Copyrightable Features in Useful Articles – Working the Problem after Star Athletica

October 9, 2018
Posted by Kurt E. Anderson

Before Star Athletica vs Varsity Brands was decided, we filed a copyright application for a sculptural work.  A few months later, the Supreme Court published its decision in Star Athletica and the Copyright Office rejected the application on the basis that it “includes functional [i.e., useful article] elements” and “does not contain any copyrightable sculptural authorship needed to sustain a claim to copyright.”  We appealed and filed a request for reconsideration.

The work was a sculpture by the world famous Brazilian artists known as Osgemeos.  It had previously been displayed at an opening at the Lehmann Maupin gallery in New York City.  The work, entitled “Gramophone,” is pictured below.

By way of explanation, the Gramophone sculpture includes two turn tables, a mixing board as well as speakers and in its entirety, it is capable of playing music.  For any DJs reading, this piece is not in commercial or mass production.  There’s only the one.  It’s art.   But, if you want to buy it, you can find out more by clicking here.

Under Star Athletica, the Supreme Court identified a two pronged test for determining the copyrightability of works that included useful articles.  Under the first prong, “the decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.”  If such an element is spotted, then, under the second prong, the decisionmaker must determine whether such element “has the capacity to exist apart from the utilitarian aspects” of the work.

The Copyright Office’s rejection letter correctly cited this two prong test, but somehow concluded that Gramophone contained useful article elements and did not contain any non-useful sculptural design element that could be copyrighted and registered.  Now, please take a look at the picture of the sculpture again and then read on.

Citing Star Athletica in our appeal, we argued that the work contained numerous separable copyrightable elements separable from the utilitarian articles incorporated in the work.  These included the painted faces with three dimensional grills for mouths, the yellow cubes and their arrangement, and the non-functional horns, among other things.  Moreover, we cited the fact that the 2nd Circuit has long held that “a work may be copyrightable even though it is entirely a compilation of unprotectable elements.”  Knitwaves, Inc. v Lollytogs Ltd. (Inc.), 71 F.3d 996, 1004 (2d Cir. 1995) (citing Feist Publications, Inc. v. Rural Tel. Serv. Col., 499 U.S. 340 (1991)).

You can probably guess how this story ends.  Ultimately, the Copyright Office granted registration of the work as a sculpture.  Interestingly, the copyright registration included a note from the Copyright Office stating “Regarding basis for registration: Graphic and sculptural features identified separately from and capable of existing independently of the utilitarian aspects of a useful article.”

Registered Trademark vs Domain Name

April 17, 2018
Posted by Kurt E. Anderson

A reader submitted a comment asking about the comparative rights of holders of registered trademarks versus the rights of domain name registrants.  Since this is an issue I come across frequently, I thought it would be interesting to discuss.  The reader’s comment (below) was submitted in response to my article entitled “They’re Using My Trademark On Their Out-Of-State Website, Can I Sue Them In My State?.”

“I have been running an active blog for the past six years, and now, I suddenly receive a notice from an IT company in Australia (dealing in both hardware & software) stating that they have just, last month, registered the trademark in the exact same name, and requesting me to stop “commercial activities” from my blog. Furthermore, they claim that they also own the .COM version of the domain name which was registered a year before mine, which is .NET. This is clearly not a “Cease & Desist” letter, and no demand has been made to hand over the domain registration. Like I said, mine is purely a blog, although I do receive ad revenue, have a “Donate” button from PayPal, and occasionally offer some free software downloads.  Where do I stand, and what should I do?”

  Figuring out how best to address these situations is almost always about gathering good facts first.  Unfortunately, we’re missing too many facts here to give any advice.  But, we can point out some of the facts that might be key to addressing the issues.

From the subject matter of the article the reader was responding to, I’m guessing that the reader is located in the US.

In order for the Australian company to force the reader to surrender the domain name, it would have to get a court order or succeed in a Mandatory Administrative Proceeding (MAP)  under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP).  As long as the blog is being operated in good faith, it is unlikely that the Australian company would succeed in a UDRP MAP proceeding.  Under the UDRP, in order for a claimant to succeed in getting a domain name turned over, the claimant must prove that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.  See UDRP §4(a).

I’ve emphasized the words “and” here for a reason.  Under the UDRP the Australian company would have to prove all three elements.  Even if the reader’s domain name is identical to the Australian company’s registered trademark (let’s assume that the .COM and .NET elements are not a protected part of the trademark), the company would still have to prove that the reader had no legitimate interest in the domain name and that it was registered and used in bad faith.  If the blog was started six years ago, it doesn’t sound like it was started in bad faith.  Accordingly, it seems unlikely that the Australian company would be would be successful in pursuing a UDRP proceeding.

As a result, the only other possibility would be for the Australian company to obtain a court order.  Whether a court order could be obtained, at least in the US, would be a function of whether the blog name infringed or diluted the Australian company’s trademark.  Since we don’t know the mark or the name of the blog and we don’t know the goods/services covered by the mark or the subject matter of the blog it’s impossible to evaluate.

In the US, however, if the Australian company’s mark was registered in the US, the company would still have to prove that the domain name of the blog was likely to cause confusion.  If the trademark was registered for computer hardware and software, but the blog was about cooking, it is unlikely that this would cause confusion in the relevant market.  For example, I would hardly expect Apple, Inc. to have a problem with the “Little Apple Cooking” blog (btw – the Thanksgiving Corn Pudding looks wonderful).  If, however, the Australian company’s mark was registered for online publications about computer hardware and software and the reader’s blog covered the same subject matter, that might be a different story.  In that case, we would have look at who started using the mark first since, in the US, trademark rights are (generally) based on use, not on registration.

On a final note, my apologies to the reader that submitted this comment for the delay in responding.  Unfortunately, the comment was submitted on the old site (kurtsblogsite) after we migrated to our new home here at ipbiztech.  As a result, we haven’t gotten around to addressing it until now.


Santa Claus is Comin’ to Town and Back to its Original Author

December 24, 2015
Posted by Melissa V. Skrocki

The Second U.S. Circuit Court of Appeals panel ruled that the rights to the familiar Christmas tune “Santa Claus is Comin’ to Town,” will revert to the original artist’s heirs in 2016. The original composers, John Frederick Coots and Haven Gillespie, licensed the rights to the song in 1934 to Leo Feist, Inc., presently known as EMI Feist Catalog, Inc. Read more

Privacy Safe Harbor for US/EU Data Transfers is Abolished

October 7, 2015
Posted by Kurt E. Anderson

Hold onto your hat, but, on October 6, 2015, the Court of Justice of the EU abolished the safe harbor on which US companies rely for transfers of data between the US and EU.  So, as of today, if you are transferring “personal data” between the US and the EU and you are relying on the safe harbor to do so, you are no longer in compliance with the EU Data Protection Directive.  Full Stop.  If this describes your company, here is what you need to do next.

Since you can no longer rely on the safe harbor, you will have to do the following:

1. Intercompany Transfers:  If the data transfer is between companies belonging to the same multinational corporation, then you can get back into compliance by adopting “binding corporate rules” and getting them approved by the national “data protection authority.”  The problem with this approach is that it may take 18 months to get such approval.  If you can’t put all data transfers on hold that long, see option 2 below.

2.  Transfers Between Unaffiliated Companies.  For all other transfers, the parties will have to enter into “standard contractual clauses.”  There are three types of standard contractual clauses, so you will have to pick which ones apply to your roll as either a data “controller” or a data “processor” or both.

3.  Comply.  One last thing.  Once you’ve adopted approved binding corporate rules or entered into standard contractual clauses, you will actually have to comply with them.  This may have far reaching implications for internal policies and practices.

Here are links to some resources that might be helpful.

CJEU Decision Invalidating the US Safe Harbor

CJEU Press Release

Model Contracts for the transfer of personal data to third countries

Model Checklist Application for Approval of

Binding Corporate Rules

EU Data Privacy Directive

A special thanks to Matthias Berger at Field Fisher for alerting me to this development.

Trademark Registration Amendments Are Now Allowed (Temporarily) for Evolving Technology

September 2, 2015
Posted by Kurt E. Anderson

Yesterday, the USPTO announced a new pilot program pursuant to which it will allow trademark registrations to be amended where the trademark owner now sells different products from those covered by the original registration due to evolving technology.  In the absence of this pilot program, such trademark owners would have to abandon their existing registration and file a completely new application. Read more

FTC New Guidance on Unfair Competition

August 13, 2015
Posted by Kurt E. Anderson

In a move characterized as “unprecedented,”  on August 13, 2015,  the Federal Trade Commission (FTC) issued a Statement of Enforcement Principles describing the principles that guide FTC’s enforcement against “methods of unfair competition” prohibited under Section 5 of the FTC Act.  It is not yet clear what prompted the FTC pronouncement or what impact it will have.  You can read the press release here.

Read more

GH&C Attorneys Win Music Industry Trademark Case

August 11, 2015
Posted by Christopher J. Marino

After a year-long battle, national touring and recording artist Dan Matthews and his American alternative rock band, “The Black Clouds,” can finally get their name back. Giordano, Halleran & Ciesla attorneys, led by Christopher J. Marino, Esq., succeeded in cancelling a nearly identical trademark registration obtained by a competing band.

To read the full article, click here.

"Blurred Lines" Copyright Infringement: Implications for Software Developers

March 11, 2015
Posted by Kurt E. Anderson

Yesterday, a federal jury found that the song “Blurred Lines” (by Pharrell Williams, Robin Thicke and Clifford Harris, Jr.) was substantially similar to the song “Got to Give it Up” (by Marvin Gaye) and awarded over $7 million in copyright infringement damages.  Because the similarities between the songs were largely based on several very small elements, the case suggests some potentially important implications for software developers.

A brief procedural note.  The case was brought by Williams et al. seeking a declaratory judgment that their songs did not infringe on Marvin Gaye’s songs.  Thus, in a twist on the conventional copyright infringement case, Williams et al. (the folks accused of copyright infringement) were the Plaintiffs and the successors to the copyright of Marvin Gaye (the folks whose rights were allegedly infringed) were the Defendants.

In the Blurred Lines case, expert reports were provided on both sides and, as you can imagine, the expert opinions were frequently conflicting.  According to the New York Times, the analysis and disputes between the experts involved “passages as short as four notes.”  ‘Blurred Lines’ Infringed on Marvin Gaye Copyright, Jury Rules, October 10, 2014.  In the October 2014 summary judgment decision (the “Summary Judgment Ruling”) which allowed this case to go to trial, the expert for the Defendants found eight features of the songs that were similar. Williams v. Bridgeport Music, Inc., 2014 U.S. Dist. LEXIS 182240 (Oct. 30, 2014).  The analysis of both experts on all points was very detailed.  For example, the Defendant’s expert found that the signature musical phrase in “Blurred Lines” was similar to the signature phrase in “Got to Give it Up” in that (among other things) both songs repeated their starting tone several times and both contained identical rhythms for the first six tones.  By contrast, the Plaintiff’s expert found that only one note in the signature phrases of both songs had the same pitch and placement (but not the same duration).

Now, imagine two experts engaged in the same sort of analysis, but instead of musical songs, they are comparing computer programs.  In such a case, the experts would be dissecting routines, subroutines and likely even smaller snippets or phrases of code to determine similarities and differences.  To most code writers I work with, that kind of analysis is far from their everyday thoughts as they go about their work.

Software developers are not only tasked with writing code that will automate certain functions, but also with doing so quickly and efficiently with limited resources.  They are also frequently required to meet certain non-functional specifications and conform to various requirements.  So much of the “big picture” is frequently dictated by utilitarian concerns (which would not be protectable by copyright).  However, the individual choices made in composing the code that achieves those goals are left to the human code writer.  While two stories may have similar plots (which is, very generally, not copyright protectable), the composition which defines the way in which those plots are stitched together and unfold represents the creative choices of the author (and is protectable by copyright).  Similarly, two computer programs may perform similar or the same functions, but the code that defines the way in which those functions are executed represents the creative expression of the code writer.

Even after an extensive analysis of the individual features alleged to be similar, in the Summary Judgment Ruling in the Blurred Lines case, the court found that even if the individual elements were not protectable (and thus could not be infringing, individually), infringement could result from the combination and selection of the elements and the “overall impact and effect.”  Williams v. Bridgeport Music, Inc., 2014 U.S. Dist. LEXIS 182240 citing Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000) (citations omitted).

While we don’t know what was in the minds of the jurors, I suspect that they were largely influenced by this last criterion.  In the 9th Circuit (where this case was decided), the jury is charged with evaluating the intrinsic similarity of the works.  Intrinsic similarity is based “on the response of the ordinary reasonable person.”  Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977).

For software developers, the concern is that even where there is no literal copying and even where an analysis of the individual elements of code does not support a finding of substantial similarity (i.e., copyright infringement), there may still be copyright infringement (at least in the 9th Circuit), if the response of the ordinary reasonable person to the overall computer program, module, routine or sub-routine suggests substantial similarity.  Are two computer programs substantially similar merely because an ordinary person would see similarities in features and functions and decide that the overall effect of the programs are similar?  Hopefully not.  Such a result would stifle competition and would likely cialis viagra levitra comparaison give copyright a greater scope of protection than was originally intended.

In copyright infringement cases, evaluating substantial similarity is, perhaps, the (pronounced “thee”) most difficult task.  In software cases, jury verdicts such as that in the “Blurred Lines” case make this task even more difficult.


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Giordano, Halleran & Ciesla Names Melissa V. Skrocki Shareholder

January 1, 2015
Posted by Melissa V. Skrocki

Giordano, Halleran & Ciesla, P.C., is pleased to announce that Melissa V. Skrocki has been named Shareholder to the firm.

Melissa Skrocki focuses her practice on counseling business clients through various transactions with an emphasis on contractual and intellectual property issues. Her business law practice includes the representation of clients in contract negotiations, confidentiality agreements, organization and formation of business entities, mergers and acquisitions, shareholder agreements, operating agreements and licensing agreements. In addition, Melissa assists her clients with business succession planning and commercial banking transactions.

To read the full article please click here.

Post Holiday Trademark Sale!!!!!!!

December 17, 2014
Posted by Kurt E. Anderson

The USPTO announced that they are having a sale.  You can save $50 per class on all new trademark registration applications and $100 on all renewals.  The Final Rule issued on December 16, 2014 announced that trademark filing fees will

be reduced.

Small Print:  Unfortunately, the discounts will not be effective in time for the holidays.  The new discounted fees don’t kick in until January 17, 2015.  In the good news department, the discounts viagra efficace will continue thereafter!

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