February 3, 2013
This semester, Loyola is delighted to be hosting Professor Justin Hughes, who is visiting from Cardozo School of Law. Professor Hughes is currently participating in an online forum on Robert Merges' book, Justifying Intellectual Property. You can find his first post here.
October 25, 2012
On Monday, Oct. 29, the U.S. Supreme Court will hear arguments in Kirtsaeng v. John Wiley & Sons, Inc., a case that promises to resolve (finally) whether the first-sale doctrine applies to copyrighted works produced and sold abroad and then imported into the United States. It is no small surprise that this is an open question, as the current U.S. copyright act has been in place since 1976. And the copyright first-sale doctrine is older than that.
Compare the situation in Europe, where the European Court of Justice has long ago established that exhaustion (corresponding to the first-sale doctrine) occurs with full effect throughout the European territory, notwithstanding the national character of most European IP rights. A copyright holder which sells a book in France may not use its German copyright to block the importation or resale of that book in Germany.
But not so with respect to IP protected goods first sold outside of Europe: these goods may be blocked by the IP right holder when introduced to the European market. Thus, it is said that the Europeans practice regional exhaustion (first-sales within European cut off IP rights), but not international exhaustion (IP right holder retain rights with respect to goods first sold outside Europe).
October 8, 2012
If only Lytton Strachey had written this biography of Steve Jobs. He would have punctured Jobs, ridiculed his dirty feet and preachiness, his unshattered conviction of his own primacy. Not that Jobs wasn't a great figure: he certainly was. But there is something off-putting when a biographer lets his subject declare (and so establish) his own importance. The temptation in reviewing this biography is to assess the subject and not the book. And the subject is certainly compelling. Jobs' accomplishments are familiar, his eccentricities less so. And so there is sordid attraction exercised by his abandonments, his eating disorders, his cruelty.
Isaacson relishes his access to Jobs and produces a work Larry King would envy. Certainly Jobs' foibles are presented -- but simply because a biographer has a license to report 'warts and all' does not discharge his critical responsibility. Isaacson does not judge Jobs. At best, he reports -- in various fragments -- the partial judgments of Jobs' many friends, colleagues and acquaintances. Joan Baez is perhaps the most honest of all: she has little to say beyond a typifying story (Jobs is clueless) and leaves the impression that she meant more to Steve than Steve ever meant to her.
No doubt many readers of this book will search for easy recipes for replicating Jobs' phenomenal business achievements. Jobs seems to have had two running theories for Apple's success. The first account celebrates Apple's industrial design. The design story is complex -- and has deep psychological roots. Jobs learns from his father (a modest man he greatly admired) of the importance of finish, even for elements hidden from view. Design does not reflect the creator's integrity; it assures it. But design involves more than form following function -- the book is replete with stories of Jobs' rejecting engineers' design compromises that duly reflect functional concerns. The aesthetic trumps the functional in these stories (Isaacson gives no counterexamples), at times leading to stunning product, and at other times, to disappointment and delusion. In the affair known as "Antennagate," Jobs had insisted that a gorgeous steel rim surround the iPhone 4. Unfortunately, this compromised an essential function: the phone dropped calls at a higher rate. The technical solution adopted by many (and offered by Jobs) was an ugly case which, of course, masked the iPhone 4's design!
October 1, 2012
The IP provisions of the Trans-Pacific Partnership (TPP), a regional trade agreement involving the United States and 10 other Pacific Rim nations, are not merely 'TRIPS Plus;' they are also 'WIPO Plus.'
Two major multilateral copyright treaties came into force following the establishment of TRIPS: the 1996 WIPO Copyright Treaty and the 1996 WIPO Performances and Phonograms Treaty. Together, these treaties expand protection to authors and performers in the digital environment. As WIPO products, these two treaties, known together as the WIPO Internet Treaties, reflect fairly broad international consensus, in contrast to the more contentious 'TRIPS Plus' norms promoted by the United States and Europe in various bilateral and regional settings. The now abandoned Anti-Counterfeiting Trade Agreement (ACTA) was an attempt to construct TRIPS Plus broadly, outside of the WTO.
The WIPO Internet Treaties establish new categories of unlawful activity, but they do not require the imposition of criminal penalties on infringers. For example, Article 11 of the WIPO Copyright Treaty requires signatories to "provide adequate legal protection and effective legal remedies" against persons who circumvent technological measures for the protection of copyrighted works. While the WIPO Copyright Treaty does not prevent a signatory from imposing criminal liability in these cases, neither does it mandate it.
September 24, 2012
True, we know little about the current form of the draft Trans-Pacific Partnership -- a regional trade agreement to involve the United States and ten other countries (Australia, Brunei Darussalam, Canada, Chile, Malaysia, Mexico, New Zealand, Peru, Singapore and Vietnam) -- but we can be certain that TPP will include an Intellectual Property chapter with a battery of TRIPS Plus features. We can get a hint at the IP content of an eventual TPP -- or at least at the negotiation goals of the United States -- by examining the IP provisions of recent U.S. Free Trade Agreements such as those concluded with Peru, Panama and South Korea. Or we could look back at the recently concluded ACTA, now abandoned by the European Union, one of ACTA's principal sponsors. Or we can look at the text of a leaked draft that may or may not be accurate. So let's apply all three approaches to create an amalgam for conversational purposes -- and explore the criminalization mandates found in the leaked TPP draft.
Article 15.1 of the leaked TPP draft echoes TRIPS Article 61: "Each Party shall provide for criminal procedures and penalties to be applied at least in cases of willful counterfeiting or copyright or related rights piracy on a commercial scale." Ignore for a moment the insertion of the phrase "or related rights." The TPP leaked draft tracks the first sentence of TRIPS Article 61 word-for-word, including the problematic "on a commercial scale" limitation. It also replicates the language found in the recent FTA entered into with South Korea.
September 20, 2012
Among the many changes to the international IP landscape wrought by the WTO's TRIPS Agreement was the unprecedented mandate to impose criminal liability for the most egregious acts of trademark and copyright infringement. Criminal sanctions add to civil and administrative remedies to create a climate of observation of IP rights throughout the WTO space. In anticipation of its joining the WTO -- and in response to pressure from the United States -- China amended its domestic criminal law to provide for the possibility of imprisonment or fines in certain instances of IP infringement as a complement to civil and administrative remedies. Nonetheless, there remains continuing concern held by IP holders about the effectiveness of China's IP enforcement. Much of the current 'TRIPS-plus' program (including the discarded ACTA and the emerging Trans-Pacific Partnership [TPP]) is intended to indirectly influence China with regard to IP enforcement.
In 2007, the U.S. brought a three-prong challenge to China's IP system within the WTO dispute settlement system. The central part of the dispute involved a U.S. assertion that China failed to give full effect to the TRIPS criminalization mandate. Article 61 of TRIPS obligates WTO members to provide "for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale."
July 23, 2012
The Anti-Counterfeiting Trade Agreement (ACTA) reached the end of the road on July 4, when the European Parliament rejected the treaty, by a stunning vote of 39 for and 478 against (with 165 courageous MEPs abstaining). The profound reversal is all the more remarkable given that the governments of all EU member states had earlier supported ACTA (reflected in a unanimous approval of the EU Council in December 2011). Throughout, ACTA continued to enjoy the support of the EU's administrative arm, the European Commission.
ACTA was promoted as an articulation of higher IP enforcement standards by the 'like-minded' First World states (chiefly the United States, Japan and Europe) that control the greater stock of the world's valuable intellectual property. There was a wide range of objections to ACTA, but the greater concerns expressed in Europe was its potential disregard for due process and its potential inconsistency with Europe's strong privacy rights. While ACTA may ultimately come to life (upon ratification of six signatory parties), it has little practical import in the absence of European participation.
March 26, 2012
Apple's lawyers woke up last month to discover that its China-based iPad trademark litigation with Proview had spilled over to California's courts. On February 17, Proview sued Apple in state court in Santa Clara county, asserting that Apple had defrauded Proview of its IPAD trademarks registered in Europe and in key Asian markets. The California iPad litigation is not a trademark infringement case (Apple's U.S. rights to the iPad mark are not challenged) -- rather Proview disputes Apple's ownerships of the various foreign IPAD marks registered by Proview. Proview urges that its assignment of these marks to Apple be rescinded, due to what it considers to be Apple's fraud. With that said, the California litigation forms part of the larger conflict between the two firms -- which has occupied courts in Hong Kong and Shenzen, China -- and so reflects Proview's grand strategy to cloud Apple's claims to the iPad marks, either by resort to law or by subjecting Apple to public embarrassment. And here lies a tale of Apple's over-cleverness, in approaching Proview in the guise of IP Application Development Limited, a stealth UK company whose name's initials conveniently spell out "IPAD."
The iPad has developed into one of Apple's most important products, now accounting for 26 percent of Apple's gargantuan sales and defining a new category of computing device. The iPad trademark is thus one of Apple's most valuable assets. And so it seems difficult to recall that leading up to Steve Jobs's January 2010 introduction of the device, there was much fascination -- and much mystery -- as to what it would be called. When Steve asked his fans to welcome a "truly magical and revolutionary product," few could conceive how commonplace the term iPad would shortly become in our everyday vocabularies.
February 19, 2012
On January 31, in yet another Transatlantic beer conflict, Europe's General Court upheld the determination of the European Trademark Office (OHIM) to deny the trademark registration of "Victoria de Mexico", a long-established beer brand from Mexico. Case T-205/10. Grupo Modelo, the owner of Victoria de Mexico, launched the Victoria de Mexico brand in the United States in 2010 and hoped to replicate this success in Europe. It shall not be. The European trademark application for "Victoria de Mexico" was rejected, due to the successful opposition of a rival Spanish beer, known as "Victoria". The Spanish Victoria has been marketed since 1928, and has held trademark registrations in Spain and Europe since 1994 and 2002 respectively.
Article 8(1)(b) of the European Trademark Regulation states that a trademark shall not be registered in the event of an opposition by a prior trademark proprietor where "because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected . . ."
The General Court upheld the Trademark Office's finding that the proposed "Victoria de Mexico" mark would cause a likelihood of confusion, including a likelihood of association, with the existing "Victoria" brand.
The General Court noted that the two marks -- "Victoria de Mexico" and "Victoria" -- would apply to the same product: beer. Given the identical product space, the likelihood of confusion is considerably heightened. In examining the two marks for similarities, the General Court, following European precedent, divided its analysis into three parts: visual, phonetic and conceptual. Further, the Court explicitly considered the perception of the marks by two idealized European beer consumers: one who understands Spanish (or another Romance language or even -- perhaps -- English) and one who does not. The challenge of protecting traditional trademarks, rooted in particular national languages, which now function across the multilingual European market is deftly explored.
February 6, 2012
This op-ed, which discussed the implications of the Supreme Court's decision in Golan v. Holder on the public domain, originally appeared in the Feb. 6, 2012 edition of the San Francisco Chronicle.
If you celebrated Martin Luther King Jr. Day by watching the "I Have a Dream" speech on YouTube, you broke the law. Or at least that's what the Martin Luther King Jr. estate contends. It claims that if you want to legally watch a video of the Rev. King's copyrighted speech - one of the most important speeches in our country's history - you need to pay its foundation $10.
Instead of providing for sharing such important moments, our government has been complicit in endorsing a vision of copyright law in which nothing is free for use by the public. Recently, the same King foundation demanded that the federal government pay $800,000 to use King's words and image on the memorial statue of him in Washington, D.C. Rather than asserting the importance of this monument for our culture and its status as a public, nonprofit use of his name and words, the government caved.
Read the complete op-ed in the San Francisco Chronicle.
March 14, 2011
Shyamkrishna Balganesh, assistant professor of law at the University of Pennsylvania Law School, presented "'Wrongful Copying': Flexibility and Pluralism in Copyright Law" during Loyola's IP Theory Colloquium.
March 3, 2011
Recently there have been reports that the Tolkien estate has fired off cease and desist correspondence to Steve Hillard, the Texas-residing author of a self-published book called Mirkwood. Mirkwood is apparently a fictional work, perhaps Tolkienesque, in which J.R.R. Tolkien is a character. It appears that the gist of the assertions (which are reportedly asking that the book be enjoined and destroyed) is that it is an unauthorized commercial exploitation of Tolkien's name and likeness; in other words, a violation of his rights of publicity. This claim seems extremely weak, and it's surprising that it would even be asserted.
First, the decisional law and many statutes have pretty clearly established that one doesn't have a property right in his or her life story. The same can be said as to fictional works including a "real" person as a character, at least if they are not held out as being true (and even the small line of cases drawing that line are questionable). Some plaintiffs have argued that a work that has nothing to do with the person whose persona is used becomes a "commercial exploitation" of that persona. But books, films, songs, works of art, etc. are not the same as T-shirts and coffee cups. They are works of expression--speech protected under the Constitution. (A football videogame is currently being challenged, in part on an assertion that it is just a product, not "speech." See my colleague Jennifer Rothman's recent post about oral argument in that case.) Courts in different jurisdictions have used various approaches to address tension between the relatively new right to control commercial uses of persona that are not false endorsements. Most of those approaches should favor almost any expressive use that is not an advertisement pure and simple, although one of them---the most antagonistic to freedom of expression---looks at the elusive "primary intent" of the expressive defendant. The "Mirkwood" book doesn't appear to be being held out as true, and appears to be highly expressive and "transformative" (one of the tests applied in this context). The Tolkien estate should lose on that basis.
But their claim is weak for at least two other reasons. First, many states' laws, especially covering a right of publicity after the death of the person portrayed, expressly exclude from liability speech works such as books or films. In fact, if the estate were to assert the application of Texas law to this dispute, that law has such an exclusion: "A person may use a deceased individual's name, voice, signature, or likeness in: (1) a play, book, film..." Texas Property Code Section 26.012. But the dispute may not even have to reach that clear defense. The majority rule as to whether the right of publicity survives death is to look to the law of the state of domicile at the time of death of the celebrity. Mr. Tolkien lived in England when he passed away in 1973 (long before the descendible right of publicity was officially recognized in most states). England does not recognize a right of publicity, let alone a descendible one that survives death. See, e.g., Cairns v. Franklin Mint, 292 F.3d 1139 (9th Cir., 2002) (Princess Diana domiciled in England at time of death--no right of publicity claim under California deceased celebrity statute) (note that decision also affirmed a $2 million+ award of attorneys' fees to the defendant). Hence, a Texas court, if this dispute were to get that far, should toss this claim out at an early stage on a similar basis, too.
We all love Tolkien and his imaginative books. I loved the books and the films, and can't wait for the new The Hobbit films, in production now. I happily pay for them, and will continue to do so. He was a genius, and his heirs deserve to benefit from that. But he is also iconic and forever intertwined with certain types of fantasy literature. That he is now a character is such a work should be celebrated--not threatened with Sauronian attacks and destruction!
February 28, 2011
Professor Molly S. Van Houweling of the UC Berkeley School of Law presented "Touching and Concerning Intellectual Property" at Loyola's IP Theory Colloquium.
February 15, 2011
Today the Ninth Circuit will consider a First Amendment defense to Electronic Arts' (EA) use of former and current college players' identities in a popular video game. The case once again raises the issue of a conflict between the First Amendment and the right of publicity - a state law that protects the name, likeness and other indicia of identity of a person from being used without consent. Because this right limits what others can say, or put in a comic book, or a commercial or even a news broadcast, it raises a host of First Amendment issues. In particular, the district court held that EA had no First Amendment defense because the use of the players' identities was not transformative. The district court adopted a very narrow reading of transformativeness - one that appears to limit a First Amendment defense to circumstances in which a player's appearance and information is significantly altered, such as turning a player into a "half-human, half-worm," as one comic book did with the identities of two well-known musicians.
It is no surprise that such a narrow reading of transformativeness in the right of publicity context has caused uproar among major newspapers, television networks and movie studios. If courts do not consider the broader context of the use in a transformativeness analysis, then realistic portrayals and references to athletes, celebrities and anyone else may not receive First Amendment protection.
As a First Amendment matter, the transformativeness test seems ill-equipped to handle disputes between free speech and the right of publicity; the narrow gloss that the district court put on transformativeness sets a dangerous precedent that the Ninth Circuit will hopefully strike down. But whatever test the circuit ultimately adopts, it's not clear that EA has a great First Amendment defense. In contrast to the fantasy sports leagues, which are tied to the performance of actual players during a particular season, the EA video games do not need to be linked to particular players' identities. They may be more successful commercially if they are, but the functionality of the games does not depend on their realism.
This case on remand, however, may not ultimately turn on First Amendment protections. Although many of the briefs in the case focus on alternative First Amendment tests that could be used - other than transformativeness - to evaluate free speech limits on publicity rights, there are other significant conflicts in the case that have not yet been litigated. Related cases reveal that the college athletes signed their publicity rights over to the NCAA. Moreover, the NCAA owns the copyrights in the televised games. The NCAA therefore arguably had permission to license the use of the images and names of the college athletes. The legitimacy of the implicit and explicit assignments of publicity rights to the NCAA by college athletes will likely be the next chapter in this on-going and hotly contested dispute.
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