Google's Fair Use Defense to Authors Copyright Infringement

Last month, Google got the vote for “most popular technology brand,” beating out Facebook, Twitter, and Apple. Google has grown to include its own specialized search tool for Maps, News, Shopping, Videos, etc.

A few years back, Google started Google Books and made an agreement with several research libraries to scan books for its Google Books Library Project. It has scanned 12 million books over the course of the project.

The website for Google Books describes that you can view a few “snippets” or sentences of copyrighted books and you can fully view a book that is out of copyright. The website states:

“The Library Project’s aim is simple: make it easier for people to find relevant books – specifically, books they wouldn’t find any other way such as those that are out of print …”

Members of the Authors Guild are alleging that Google scanned their copyrighted books without authorization. Last week, a federal judge gave the ok for the members of the Authors Guild to sue jointly (a class-action lawsuit). So now thousands of authors can sue Google since the class includes: “all U.S. authors and their heirs with a copyright interest in books scanned by Google as part of its Library Project.”

Google’s plans to create the world’s largest digital book library could come to a halt depending on whether a court agrees with the authors that Google’s e-books infringed their copyright protection. But wait a minute. Google may have a claim to “fair use” of these works under copyright law, which Google will reportedly use as its primary defense in this case.

The line between fair use and infringement can get blurry. The doctrine of fair use, section 107 of copyright law, says that certain purposes can qualify as “fair” such as scholarship, research, etc. Section 107 also says a court should consider:

1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes

2. The nature of the copyrighted work

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole

4. The effect of the use upon the potential market for, or value of, the copyrighted work.

The outcome of this case will undoubtedly have effects on the future of ebooks and digitization. It’ll be up to a judge whether Google’s actions qualify as fair use, but what’s your opinion based on what you know about the case and considering the fair use factors?

Charlie Sheen Trademark Infringement and Right of Publicity

For $250, guests of a New York Gentlemen’s Club could eat sushi off the body of an almost-naked woman in the “Charlie Sheen Room.” At least until Sheen’s lawyer sent the Cheetahs Gentlemen’s Club a cease and desist letter threatening a lawsuit for millions, which the club complied with.

The “Charlie Sheen Room” featured Sheen’s name and images. It sounds a little creepy, but hey, to each his own. The president of the company owning Cheetahs, Sam Zherka, denied that it used Sheen’s name to promote the business. Rather, he says that the strip club used the name for comical effect and felt that it would help, not harm, Sheen’s reputation.

Sheen apparently did not appreciate the effort. Sheen’s lawyer, Marty Singer, reportedly commented: “You can’t use any celebrity name to promote a business without permission. They had no right to use his name.”

Sheen’s lawyer likely relies on the right of publicity laws in California. California Cal. Civ. Code Section 3344 states:

“Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent…shall be liable for any damages sustained by the person or persons injured as a result thereof.”

Although Zherka says that the purpose of using Sheen’s name and images did not include promoting business and customers did not visit the club to see the “Charlie Sheen Room,” Sheen may have had a good argument. Sheen’s reputation may not be the best, but his controversial reputation has helped attract attention and profits. In 2011, Sheen set a new Guinness World Record for the “Fastest Time to Reach 1 Million Followers” on Twitter and his nationwide tour “My Violent Torpedo of Truth/Defeat is Not An Option” sold out in 18 minutes.

We will never know which way a court would have ruled in this case, but it seems like Cheetahs took the smart route by taking down its unauthorized use of Sheen’s name and images from its VIP room.

Gucci Trademark Infringement Against Guess

After three years, the Gucci v. Guess trademark infringement battle finally ended earlier this month when Gucci received a settlement of $4.7 million in damages (Gucci initially demanded $221 million). The judge’s words: “Over the past three years, the parties have put in countless hours and spent untold sums of money, all in the service of fashion — what Oscar Wilde aptly called ‘a form of ugliness so intolerable that we have to alter it every six months.’”

Ever since the end of the case, the web has been abuzz with talk about what this decision means for future trademark disputes and how it relates to the now-infamous Louboutin v. YSL lawsuit. In that case, a judge ruled that Louboutin could not protect its red-soled shoes from use by YSL based on the idea that denying an artist the use of a certain color is too restrictive. Louboutin appealed that decision, but the appeal is still pending.

The Gucci v. Guess case echoes aspects of Louboutin v. YSL because one of the marks that Gucci alleged that Guess copied was its green-red-green color stripe pattern. Additionally, Gucci claimed that Guess copied its “quatro G” pattern of interlocking G’s. Along with the settlement mentioned above, the judge awarded a permanent injunction, which means that Guess is now barred from using the “quatro G” pattern, the green-red-green color pattern, and other square G marks on Guess merchandise. Gucci reportedly says that it will file similar cases in Italy, China, and France.

It’s possible that this case could lead to stricter restrictions in the fashion industry with respect to using a similar pattern to another brand. However, it doesn’t seem that a win for Gucci signals a sure victory for Louboutin on appeal. While Louboutin disputed the use of the color red, Gucci argued against the use of a striped pattern of color. It’s unclear whether this would make a difference to the district court judge that decided the Louboutin case, but the fact that Guess used a similar color pattern and not just a solid color does seem to make the two cases distinguishable. It also gives less weight to the idea of artistic freedom to use a certain color because it involves a specific pattern.

A judge could decide though that the use of the red-sole deserves trademark protection based on public recognition and secondary meaning associated with the red-sole (partly thanks to “Sex and the City”). Louboutin continues to fight for protection against similar use and it will be interesting to see the outcome of the case after appeal.

Ipad Chinese Proview v. Apple Trademark Update

So what’s new in Proview vs. Apple? If you remember from our earlier blogs, since late 2011 the two companies have engaged in a trademark dispute over the iPad name. Proview Technology, a now bankrupt Chinese manufacturer, registered the trademark “iPad” in 2001. Apple released the iPad in 2010 and states that it purchased the rights to the “iPad” trademark in 10 countries from Proview in 2009. Apple paid Proview around $55,000 for purchasing the trademark, but Proview later demanded $10 million for Apple’s use of the name “iPad” in China.

Proview says that it still retains the right to the trademark in China because when Apple purchased the trademark in 2009, it dealt with Proview Electronics (Proview’s Taiwanese affiliate) and not Proview Shenzhen (which it claims owns the Chinese trademark). Thus, Proview did not honor the agreement to transfer the trademark right to use in China. Until Apple paid up, Proview threatened to request custom officials to cease the import/export of Apple iPads into China. In February, a Chinese court ruled that Apple distributors should stop selling the iPad in China and authorities began removing the Apple iPad. A Shanghai court denied Proview a preliminary injunction and allowed continued sales of the iPad in Shanghai.

However, Apple claims that it was led to believe that Proview Electronics had the right to transfer trademark ownership of use in China. Additionally, prior to bankruptcy in 2010, Yang Rongshan served as the chairmen and chief executive officer for all Proview’s entities. A judge hearing the case in the High Court of Hong Kong sided with Apple (Proview appealed), but the Beijing National Copyright Administration recognized Proview as the rightful owner of the iPad trademark in China even after the 2009 transaction.

Earlier this year, Proview filed the case in a California Superior Court, but a judge dismissed the case. A spokesperson for Apple previously said that Apple feels that Proview is “unfairly trying to get more from Apple for a trademark we already paid for.” Now, the two companies are participating in out-of-court settlement talks. Earlier this month, Apple offered Proview a settlement (supposedly $16 million), which Proview said is too little.

Top Trademark Firms Cohen IP Law Group, P.C.

We are proud to announce that Michael N. Cohen of Cohen IP Law Group, P.C. has again ranked in the 2012 edition of Intellectual Property Today magazine survey for its Top Trademark Law Firms . The law firms are ranked according to the number of U.S. trademark registrations issued in 2011 where the firm or attorney is listed as the legal representative on the registration. This is the third year in a row that Cohen IP Law Group, P.C. has received this honor.

Cohen IP Law Group, P.C. is a premier boutique intellectual property law firm specializing in complex trademark prosecution and litigation matters in addition to other intellectual property transactions and litigation. Our firm has litigated successfully against some of the largest law firms in the world at a fraction of the cost. Michael N. Cohen is highly regarded in the trademark community and has been interviewed by the BBC, The Wall Street Journal, and other news sources to discuss intricate matters of intellectual property.

Great Article About INTA (International Trademark Association)

http://www.forbes.com/sites/jesscollen/2012/05/10/265/

Tupac Hologram Copyright and Intellectual Property Issues

Most of you have probably heard about the Tupac hologram at the Coachella Music Festival in California over the weekend. If you haven’t…read the news, there was a Tupac hologram at the Coachella Music Festival over the weekend. Now that’s out of the way, why is this important? First, it was a great post-mortem performance along side Dr. Dre and Snoop Dogg which can be seen here.

Tupac hologram copyright

Second, in addition to the incredible technical feat of the hologram, which was a collaboration pushed by Dr. Dre and done by Digital Domain Productions and AV Concepts, Pandora’s box blew up with speculation of resurrecting great performers like Jim Morrison and Michael Jackson for possible tours.

So what does this mean? IP issues run amok. Where do we begin? Essentially it can be broken down into copyright law and right of publicity. Namely, the creators of the hologram would need to obtain a license of the music that was performed. Most likely AV Concepts obtained the rights from ASCAP for that, nothing too unusual there. However, the creation of the hologram, which we believe was an original recreation of Tupac’s movement (rather than just a copy of footage from one of Tupac’s prior videos) would be a copyright owned by AV Concepts or whomever created the hologram.

But the biggest question is the right of publicity which would be the threshold question. Right of publicity laws are state laws, and in California Cal. Civ. Code Section 3344 states:

“Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent…shall be liable for any damages sustained by the person or persons injured as a result thereof.”

Therefore, Dr. Dre and AV Concepts had to get consent from the executors of Tupac’s estate which is controlled by Afeni Shakur, Tupac’s mother who was apparently thrilled with the end result. So although obtaining consent to a celebrity’s likeness to be used with products is nothing new; posthumous hologram acts for live performances places a new intellectual property spin the likes of which we’ll probably see more of. Now if we can just get Dr. Dre to bury the hatchet and get Eazy-E to come back, how epic would that make up be?