Ask Dr. Copyright…

April 30th, 2013

copyright question Dear Doc:

I used to have “rabbit ears” on my TV. On stormy nights, I had to stand “just so” near the left ear to see channel 17, but other than that, it worked just fine. Then the electronics companies and the gub’ment told me that I needed “digital” TV or cable. Now, I like Leave It To Beaver as well as the next guy, but I was not gonna pay $75 a month for that stuff! So I went and got a digital adapter, plugged in my rabbit ears, and quicker than you can say, “Gee Wally!” I had… SNOW. And glitches. And buzzing sound. A whole lotta nuthin’ for my trouble. Don’t get me wrong…Not having TV has saved me lots of time, but I hear there’s a new company called Aereo that will put up an antenna in a good place, link it to a digital video recorder, and let me use the whole thing on the Internet for $8 a month. Is this too good to be true? Can they really do that? How does it work? Won’t the TV stations sue them into the ground? Isn’t that June Cleaver one hot lady?

Signed,

Eddie Haskell

Dear Eddie:

You sure ask a lot of questions for a fictional character! Oh well, here goes:

The FCC, when it set up the “digital transition” for television, calculated reception as follows: “Signal strength calculations are based on the traditional TV reception model assuming an outdoor antenna 30 feet above ground level. Indoor reception may vary significantly.” If you had that kind of antenna, you were in for some great viewing. If not, well, tough luck.

Aereo is a company that has developed a tiny (postage stamp-sized) digital television antenna. They put thousands of them on panels and mount them on buildings where the digital TV signal is strong and clear. Then they link each antenna to a multi-tuner and a DVR, and put that online on the Internet. As long as you live in an area where the broadcast signal could reach you if you had the right antenna, you can sign up for the service for $8 a month (or $80 a year). You then use your computer, tablet, or smartphone (even when you’re not at home!) You only get the stations that broadcast over the air for free (not cable channels) but in major cities, there are a lot of those. As the company president said recently, “The last time I checked, there’s no need to have Desperate Housewives or the Real Housewives of Orange County running on four channels at the same time.”

You are also correct that as soon as they heard about this, the TV stations and networks (Fox, PBS, Univision, ABC/Disney, CBS, NBC) sued Aereo in Federal Court. They claimed that the company was violating copyright by rebroadcasting their signals (see, this IS about copyright law after all!) The TV stations and networks wanted an injunction against Aereo to stop it from doing business. The District Court denied this request, finding that a prior decision in favor of the cable operator CableVision, which provided a DVR service to its customers that operated on big servers, rather than on set-top boxes was legal, also favored what Aereo was doing. The TV guys filed an appeal, of course, and on April 1 (no joke) the Court of Appeals for the Second Circuit upheld the trial court’s denial of an injunction in a 2 to 1 decision. The case will now be scheduled for trial some time in the future, but Aereo has announced that it will expand beyond the New York market to 22 more cities by July 2013. You can go to Aereo.com to see if the service will be coming to an Internet near you, so that you can finally put away those rabbit ears for good.

So there you have it. It’s likely that Aereo’s service will not be shut down by the lawsuits, because it fits an important exception written into the Copyright Law by Congress. It’s likely that many will use the service, and that Aereo will someday do deals with the cable operators to expand the programming that they offer, thus increasing the price. It’s likely that you will still be able to watch Leave It To Beaver. And yes, Eddie, that June Cleaver is one smart, beautiful woman, who can cook a mean pot roast while dressed in pearls and high heels, while being a great mother and wife (and is WAY smarter than her husband.) Please though – no jokes about how Ward disciplines his younger son.

Yours truly,

The “Doc”

aero antenna

– Lawrence A. Husick, Esq.

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Just How Much Can an Artist Appropriate and Get Away With — Plenty!

April 30th, 2013

copyright So, do you know what an “appropriation artist” is?  It’s an artist who uses preexisting objects or images to create new works of art.  While you might guess that appropriation artists keep many a copyright lawyer employed they also sell their works for large sums of money.  Take for example, Richard Prince, perhaps, the most famous appropriation artist.  In a recent exhibit of Rastafarian images referred to as the “Canal Zone” exhibit, he sold one work for more than two million dollars!  Prince didn’t create the base images for his works, rather he appropriated them from a collection of photos by Patrick Cariou, which Prince altered by “printing ‘lozenges’ over their subjects’ facial features and using only portions of some of the images.”

Patrick Cariou, who made approximately $8,000 from his book of Rastafarian photographs, believed that Prince ripped him off and sued him in federal court for copyright infringement. Prince defended himself by asserting the legal doctrine of “fair use,” which, under the U.S. Copyright Act, permits use of copyrighted works for purposes of “criticism, comment, news reporting, teaching, scholarship, or research.”  The lower court rendered its judgement in favor of Cariou holding that to qualify for fair use, the secondary use must “comment on, relate to the historical context of, or critically refer back to the original works.”   Because Prince’s works did not comment upon the original works of Cariou, the court held that Prince’s works did not qualify as fair use.  Prince, who was not short of funds, appealed.

In a complete reversal, the U.S. Court of Appeals for the Second Circuit rejected the reasoning of the District Court judge, and concluded that there is no legal requirement that the secondary use must comment upon the original work to qualify as fair use even if the use “serves some purpose other than those” cited by the statute.  The Court wrote that the requirement of fair use only requires that the new work be “transformative” and that it “alter the original with ‘new expression, meaning, or message.’”  The Court of Appeals held that Cariou’s work is “serene” and “beautiful” while Prince’s work, whch is “crude,” “jarring,” “hectic,” and “provocative,” is fundamentally different.

Here’s an example from the court’s opinion, what do you think?

Cariou
From Yes Rasta by Patrick Cariou (from the opinion)
Prince
Graduation by Richard Prince (from the opinion).

– Adam G. Garson, Esq.

Posted in Copyright, Fair Use | No Comments »

To Disclose or Not to Disclose … That is the Question

April 30th, 2013

You have conceived of a wonderful new invention and you want tell everyone, but you are not ready for the expense of a patent application.  Should you open your mouth?

Every inventor feels the tension between the need to maintain secrecy and the need to  disclose the invention.  If you are a regular reader of this newsletter, then you are aware that your sale or offer of sale, public use, or written or verbal disclosure in public can terminate your patent rights forever, with some actions such as public use or sale terminating your rights immediately.  But to develop your invention, you cannot avoid having to disclose.  You have to present written proposals. You have to demonstrate the invention.   You have to consult with others – designers, engineers, manufacturers, business consultants, lawyers, investors and lenders.  How do you talk to other people about your invention, including demonstrating your invention, without losing your patent rights?

You have two options: (a) bite the bullet and file a patent application, or (b) have the persons with whom you are consulting sign non-disclosure agreements.  A non-disclosure agreement is a written contract between you and the person to whom you disclose the invention.  In return for receiving information about your invention, the other person agrees to keep the information in confidence.  After signing, the other person is no longer a member of the public and owes you a duty of secrecy.  If you demonstrate the invention to that person, you are not using the invention ‘in public’ and do not immediately lose your patent rights.  If you disclose the invention to that person in writing, then your written description is not a ‘publication’ and so does not trigger the patent right termination deadlines.  If you describe the invention verbally to that person, then your verbal description does not make the invention ‘otherwise available to the public’ to trigger the running of the time to terminate your patent rights.

The other major advantage of a non-disclosure agreement is that it is immediately enforceable.  If the person who signed the non-disclosure agreement copies your product, you can file suit in court immediately. You do not have to wait the three years or so that it will take for your patent to issue.

There are weaknesses to non-disclosure agreements.  Beware selling or offering the invention for sale. Even if a person signs a non-disclosure agreement, offering to sell the invention to that person likely will terminate your U.S. patent rights instantly and forever.

There is also the problem of who signs the non-disclosure agreement.  If the other person is a corporation, the person signing the non-disclosure agreement on behalf of the corporation must have authority to sign, or at least ‘apparent authority.’  The company CEO has ‘apparent authority.’  The CEO’s secretary does not have ‘apparent authority.’  Without actual or apparent authority on the part of the person signing, the nondisclosure agreement will not protect you.  Demonstration of the invention likely will immediately terminate your patent rights.

There is also the problem of proving that your non-disclosure agreement applies to a particular disclosure.  If, for example, one of the corporation’s employees violates company policy and posts on his Facebook page: “I saw the coolest invention today” along with video of your invention, then it will very difficult to show that a similar invention in, say, a video from Kazakhstan was derived from your disclosure.  That Kazakh video likely will be prior art for your subsequent patent application and may prevent you from obtaining a patent.

Bottom line:  The safest approach is to file a patent application prior to disclosing the invention and certainly prior to demonstrating the invention or selling the product, coupled with non-disclosure agreements with the persons to whom you disclose.  You then have the best of both worlds – you avoid loss of patent rights because your patent application is already filed and you enjoy the ability to immediately enforce the non-disclosure agreement without waiting for that patent to issue.  We can help you with both your patent application and the non-disclosure agreements.

– Robert Yarbrough, Esq.

Posted in Patent, Patent Prosecution, Patent Reform | No Comments »

The Statutory Invention Registration (SIR) is No More

April 30th, 2013

USPTO Seal As of March 16, 2013 the PTO stopped accepting or reviewing applications for SIRs.  Before March 16, the SIR was a technique to notify the world of an invention that the invention owner did not wish to patent.  The effect of the SIR was to dedicate the invention to the public so that anyone could make, use and sell the invention and no one could file a new patent application for it.   SIRs became largely redundant when the U.S. moved to the system of publishing utility patent applications eighteen months after filing.

– Robert Yarbrough, Esq.

Posted in Patent, Patent Prosecution, Patent Reform | No Comments »

Ask Dr. Copyright

March 28th, 2013

copyright question

Dear Doc:

 I’ve been listening to NPR, and when they talk about Supreme Court cases, they talk about someone standing around, and how much that matters to all them old folks on the Court.  Then they complain that folks lack standing (I guess they never heard of those tall desks like old Tom Jefferson used.) Now, I can understand a bunch of senior citizens being concerned about people standing, but why does it matter to the rest of us, and why don’t they just get more chairs in the courtroom?

Signed,

Supremely Clueless

Dear SC:

NO! NO! NO! It’s not a lack of chairs, it’s a lack of standing. Let me explain…

Under the Constitution, Article III (stay with me here) our courts are only allowed to decide “cases and controversies”. That’s a way of saying that you’re not allowed to ask a court a hypothetical question, like, “If I were to shoot an arrow into the air and it came down I know not where, but, like, onto the top of my good-for-nothing son-in-law’s thick skull, would I be found guilty, or be given a medal for thinning out the gene pool?”

Courts can’t answer such questions.  The Founding Fathers wanted to be sure that judges would not have to work very hard, so they made sure that only REAL cases can come before the courts. Since judges can’t just come right out and tell folks to get out of their courtrooms, they invented this concept called “standing”.

For you to have standing, the outcome of the case must affect some right or interest of yours. You literally can’t just be a bystander. When the Supreme Court really, really does not want to answer a question, it can determine that one of the parties to the case actually never had a right to bring the case to the courts in the first place. So, let’s say that you see that Monster Corporation has just been granted a patent on a product that you want to make, right after you convince your brother-in-law to invest $1 million in your company. You can’t sue Monster to invalidate the patent because they have not threatened to sue you. Monster can’t sue you, because you have not “made, used, sold or imported” the patented product — you’ve only thought about it. See? Nobody has standing, and the courts will politely throw you out in the street if you try to bring a lawsuit.  Got it?

Good!  Now why are you just standing/sitting around reading this? Listen to your Mother…go outside and play in the fresh air!

The “Doc”

Sitting Bull and Buffalo Bill

Ok, let’s hear your comments about why this image is funny….

– Lawrence A. Husick, Esq.

Posted in Copyright, Litigation | No Comments »

Kirtsaeng Wins Before the Supreme Court!

March 28th, 2013

copyright If you’re a regular reader of our newsletter, you may recall in 2011 our writing about Supap Kirtsaeng’s legal problems when he was sued by John Wiley & Sons, Inc. (“Wiley”) for selling text books on e-bay.  Kirtsaeng, a Thai national, opened a used textbook business in 2009 to support his educational studies in the United States.  He enlisted his friends and family in Asia to buy textbooks and ship them to him in the United States for resale on e-Bay.  Kirtsaeng was later sued by Wiley – the copyright owner – in federal court for copyright infringement.  Wiley based its lawsuit on Section 109(a) of the Copyright Act, which prohibits the importation of copyrighted works created outside of the United States without the authorization of the copyright holder. The language of Section 109(a) is important.  It provides that:

the owner of a particular copy … lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy . . . .

The first sale doctrine permits owners of copyrighted works, even if they are not the creators, to resell copyrighted works without fear of lawsuit by the creators.  Copyright owners, such as Wiley, argue that the “lawfully made” language, quoted above, only applies to works that are manufactured in the United States.  Assuming that is correct, then the first sale doctrine would not apply to works manufactured outside of the country.  Therefore, Kirtsaeng’s importing and reselling of foreign purchased textbooks would not be exempted by the first sale doctrine.

At trial, the federal district court prohibited Kirtsaeng from raising the first sale doctrine as a defense to copyright infringement and as a result, the jury found in favor of Wiley and awarded it damages for intentional copyright infringement.  Since our newsletter was published, the Court of Appeals for the Second Circuit affirmed the lower court, concluding that §109(a)’s “lawfully made under this title” language indicated that the “first sale” doctrine does not apply to copies of American copyrighted works manufactured abroad.

Kirtsaeng did not take “no” for an answer and appealed the Circuit Court’s decision to the United States Supreme Court, which issued its opinion on March 19, 2013.  The Court reversed, holding that the  first sale doctrine applied to any work whether it is published in the United States or abroad. The  Court’s opinion was based largely on statutory interpretation.  Here are the highlights:

  • Section 109(a) says nothing about geography, the lower courts’ reading “bristles with linguistic difficulties”;
  • Historical and statutory context indicate that Congress did not have geography in mind when it drafted the current statute;
  • The common law “first sale” doctrine did not embrace a geographical component and, therefore, one must assume that the statutory version retained the common law given no evidence to the contrary;
  • imposing a geographical component to Section 109 would not further the constitution directive of “promot[ing] the Progress of Science and the Arts;”

Justice Breyer delivered the opinion of the Court.  If you would like to read the entire opinion, click here.

– Adam G. Garson, Esq.

Posted in Copyright, First Sale Doctrine | No Comments »

The Rush to Meet the March 16th Patent Deadline

March 28th, 2013

USPTO Seal According to a chart released by the U.S. PTO, about 26,500 provisional and non-provisional patent applications were filed on March 15, up from the about 2,500 applications that are filed on a typical day.  The reason: inventors and their patent lawyers (including us) were racing to beat the March 16 deadline.

As we have said before in these newsletters, U.S. patent law changed on March 16.  Now, after March 16, patent rights are terminated and lost forever if (a) no patent application has been filed, and (b) there has been a sale or offer for sale of the invention, a public use of the invention, description of the invention in a printed publication, or the invention is ‘otherwise available to the public.’  If you have an invention and intend to take any of these actions, please contact us first so that you do not inadvertently lose your U.S. patent rights.

– Robert Yarbrough, Esq.

Posted in Patent, Patent Prosecution | No Comments »

Terms of Service Didn’t Read

February 28th, 2013

Terms of Service If you thought reading privacy policies was a was a waste of time you were right. The Carnegie Mellon Institute calculated that it would take 10 minutes to read the privacy policies of the 75 most popular websites at the standard reading rate of 250 words per minute. The medium length of privacy policies from top websites was calculated to be 2514 words.  If you can do the math, it takes about 10 minutes to read each privacy policy. The Carnegie Mellon Institute estimated, based upon several sources, that the average American visits between 1354 and 1518 websites per year.  Assuming that you are an average Internet user, if you were to read every privacy policy on each website you visit, you would spend 25 days out of the year just reading privacy policies.  Carnegie Mellon “put a dollar amount on this massive time suck” and came up with an astonishing hypothetical cost of $781 billion per year!  According to the Atlantic, that’s more than the GDP of Florida.

It’s no wonder, that nobody reads web site privacy policies or terms of service. In fact, it’s a standard joke. Of course, because nobody reads them doesn’t mean that they aren’t important.  When you agree to a web site’s privacy policy you can be handing the web site owner your credit cards, personal information and other matters that you don’t wish to share with the public.  It’s really imperative that you insure that the web site owner protects your information. To make it easier to understand what rights you are giving up by visiting popular websites a new online project called Terms of Service Didn’t Read tries to make the process simpler. The project provides easy-to-read summaries of the privacy policies and terms of service of most popular websites. Although not all sites are rated yet, a quick visit provides some interesting observations:

Facebook

Thumbs Down: Very broad copyright license on your content.

Thumbs Up: You can give your feedback before changes: Facebook will solicit your feedback during the 3 or 7 days minimum preceding changes to their terms. However, the results are not binding unless 30% of the active users voted.

Wikipedia

All Thumbs Up – very good user policies.

Yahoo

Thumbs Down: Terms may be changed any time at their discretion, without notice to the user.

Dropbox

All Thumbs Up: Transparency on law enforcement requests and  Promise to inform about data requests.

Microsoft

Big X: Lawsuit and class action waiver. Arbitration for dispute resolution in the United States: a binding arbitration clause and class action waiver that affects how disputes with Microsoft will be resolved in the United States. This clause governs many of Microsoft’s online services – including your Microsoft account and many of their online products and services for consumers, such as Hotmail, SkyDrive, Bing, MSN, Office.com, Windows Live Messenger, Windows Photo Gallery, Windows Movie Maker, Windows Mail Desktop, and Windows Writer.

Evernote

Big X:  You cannot delete your account.

Terms of Service Didn’t Read should be required reading for anybody that uses the Internet.

–Adam G. Garson, Esq.

Posted in Internet Law, Privacy Law | No Comments »

Ask Dr. Copyright…

February 28th, 2013

  copyright question Dear Doc:

I hear that soon, many Internet users will start getting warning notices if they illegally share copyrighted materials. Is this true? What happens if I get, say, 6 of these? How do they know?

Signed,

MovieAddict

Dear Addict:

The “Doc” has been watching this gathering storm for some time now.  The “Copyright Alert System” is not a loud tone played on the radio – it’s a big brother kind of system that involves AT&T, Verizon, Time Warner, Comcast and Cablevision – the “Big 5″ Internet service providers (ISPs). They have been working with the RIAA and MPAA (which collectively help to police music and movie rights) and have worried, since Napster was a little itty bitty nuisance, that their content was getting ripped off on the Internet.

As they have explained what they intend to do, it amounts to watching all of the files that are being shared on the Net, and automatically sending nasty notes to anyone sharing what they believe is copyright-protected content.  As they have said, “Initial alerts are merely educational, letting the user know that unauthorized content sharing was detected on their Internet account.”

There are two additional “alert levels” for repeat sharers: an “acknowledgement” that requires the recipient to fill out a form, and a “mitigation” which means that the user’s connection speed may be reduced unless he watches an informative video about piracy. A notice may be appealed if a user feels that it was sent in error, but filing that appeal costs $35.

You can find out a lot about how this all works by going by clicking here.

Of course, it’s not right to infringe copyrights, and owners of content have every right to protect their property.  It remains to be seen whether their big brother programs are accurate, or also sweep in unrelated files with similar names (maybe I just want to call my home video of my Carnival Cruise “Titanic”), fair uses such as student projects, and the like. Time will tell, but it will cost $35.

–Lawrence A. Husick, Esq.

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PAY ATTENTION: Crucial Deadline for Inventors Is Looming!!

February 28th, 2013

USPTO Seal We’ve said it before, but there is an absolutely crucial patent deadline coming up on March 17, 2013 due to a change in U.S. patent law.  Contact us immediately to avoid complete and permanent loss of your patent rights if (a) you have an invention for which you have not yet filed a patent application, and (b), you performed any of the following actions within the last year:

1. You used the invention in public.  That means that you used the invention where someone who does not owe you a duty of secrecy could see you use it.

2. You sold or offered to sell the invention to anyone.

3. The invention was ‘otherwise available’ to the public.

Do any of these situations apply to you?  Contact us immediately.  There still is time to protect your invention before March 17.

Even if the above situations do not apply to you, how do you protect your inventions on or after March 17, 2013?  To avoid instant and complete loss of your patent rights, do not disclose your invention or use your invention where it can be seen by anyone unless that person has signed a non-disclosure agreement or otherwise owes you a duty of secrecy.  Also, do not sell or offer your invention for sale unless you have first filed a patent application.

These laws are new, so no one knows exactly how they will be interpreted; however, there are common situations that we can anticipate now to avoid tragedy later.

Employees: If you have employees, do you have employment agreements with those employees?  Do those employment agreements specify that the employee has the duty to keep company information secret, including information relating to inventions by the employee or by other employees?

Contractors:  Do you utilize private contractors, such as engineers, designers, plumbers and the cleaning crew?  Do your contracts specify that the contractor and employees of the contractor have the duty to keep company inventions secret?

Visitors:  Do visitors come to your facility?  If a visitor, say, walks into a room at your plant where a new invention is in operation, operation of the invention could be considered use of the invention in public or could be considered making the invention ‘otherwise available’ to the public, instantly terminating your patent rights.   You can avoid this result by having visitors sign non-disclosure agreements for the privilege of entering your building.  As a less-intrusive option, incorporate a non-disclosure paragraph into a sign-in sheet and require that all visitors and contractors sign the sheet.

Customers:  As noted, do not sell or offer your invention for sale until the patent application is filed.  A sale or offer of sale will immediately terminate patent rights even if the customer signed an agreement to keep the invention secret.

The patent world changes on March 17, 2013.  Please protect yourself so that you do not lose your patent rights.

– Robert Yarbrough, Esq.

Posted in Patent, Patent Prosecution | No Comments »

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