing.

If you answered (a), (b), (c), (d), (e), (f), (g), (h), (i), (j), or (k), then you failed the test. You’re in good company, though; nearly everybody believes at least one of these things is true.

Fair Use has been called “the most troublesome in the whole law of copyright,”1 and for good reason. With the exception of some narrowly limited statutory exemptions, there are no “bright line” tests for determining what is fair use. The bulk of the law on fair use has been left to the courts to develop. Unfortunately, they have not established any specific “bright line” tests, either.

The four-prong test

17 U.S.C. § 107 provides that copying material “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright….” It then directs courts to consider four factors when deciding whether a particular use should be permitted as fair use:

(i) the purpose and character of the use;
(ii) the nature of the work;
(iii) the amount and substantiality of the portion used; and
(iv) the effect of the use on the market for the work.

Taken together, it is clear that Congress intended courts to treat commentary, criticism, news reporting, teaching, scholarship, and research as uses that will satisfy the first prong of the test. This doesn’t mean these are the only kinds of uses that may qualify, though. Nor does it mean that every use of copyrighted material for one of the specified purposes is fair use. The other three prongs must still be considered.

Under the fourth factor, even an educational use may be disqualified from “fair use” protection if it competes in the same market with the original work. If, for example, a teacher were to photocopy and distribute a textbook to students, students would no longer have a need to buy copies of the textbook for themselves. Such a use would have a negative impact on the market for the textbook. In this scenario, a teacher asserting “fair use” as a defense to infringement probably would not be successful.

2 Live Crew, Pretty Women, and the birth of the Transformative Use doctrine

In the 1990’s, 2 Live Crew was sued for copyright infringement for using “samples” of a substantial amount of Roy Orbison’s “Oh Pretty Woman” in a recording of their own. (Although the band had asked, permission had been refused for reasons having to do with protecting artistic integrity. 2 Live Crew therefore went ahead and copied the original recording anyway, ultimately making a nice bundle of money on it.) The case went all the way the United States Supreme Court.

To the surprise of many copyright attorneys, the U.S. Supreme Court ruled in favor of 2 Live Crew. In so doing, the Court established a precedent for “transformative use” as a factor emanating from the other four factors, or coming within the penumbra of the other four factors. Not only that, but according to Justice Souter (who wrote the opinion for the Court), the extent to which a use is transformative was henceforth to be regarded as  the most important consideration in the fair use analysis.2 The more transformative a new work is, the more likely it is to be fair use.  The fact that a work is transformative, the Court declared, outweighs all the other factors. Thus, the Court ruled that even though 2 Live Crew had engaged in a substantial amount of copying; had copied “the heart” of the song; and had commercially exploited the song in a way that negatively impacted the market for the original, the use nevertheless qualified as “fair use” because it was a “transformative” use.

Creating a new internal conflict in copyright law

The Court’s ruling seems to be at odds with the Copyright Act’s grant of an exclusive right to the author of a copyrighted work to make derivative works from it. The Copyright Act defines a derivative work as “any form in which a work may be recast, transformed, or adapted.”3 The language of the statute seems to be pretty clear that Congress intended to ensure that authors would have the exclusive right to transform their works into something else. According to the U.S. Supreme Court, however, it is fair use for other people to transform an author’s work into something else without the author’s permission.

While no definition of transformative use is set out in the Copyright Act, it basically includes any use that alters the purpose, meaning or function of a work, or a portion of it. In other words, it is any use that makes the work serve a purpose, express a meaning, or function in a way that is different from the original purpose, meaning or function of the work.

Parody

Parody is one kind of transformative use that has long been treated as “fair use.” This is because a parody, by definition, comments on, and is a criticism of, the original work. As such, it falls squarely within two of the purposes Congress has identified as the most deserving of “fair use” protection. On balance, other factors tend to support its classification as “fair use,” primarily because parody normally does not displace the market for the original. The segment of the market that is likely to buy the original normally is not the same segment of the market that is likely to buy a work that is critical of it. (Fans are not likely to be in the market for products mocking the things they adore.)

“Entirely different aesthetic”

Historically, courts treated the fact that copying of a work was for purposes of criticism and commentary as being central to “fair use” analysis in cases where no other Congressionally identified purpose (research, education, news reporting) existed. This was why unauthorized copying for a satire (which doesn’t use material from the original for purposes of commentary or criticism of the original work) is not as likely to qualify for “fair use” protection as a parody is. After the 2 Live Crew decision, however, courts seem to be trending toward interpreting “transformative” fair use in an increasingly broad way. In Cariou v. Prince,4, for example, the Second Circuit Court of Appeals held that an artist’s incorporation, into his paintings, of entire photographs that other people had taken was a sufficiently transformative use to qualify as fair use. The Court reasoned that the new work created “a different aesthetic” from that imparted by the original work. In so holding, the court expressly rejected the notion that the new work must criticize or comment on the original in order to be a protected fair use.

It is difficult to square this case with other court decisions that have denied fair use status to satire specifically because satire does not criticize or comment on the original work. Most satire certainly does create a different aesthetic from the original. An orginal work may project a somber, philosophical aesthetic; a satire of it most likely will create the opposite kind of aesthetic, i.e., a light, humorous one.

It is also difficult to square the Cariou decision with the exclusive right of the author to make derivative works from his work. The artist in this case clearly copied the work and then modified it. That is exactly what it means to make a derivative work. There is nothing in the Copyright Act that explicitly requires a derivative work to have the same “aesthetic” as the original work. The rule now, though, at least in the Second Circuit, seems to be that an author has an exclusive right to make derivative works only to the extent the derivative work has the same “aesthetic” as the original work.

The potential import of this ruling is not yet known. For example, how great a difference will qualify as “entirely different”? Since judges are not art experts, will the testimony of expert witnesses qualified to form opinions about aesthetics be necessary in fair use cases? If so, what standard relevant to copyright principles should they employ to decide whether a particular work has an “entirely different” aesthetic versus, say, only a “partially different” aesthetic?

Conclusion

While some courts seem to be applying increasingly expansive definitions of fair use, not all judges are in in the mood to whittle away authors’ rights. “Judges do not share a consensus on the meaning of fair use.”5 It has become what Judge Pierre Leval has described as “a disorderly basket of exceptions to the rules of copyright.”6

You can gamble on the possibility that a court will determine your proposed use of copyright protected material is “fair,” if you wish. If you are interested in following the safest course, however, then you should try to get permission from authors, composers, artists, and recording companies before appropriating the fruits of their labor.

 

  1. Dellar v. Samuel Goldwyn, 104 F.2d 661 (2nd Cir. 1939.)
  2.  Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994).
  3.  17 U.S.C. § 101, emphasis added.
  4. 714 F.3d 694 (2d Cir. 2013)
  5. Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990)
  6. Ibid.

Redskins no more? Pro-Football Inc. v. Blackhorse

(USPTO Reg. No. 0986668)

(USPTO Reg. No. 0986668)

A judge of the U.S. district court for the eastern district of Virginia issued a ruling today that should finally bring more than two decades of litigation over the “Redskins” trademark to an end. The memorandum order affirms the Trademark Trials and Appeals Board’s decision last year to cancel the “Redskins” trademark registrations owned by Pro-Football Inc. (PFI).

The district court rejected all of PFI’s arguments, finding that the “Redskins” trademarks, including both the word and the design logos, are unregistrable under Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)), which bars from federal registration any trademark that “may disparage” persons, or bring them into contempt or disrepute. The court also ruled that Section 2(a) does not violate the First or Fifth Amendments of the constitution.

Disparagement of Native Americans

The Redskins trademark was first used in 1933. It was registered in 1967, and variations on it were registered between 1974 and 1990.

Various kinds of evidence were submitted to show that the word “Redskins” may be disparaging to Native Americans, including both expert and lay witness testimony. Probably the most damning evidence of all, though, is the fact that for more than a century, dictionaries of the English language consistently have been describing it as an offensive term. The 1898 Webster’s Collegiate Dictionary described it as “often contemptuous.” The 1966 Random House Dictionary described it as “often offensive.” By 1982, American Heritage Dictionary was classifying it as “offensive slang.” Merriam-Webster and Collier’s contained similar definitions.

First Amendment

PFI argued that Section 2(a) violates its First Amendment rights. The court rejected this argument on two grounds: (1) trademark registration certificates are government speech, which is not protected by the First Amendment; and (2) refusal of registration does not impose any restrictions on speech. PFI is free to continue using its trademarks if it wants to; and it can continue to bring actions in state court (and in federal court, if diversity jurisdiction exists) to enforce its trademark rights. PFI can continue to use the word “Redskins” as its team name, on its products, and in its advertising, all it wants. It won’t be able to use the ® symbol, since that is reserved for federally registered trademarks; but it may use the ™ symbol to put the public on notice that it has trademark rights in the “Redskins” name and design logo.

Fifth Amendment

PFI argued that Section 2(a) should be declared void for vagueness. Fifth Amendment Due Process requires that the language of a statute proscribing conduct or speech, or imposing civil or criminal penalties, must be sufficiently definite to put a person on notice as to what is prohibited. Because Section 2(a) does not restrict speech or impose any civil or criminal penalties, the standard of review of the vagueness claim in this case is not very high. Here again, the dictionary evidence is not in PFI’s favor. Clearly, PFI was on constructive notice that its chosen trademark was offensive to people even before it began using it.

PFI also argued that cancellation of its registration violated the Takings Clause of the Fifth Amendment, which requires the government to provide reasonable compensation when it takes private property for a public purpose. The problem with this argument is that no property has been taken. True, a trademark is property. Registration of a trademark, though, is a ministerial act; it does not generate any new private property. Nobody has taken away PFI’s trademark. PFI can continue to use the trademark all it wants.

“The Slants” update

The U.S. Circuit Court of Appeals for the federal circuit recently came to similar conclusions in another case challenging the constitutionality of Section 2(a): In re Tam, No. 2014-1203 (April 20, 2015.)

In Tam, the issue presented was whether the USPTO violated the constitution by denying trademark registration to the Asian-American band, The Slants. The Court upheld the constitutionality of Section 2(a) for essentially the same reasons as the Virginia district court cited in PFI v. Blackhorse.

In this case, though, the Court took the relatively unusual step of appending an “Additional Views” statement to the end of its opinion. This “Additional Views” essay expresses concerns that Section 2(a) may inhibit speech by making only government-approved marks eligible for certain government-provided benefits (such as procedural presumptions of ownership and validity that potentially make it less burdensome to enforce trademark rights in some cases.)

It is difficult to know what to make of this “Additional Views” statement appended to the end of the opinion. Just about the only thing that is certain to come of the schism between the Redskins ruling and the “Additional Views” statement appended to the end of The Slants opinion is that there will be renewed interest, throughout the coming year, in the question whether registration of speech — whether on customized license plates or in trademark certificates — is government speech or private speech.

Genericide!

shredded_wheat_psA trademark can lose its distinctiveness if it comes to be used as a synonym for the product itself, and no longer serves as an indicator of the origin (maker) of the product. When this happens,  trademark protection is said to be lost through “genericide.”

Genericide can be a major disaster for a company that has invested many thousands of dollars registering and enforcing a trademark.

Some famous trademarks that have fallen victim to genericide include:

Ale House
Aspirin (in the U.S.)
Catseye
Cellophane (in the U.S.)
Escalator
Flit gun
Gramophone
Heroin
Kerosene
Lanolin
Laundromat
Linoleum
Mimeograph
Murphy Bed
Netbook
Pina Colada
Shredded Wheat
Thermos
Trampoline
TV Dinner
Walkman (in Austria)
Zipper

Some trademarks that are at risk (or have recently been at risk) of genericide include:

Adrenaline
AstroTurf
Band-Aid
Bubble Wrap
Bubbler (thanks to Wisconsinites)
Coke (thanks to Southerners)
Crockpot
Dumpster
Fiberglass
Formica
Frisbee
Google (recently survived challenge)
Gu (runners understand)
Hoover
Hula hoop
Jacuzzi
Jell-O
Jet Ski
Kitty Litter
Kleenex
Kool-Aid
Lava lamp
Mace
Memory stick
Muzak
Onesies
Photoshop
Ping Pong
Plexiglass
Popsicle
Putt-Putt Golf
Q-Tips
Realtor
Rollerblade
Saran Wrap
Scotch Tape
Sharpie
Skype
Speedo
Stetson
Styrofoam
Super Glue
Super Hero
Swiss Army Knife
Tarmac
Taser
Teflon
Tiffany
Tupperware
Vaseline
Velcro
Xerox
Zamboni

(These are not exhaustive lists.)

There are a number of steps you can take to help prevent genericide. For example, it is a good idea to always use your trademark as an adjective, never as a noun or a verb. (Say “Kleenex brand tissues are the best,” not “Kleenexes are best.” ) Some companies include anti-genericide provisions in their license agreements. For more ideas about what you can do to protect your brands, consult a trademark attorney.

The Spiderman case: Kimble v. Marvel Entertainment, LLC

 (U.S. Patent No. 5,072,856)

(U.S. Patent No. 5,072,856)

The biggest question raised by this case is: Why did the U.S. Supreme Court grant review?

The case involves a patented web-shooting mechanism that had been transferred to a Spiderman toy-maker in exchange for a 3% royalty payment. Like all patents, this one was for a twenty-year term. The contract was silent about how long royalties were to be paid under the contract, though. The recipient claimed royalty payments should continue in perpetuity. The toy-maker claimed patents become public domain after twenty years, so royalty payments should end at that time.

In a previous case, Brulotte v. Thys Co.1 the Court had held that a patent holder is not entitled to any royalties for the use of his invention after the patent term has expired even if he has a contract that provides for a longer period of royalty payments. The reasoning was fairly straightforward:

Patent law preempts state laws that conflict with federal patent policy. Agreements for the payment of royalties on public domain inventions conflict with patent law policy. Ergo, it would be unlawful for states to interpret or enforce contracts to the extent they provide for payment of royalties on patented inventions after they have entered the public domain.

Today’s decision in Kimble v. Marvel Entertainment, LLC basically says this case falls squarely within established precedent, i.e., Brulotte, and there’s no good reason for overruling it, so yeah, the same rule still goes.

It wasn’t a complete waste, though. It gave Justice Kagan, who delivered the opinion of the Court, the opportunity to weave numerous Spiderman references into a Supreme Court opinion — mentioning “webs” of ideas and “doing whatever a spider can;” referring to the Court’s decision in this case as “a superpowered form of stare decisis;” and including a quotation from a Spiderman comic in the concluding paragraph: “[I]n this world, with great power there must also come—great responsibility.”

Apart from endearing the Court to Spiderman fans, I suppose the case serves as a useful reminder to patent-owners that royalties may only be collected for the life of the patent, i.e., twenty years. If you think your patent has the potential to earn large profits well beyond that period, then seek a higher percentage royalty for the first twenty years of use.

  1. 379 U. S. 29 (1964)

It’s a Wonderful Blog List

(RKO release poster, 1946)

(RKO release poster, 1946)

Those in the over-thirty crowd probably have many fond and/or maddening memories of flipping channels throughout the Christmas season to decide which network broadcast of It’s a Wonderful Life to watch. The reason it was on so many channels is that television stations could broadcast it royalty-free. So they did. A lot.

Why could they broadcast it royalty-free? Surprisingly, it seemed to be in the public domain. Before the Copyright Act of 1976 established a single-term copyright measured by the life of the author plus 50 years (later extended to 70), copyrights only lasted for a period of 28 years from the date of first publication. They could be renewed for a second 28-year term, but the renewal had to take place during the last year of the original term. If that didn’t happen, then it entered the public domain, meaning that anyone could copy it, distribute it, and broadcast it without having to pay any royalties to the actors, director, writer, or anyone else. The company that acquired the rights to It’s a Wonderful Life neglected to renew the copyright. That’s why television networks began broadcasting it as often as they could, beginning in the 1970’s.

The party came to an end in the 1990’s when the company asserted a claim to the copyright in the underlying literary work on which the movie was based (a pamphlet called The Greatest Gift.) For the past few years, the movie has been licensed only to NBC for television broadcast.

The requirement that copyright renewal must occur during the 28th year of the original term – and only during the 28th year of the original term — has caused quite a wealth of copyrighted matter to enter the public domain accidentally or unexpectedly. Although the Copyright Act of 1976 did away with the renewal system, it did not apply retroactively.

For those with an interest in this arcane topic, here is a non-comprehensive list of movies that appear to have entered the public domain.1

• Angel and the Badman (1947) (failure to renew)2
• The Animal Kingdom (1932) (failure to renew)3
• Algiers (1938) (failure to renew)4
• Beau Brummel (1924) (failure to renew)5
• Beau Ideal (1931) (failure to renew)6
• Behind Office Doors (1931) (failure to renew)7
• Bird of Paradise (1932) (failure to renew)8
• Birth of a Nation (1915) (expired)
• Birth of the B-29 (ca. 1943) (U.S. government work)9
• Blood on the Sun (1945)10
• The Brain That Wouldn’t Die (1962) (published without copyright notice)11
• Brideless Groom (1947) (failure to renew)12
• Carnival of Souls (1962) (published without copyright notice)13
• Charade (1963) (published without full copyright notice)14
• Check and Double Check (1930) (failure to renew)15
• Combat America (1943) (U.S. government work)
• Conspiracy (1930) (failure to renew)16
• The Dance of Life (1929) (failure to renew)17
• Danger Lights (1930) (failure to renew)18
• The Deadly Companions (1961) (missing copyright notice)19
• Debbie Does Dallas (1978)20
• Detour (1945) (failure to renew)21
• Disorder in the Court (1936) (failure to renew)22
• Dixiana (1930) (failure to renew)23
• D.O.A. (1950) (failure to renew)24
• Father’s Little Dividend (1951) (failure to renew)25
• A Farewell to Arms (1932) (failure to renew)26
• The Fight for the Sky (1946) (U.S. government work)
• The General (1927) (failure to renew)27
• The Gold Rush (1925) (failure to renew)28
• Gulliver’s Travels (1939) (failure to renew)29
• Half Shot at Sunrise (1930) (failure to renew)30
• Hemp for Victory (1942) (U.S. government work)
• His Girl Friday (1940) (failure to renew)31
• Hook, Line and Sinker (1930) (failure to renew)32
• The Impossible Voyage (1904) (expired)
• Intolerance (1916) (expired)
• Inside the Lines (1930) (failure to renew)33
• It’s a Wonderful Life (1946) (failure to renew)34
• The Lady Refuses (1931) (failure to renew)35
• A Lady to Love (1930) (failure to renew)36
• Last Clear Chance (1959) (not registered)37
• The Last Time I Saw Paris (1944) (failure to renew)38
• Lawful Larceny (1930) (failure to renew)39
• Letter of Introduction (1938) (failure to renew)40
• Life with Father (1947) (failure to renew)41
• The Little Princess (1939) (failure to renew)42
• The Little Shop of Horrors (1960) (failure to renew)43
• Lonely Wives (1931) (failure to renew)44
• Love Affair (1939) (failure to renew)45
• Malice in the Palace (1949) (failure to renew)46
• March of the Wooden Soldiers (1948) (failure to display copyright notice)47
• McLintock! (1963) (failure to renew)48
• Mr. Imperium (1951) (failure to renew)49
• My Favorite Brunette (1947) (failure to renew)50
• Nanook of the North (1922) (expired)
• Night of the Living Dead (1968) (omission of copyright notice on copies)51
• Nothing Sacred (1937) (failure to renew)52
• The Outlaw (1943) (failure to renew)53
• The Painted Hills (1951) (failure to renew)54
• The Pay-Off (1930) (failure to renew)55
• The Perils of Pauline (1914) (expired)
• The Phantom Carriage (1921) (expired)
• The Phantom of the Opera (1925) (failure to renew)56
• Rain (1932) (failure to renew)57
• Rebecca of Sunnybrook Farm (1917) (expired)
• Reefer Madness (1936) (improper copyright notice)58
• Rock, Rock, Rock! (1956) (failure to renew)59
• The Royal Bed (1931) (failure to renew)60
• Santa Fe Trail (1940) (failure to renew)61
• The Secret Hour (1928) (failure to renew)62
• Sherlock Holmes Baffled: The Enchanted Drawing (1900) (expired)
• Sin takes a Holiday (1930) (failure to renew)63
• Sing a Song of Six Pants (1947) (failure to renew)64
• Sinners in Paradise (1938) (failure to renew)65
• Smouldering Fires (1925) (failure to renew)66
• A Star Is Born (1937) (failure to renew)67
• Swing High, Swing Low! (1937) (failure to renew)68
• Teenagers from Outer Space (1959) (failure to renew)69
• The Terror (1963) (no registration?)70
• Three Came Home (1950) (failure to renew)71
• Three Guys Named Mike (1951) (failure to renew)72
• Till the Clouds Roll By (1946) (failure to renew)73
• Topper Returns (1941) (failure to renew)74
• A Trip to the Moon (1902) (expired)
• Vengeance Valley (1951) (failure to renew)75

Remember that even if a movie is in the public domain now, the literary text on which it is based might not be. And the same is true of any musical compositions performed in a movie. So before you start making your own version of Night of the Living Dead, or selling tickets to a public performance of Debbie Does Dallas, be sure to investigate the copyright status of the musical and literary works embedded in them first.

 

  1.  This list only applies to the motion picture itself. Other works embedded in it, such as a musical composition, or a book on which the movie is based, may still be protected by copyright.
  2. Pierce, David Legal Limbo: How American Copyright Law Makes Orphan Films (March 29, 2001.) Orphans of the Storm II: Documenting the Twentieth Century. Retrieved January 5, 2012.
  3. Pierce, David. “Forgotten Faces: Why Some of Our Cinema Heritage Is Part of the Public Domain.” Film History: An International Journal 19 (2): 125–43 (June 2007.)
  4. Id.
  5. Id.
  6. Id.
  7. Id.
  8. Id.
  9. Works created by the U.S. government are not protected by copyright.
  10. Pierce (2001), supra note 2.
  11. At one time, publishing copies of a work without the copyright notice on them could cause the work to enter the public domain. This requirement was abolished for works first published on or after March 1, 1989.
  12. Hogan, David J. Three Stooges FAQ: Everything Left to Know about the Eye-Poking, Face-Slapping Head-Thumping Geniuses (2011).
  13. Blake, Marc. Writing the Horror Movie 91 (2013)
  14. Pierce (2007), supra note 3.
  15. Id.
  16. Pierce (2007), supra note 3.
  17. Id.
  18. Id.
  19. Erickson, Hal. “Early Salvos from ‘Bloody Sam’: New DVDs, Peckinpah’s Deadly Companions and Major Dundee,” New York Times (May 10, 2013)
  20. M & A Associates v. VCX, 657 F. Supp. 454 (E.D. Mich. 1987)
  21. Herzogenrath, Bernd. The Films of Edgar G. Ulmer 151 (2009).
  22. Hogan, supra note 12.
  23. Pierce (2007), supra note 3.
  24. Researching the Copyright Status of a Work, http://chart.copyrightdata.com/ch17.html
  25. Pierce (2007), supra note 3.
  26. Id. Remakes of this movie may not be in the public domain.
  27. Fishman, Stephen. The Public Domain: How to Find & Use Copyright-Free Writings, Music, Art & More 174-180 (5th ed. 2010.)
  28. Id.
  29. Miller, John M. “Mr. Bug Goes to Town aka Hoppity Goes to Town,” Turner Classic Movies (June 14, 2015); Kehr, David, “Classics From Disney and a Lilliputian Competitor,” New York Times (March 6, 2009.) Retrieved October 26, 2013.
  30. Pierce (2007), supra note 3.
  31. Fishman, supra note 27.
  32. Pierce (2007), supra note 3.
  33. Id.
  34. Id.
  35. Id.
  36. Id.
  37. Prelinger, Rick. The field guide to sponsored films 52 (National Film Preservation Foundation 2006.)
  38. Researching, supra note 24.
  39. Pierce (2007), supra note 3.
  40. Id.
  41. Erickson, Hal, “Life with Father Overview,” New York Times (June 14, 2015)
  42. Pierce (2007), supra note 3.
  43. Fishman, supra note 27; Pierce (2007), supra note 3.
  44. Pierce (2007), supra note 3.
  45. Id.
  46. Hogan, supra note 12.
  47. Pierce (2007), supra note 3.
  48. Fishman, supra note 27 at 337; “Court Rules for ‘Goodtimes’ in McLintock! Case,” Billboard 73 & 82 (May 14, 1994)
  49. Pierce (2007), supra note 3.
  50. Pierce (2001), supra note 3.
  51. Boluk, Stephanie; Lenz, Wylie. Introduction: Generation Z, the Age of Apocalypse. In Boluk, Stephanie; Lenz, Wylie. Generation Zombie: Essays on the Living Dead in Modern Culture 5 (2011).
  52. Fishman, supra note 27.
  53. Pierce (2007), supra note 3.
  54. Id.
  55. Id.
  56. Id.
  57. Pierce (2001), supra note 2.
  58. Anderson, Patrick, High in America: the true story behind NORML and the politics of marijuana 101 (1981); Shaye, Robert. Graduation 2003 (May 22, 2003)
  59. Pierce (2007), supra note 3.
  60. Id.
  61. 7 Filmmakers Newsletter (Suncraft International Inc. 1973)
  62. Pierce (2007), supra note 3.
  63. Id.
  64. Hogan, supra note 12.
  65. Pierce (2007), supra note 3.
  66. Id.
  67. Id.; Fishman, supra note 27. Remakes may not be in the public domain.
  68. Pierce (2007), supra note 3.
  69. Fishman, supra note 27.
  70. Ray, Fred Olen, The New Poverty Row: Independent Filmmakers as Distributors 51 (1991).
  71. Erickson, Hal, “Three Came Home Overview,” New York Times (June 14, 2015)
  72. Pierce (2007), supra note 3.
  73. Id.
  74. Id.
  75. Id.