THResq points us to a fun, but thorough, law journal article by law student Benjamin Arrow, looking at whether or not Duff Beer, from the Simpsons, is protectable as a trademark in the real world (or you can go directly to the paper) (pdf). The analysis is actually more complex than you would think, noting that as you shift from the fictional world of the Simpsons to the real world of beer production, the issue switches from being a trademark issue to a copyright issue, where the beer is a form of a derivative work on the copyrighted expression known as the cartoon of Duff Beer.

Fox and The Simpsons’ creator, Matt Groening, developed the
idea for the fictional brand, Duff. Therefore, when a real-world
manufacturer puts out a product by the same name, one might
think that it has stolen Fox’s idea and that, as a matter of equity,
intellectual property law ought to furnish a remedy. But
intellectual property law does not protect ideas in the abstract.
While a real-world Duff manufacturer may have taken more than
just an idea, it is difficult to articulate how much more. Part of the
reason it is so difficult to conceptualize the injury Fox suffers
when another producer introduces a Duff Beer to the marketplace
stems from the fact that Duff Beer is a fictional product sold in a
fictional universe under a fictional brand name. Fox’s injury looks
very different when we suspend our disbelief and plunge into the
fictional world of Springfield, accepting the fictional reality as our
own and when we pull back, remind ourselves that The Simpsons is
nothing more than a cartoon and view Duff Beer as one element of
a vividly imagined work of animated fiction. As a consequence of
this puzzle of perspective, Fox suffers a different intellectual
property injury depending on our vantage point.

An analogy to Internet law helps explicate the puzzle. Writing
on the problem of perspective in this area of the law, Professor
Orin Kerr posits that “whenever we apply law to the Internet, we
must first decide whether to apply the law to the facts as seen from
the viewpoint of physical reality or virtual reality.” Kerr terms
the perspective from inside virtual reality the “‘internal
perspective’ of the Internet” and the point of view of an “outsider
concerned with the functioning of the network in the physical
world rather than the perceptions of a user” the “external
perspective.” In attempting to apply law to the Internet, our
perception of who is doing what to whom is not a mere cognitive
tool for conceptualizing difficult problems, Kerr contends.
Instead, our selection of perspective is itself outcome
determinative, because “[b]y choosing the perspective, we choose
the reality; by choosing the reality, we choose the facts; and by
choosing the facts, we choose the law.” While Kerr suggests
that courts may dismiss this problem of perspective as “a minor
skirmish in the ‘battle of analogies,’” he notes that courts “already
choose perspectives when they apply law to the Internet” without
realizing it.

While this may just seem like a fun, little intellectual query, the second paragraph above highlights why it’s actually pretty important. For nearly a decade, we’ve been pointing out the problems that occur when you take laws from the real world and pretend you can just apply them naturally into a virtual world. The same thing applies here to some extent. In this case, it’s resolved via copyright law, since the creation of Duff Beer may be protectable under copyright in the real world, and any such beer would be derivative. Trademark, on the other hand, which would apply in the fictional world, does not apply in the real world, since there’s no real “use in commerce” of a product known as Duff Beer.

Either way, the paper is a fun read, and actually raises a series of issues that are important and worth thinking about when discussing how the real world law applies on the internet in general and in wider “virtual” worlds.

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Techdirt Mike Masnick

Last year, we wrote about a ridiculous situation in which the Association for Information Media and Equipment (AIME) threatened UCLA, after discovering that the school had set up an online video service, that let UCLA professors put up legally licensed video clips so that students could watch them from their computers. AIME claimed that UCLA’s license did not allow for such uses. UCLA claimed this was fair use. After initially taking down the videos, UCLA decided this was worth fighting over and put the videos back up last March. At the time, we thought a lawsuit from AIME would come quickly, but apparently it took until December. UCLA recently filed a motion to dismiss the lawsuit, setting up a few reasons why — including the claim that, as a state university, it has sovereign immunity from copyright lawsuits and, also, that AIME is not the copyright holder in question, and thus has no standing.

However, as Kevin Smith (not the filmmaker we’ve been talking about recently, but rather someone at the Duke University Library) notes in the post above, there is an interesting claim in the motion, where UCLA suggests that the breach of contract claim (which comes under a state law) is preempted by federal copyright law. If I remember the details correctly (and you copyright lawyers out there, feel free to correct me), with the Copyright Act of 1976, that law basically superseded any state laws that covered the same grounds. Mostly, people have thought this meant that state copyright laws effectively were wiped out (though, as we’ve seen, some awful remnants of those laws remain).

However, what UCLA seems to be arguing, is that federal Copyright Law could also wipe out portions of state contract law as well, if those aspects are covered by copyright. It’s a creative way of saying that you can’t contractually give up aspects of copyright, such as fair use. Now, there are some areas where it’s known you can’t give up what copyright says via contract. You can’t, for example, contractually give up your termination rights (which let you take back a copyright you assigned to someone decades later). Also, it’s not quite the same thing, but the recent ruling in the Augusto case has suggested that there are situations where you don’t give up copyright exceptions (in that case, first sale) — but it’s distinguished by the fact that the court effectively said there was no license on promotional CDs (despite a stamped on “license” text).

So rather than relying on something like that, UCLA seems to be relying on preemption of state contract law, to say that even if you signed a license agreement, fair use rights can still apply. It’s an interesting point. I’m of a mixed opinion on whether or not it’s a good thing, however. I am a fan of such copyright exceptions, and would be worried if we started to see fair use “licensed away” in more situations. However, would that also mean that we couldn’t license away other aspects of copyright law? Would that cause trouble for certain types of licenses, like Creative Commons licenses?

I’m guessing that the court may skip over this issue entirely, in that it can just hand UCLA a victory on the sovereign immunity or lack of standing claims and just move on without addressing this issue. However, I do expect that it will show up again in other lawsuits at some point.

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Techdirt Mike Masnick

Via Gizmodo we learn of the hilarious claim that China Central Television’s news broadcast recently showed some imagery purported to show Chinese military training exercises. The only problem is that some folks recognized the footage as coming from the Hollywood movie Top Gun, starring Tom Cruise. You can see the screenshots below, comparing the CCTV news footage (on the left) with the identical frame captures from Top Gun:

Of course, I can only assume that China Central Television did not have a license to show Top Gun on TV. What are the chances that someone in Hollywood decides to sue?

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Techdirt Mike Masnick

We’ve been covering the mass copyright infringement lawsuits being filed in the US over the past year or so. Most of them aren’t designed with the idea of actually taking anyone to court, but mainly to threaten people into “settling” (i.e., paying up) to avoid the lawsuit. A “concerned citizen” hoping to remain anonymous has taken the time to put together an amazingly detailed spreadsheet cataloging all of these lawsuits. He claims that he will continue to keep it updated. One stunning point from the data? Between January 1, 2010 and now, 99,924 “John Does” have been sued in this manner. If I don’t hurry up and publish this post, I imagine we’ll have already passed 100,000.

While many of the John Doe cases have been dismissed, the spreadsheet shows that 70,914 have not yet been dismissed, so there are plenty to go. When 100,000 people are getting sued anonymously by just a few firms, at what point do the courts and politicians realize that something is broken with the law?

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Techdirt Mike Masnick

Back in November, we wrote about how the lawyers behind US Copyright Group, Dunlap, Grubb & Weaver, were being sued for extortion, conspiracy and fraud. While we doubted the lawsuit would get all that far, it did seem to have a slightly stronger legal basis than similar lawsuits in the past, due mainly to the fact that the producers of Uwe Boll’s Far Cry screwed up with the registration of the copyright, meaning that many of those sued could not be hit with statutory damages — and yet DGW falsely claimed they could. While defenders of these pre-settlement “pay up or we’ll sue” campaigns like to claim that it’s not extortion if the party demanding the cash has a legitimate legal claim, it’s a lot harder to make that case when they don’t really have a legitimate legal claim, but simply say they do. That sounds a lot closer to extortion.

Ars Technica notes that DGW has filed a scathing response (though, oddly, Ars Technica does not provide the actual filing). Apparently, there are two key arguments made by DGW: First, that the guy suing, Dmitriy Shirokov, has no right to sue DGW, because they’re just the lawyers “simply doing their job,” and you can’t sue for that:

“Although an attorney may be accused of defrauding opposing parties, knowingly committing discovery abuses, lying to the court, or purposely and maliciously defaming another individual, if it takes place during the course of litigation, the conduct simply is not actionable,”

That’s quite a claim, in large part because it’s misleading. DGW is playing a little game of misdirection, and assuming everyone else is stupid (a dangerous game for lawyers to play). The main problem is that the actions that DGW is being sued over here are not actually “during the course of litigation.” The complaint is about the “pay up” threat letter, which is not directly a part of the litigation, but an attempt to avert litigation. To claim that demanding cash based on a factually incorrect legal claim is immune from a legal complaint seems like a stretch. If DGW’s legal theories are correct here, it would mean that a lawfirm could resort to outright, blatant extortion, just so long as it somehow connected it to the threat of litigation. That’s a plainly ridiculous outcome that I find hard to believe a court would buy.

Separately, DGW says that no “harm” has come to Shirokov since he hasn’t actually settled. That, again, seems like a questionable tactic. If true, the only way that someone illegally or unfairly threatened could sue is if they first give in to the threat. It seems that just the threat itself, if it truly was made maliciously with false information for the purpose of getting people to pay up, should constitute clear harm in itself.

Of course, not all DGW’s claims seem that crazy. On the question of racketeering and other criminal complaints, DGW points out that individuals can’t bring criminal complaints, only the government can. This point goes in DGW’s favor, and I’m a bit surprised that Shirokov’s lawyers focused on criminal statutes in their complaint. However, the complaint covers plenty of areas that aren’t criminal in nature, and there’s no reason why the case shouldn’t move forward on those issues.

Finally, DGW, in what appears to be becoming standard practice for the firm, is demanding sanctions against Shirokov and his lawyer for filing the lawsuit in the first place. Talk about obnoxious. DGW, in this filing, appear to be claiming both that they can effectively do whatever the hell they want to threaten someone if he doesn’t pay up (so long as they can claim a loose association with ongoing litigation) — and that anyone who then claims that this amounts to a form of fraud or extortion should be punished. In other words, it seems that DGW believes it can act beyond the law in the course of litigation, and anyone who sues them over it should be sanctioned.

Hopefully, a court sets DGW straight on all of that. I’m still not convinced this case will get very far. I’d be surprised if courts, while sympathetic to those charged in such “settle or we sue” lawsuits, went to the other extreme and claimed that the efforts behind them directly broke the law. I’d be thrilled if I’m proven wrong on this, but it just seems unlikely.

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Techdirt Mike Masnick

charliebrown was the first of a few of you to send in the recent news of how Universal Music had decided to donate over 200,000 master recordings to the Library of Congress:

The American people, through the nation’s library, will receive a post-holiday gift of vintage sound recordings from one of the world’s largest recording companies. The Library of Congress and the Universal Music Group (UMG) announced today the donation of more than 200,000 historic master recordings–many long out-of-print or never released–to the Library’s Recorded Sound Section, which has more than 3 million sound recordings in its collections.

Totaling in excess of 5,000 linear feet, UMG’s gift is the largest single donation ever received by the Library’s audio-visual division and the first major collection of studio master materials ever obtained by the nation’s oldest cultural institution. Among the collection’s thousands of metal and lacquer discs and master mono tapes are released and unreleased versions of recordings by such seminal artists as Louis Armstrong, Bing Crosby, Tommy Dorsey, Billie Holiday, the Andrews Sisters, Connee Boswell, Jimmy Dorsey, the Mills Brothers, Guy Lombardo, Ella Fitzgerald, Fred Waring, Judy Garland, and Dinah Washington, among others.

All of that sounds nice and surprisingly altruistic from an operation like Universal Music… until you read the fine print. That’s because missing from the LoC’s excited announcement is the fact that Universal Music retains the copyright on the recordings, and is basically just handing off the physical archival costs to the American taxpayer. It will let the LoC stream the music — which is better than nothing, but it’s not nearly as impressive as actually donating the copyrights as well.

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Techdirt Michael Ho

Don’t get me wrong.  I don’t mind the RIAA.  As a technology and internet lawyer who makes my living in and out of court trying to protect the intellectual property rights of my clients, I generally support the RIAA’s efforts to keep people from stealing music and infringing the copyrights of others—although the organization can get a bit too overzealous at times.  I’m starting to wonder, however, if perhaps the RIAA’s overzealousness is starting to cross the line into outright delusion, stupidity, or both.  They certainly keep their lawyers busy though.

Now the RIAA is making veiled legal threats against ICANN over the introduction of a “.music” domain name.  The RIAA’s deputy general counsel, Victoria Sheckler, informed ICANN that such a gTLD “will be used to enable wide scale copyright and trademark infringement.”  Actually, “informed” is too nice a word given the rest of her letter: 

We strongly urge you to take these concerns seriously….We prefer a practical a practical solution to these issues, and hope to avoid the need to escalate the issue further.

As you’re probably aware, “escalate” is legalese for “sue your ass.”  But come again?  How does a .music domain name ”enable” infringement?  As I recall, the RIAA has sued an awful lot of people over the years who have downloaded music from sites with .com and numerous other extensions.  So how does a .music gTLD change that in any way? 

If anything, a .music domain name might help consolidate all of the infringers in one place, kind of like a canyon with the snipers located above, and thereby allow the RIAA’s lawyers to pick them off as they see fit.  Of course, outright infringers would likely avoid using such an obvious domain name anyway and stick to the names they’ve been using for—oh, I don’t know—maybe the last decade or so before a .music name was ever contemplated.  (But then again, as an attorney I’ve learned never to underestimate the stupidity or chutzpah of people.)  And of course, the RIAA seems to forget that there are a ton of amateur musicians and bands out there who have no problem with people downloading their music for free and would readily take the opportunity to register a .music domain name.

In terms of potential trademark infringement, I have no doubt that many cybersquatters would try to register the .music names of famous bands and musicians.  But most won’t get very far given the ICANN domain name dispute resolution policy.  Or the even more far-reaching Anti-Cybersquatting Consumer Protection Act.  So the RIAA needs to chill.  What they really seem to be trying to do is to get ICANN to somehow implement copyright protections or to police the .music name for infringers.  But isn’t that the RIAA’s job?  And haven’t they done it well over the years? 

I can’t believe that ICANN would, could, or ever be forced to assume such a massive compliance burden.  This isn’t a situation like Napster where there was a single website facilitating infringement (which had nothing to do with ICANN).  The RIAA is essentially suggesting that ICANN monitor an entire gTLD for the infringing activities of, well, everyone who uses it.  And even if that were possible or within the purview of ICANN’s official responsibilities (which it’s not), what’s to stop the RIAA from then trying to extend ICANN’s efforts into all of the the other gTLDs that exist…or will exist?  Slippery slopes I can deal with, but slippery cliffs are another matter.  In any instance, a lawsuit against ICANN is something that the RIAA may want to think carefully about before pursuing.  Not that they will, mind you.  Their lawyers are kept very busy indeed.

Shakespeare said it first:  “A rose by any other name would smell as sweet.”  And a domain name by any extension could smell as rotten as any other.  And if people want to use it for illegal purposes, they’ll do it regardless.  As for me, I can’t wait until that proposed ”.xxx” gTLD finally becomes operational.  I just can’t find the porn I’m looking for without it.

A case involving a photographer who posted images of the Haiti earthquake to Twitter service Twitpic only to find others claiming rights to the images opens up IP issues. How far is an image allowed to go once posted? It can be retweeted, but what rights has the copyright owner retained?

Sigh.  Although I’m not surprised–especially given this pernicious and false belief that if it’s on the internet then it must be free–it’s been estimated that 43 sites which engage in digital piracy account for about 21 billion visits per year.  That’s roughly 3 times the current population of the Earth.  As an intellectual property attorney, I always find such statistics sobering given the rampant copyright and trademark infringement which occurs on the internet.  Predictable, but sobering nonetheless.  And no doubt the public hates those lawyers who pursue the infinitesimally small percentage of infringers that they’re able to find and sue, let alone actually stop or collect against.  The battle continues!

You’ve probably heard by now about the change that Facebook made to its Terms-of-Service (“TOS”) policy last week regarding the company’s “perpetual use” of a user’s information even after the user terminates his/her Facebook account.  It prompted an outcry, with many users threatening to quit the service.  Facebook has now done a complete about-face and announced, for the time being at least, that the old TOS was going to be reinstituted while the company resolves “the issues that people have raised.”

The change focused upon the license provision of the TOS.  Facebook deleted a sentence from its old policy that the company could not claim any rights to a user’s content once that person’s account was closed.  Instead, the company replaced it with other language giving it the right to store and retain copies of a user’s content indefinitely.  It must have been a slow news day, because this really shouldn’t have created the firestorm that it did.

First, at no time did Facebook exercise any actual ownership claims over its users’ content.  It never did.  Copyright remained with the user, where it’s always been.  So people need to relax.  Some of the articles and blog postings that I’ve seen are trying to read much more into this change then there really is (or was). 

Also, even under its broad license provision—which is hardly unusual—people need to be a bit more realistic about their own content.  Facebook simply has no interest in using the picture of you and your German Shepherd playing together on the lawn or in the song you strummed on your guitar one night for your friends.  To put it bluntly:  Get over yourself.

In many ways, this is a tempest in a teapot.  However, when you’re the biggest social networking site at the moment and are growing by about 4 to 5 million users per week, even small changes to a TOS can take on a life of their own.  Mark Zuckerberg, Facebook’s CEO, characterized the reason for the change this way:

One of the questions about our new terms of use is whether Facebook can use this information forever. When a person shares something like a message with a friend, two copies of that information are created—one in the person’s sent messages box and the other in their friend’s inbox. Even if the person deactivates their account, their friend still has a copy of that message. We think this is the right way for Facebook to work, and it is consistent with how other services like email work. One of the reasons we updated our terms was to make this more clear.

In reality, we wouldn’t share your information in a way you wouldn’t want. The trust you place in us as a safe place to share information is the most important part of what makes Facebook work. Our goal is to build great products and to communicate clearly to help people share more information in this trusted environment.

Facebook’s position is not unreasonable.  While users are perhaps rightly concerned that this seemingly small TOS change could have a far greater impact then intended, let’s not go too crazy with anti-Facebook sentiment just yet.  I’m all for privacy and protecting people’s personal information—it’s a continuing theme throughout this blog.  It’s an important issue and people should be concerned.

But does anyone seriously think that if Facebook did something stupid—such as taking an expired user’s picture or other content and using it in an advertisement—the backlash against it wouldn’t be swift and severe?  While the company would be able to point to its TOS claiming that it had the right to do what it did, it would still become a public relations fiasco, with prominent bloggers leading the “I told you so” charge and the refrain, “just because you have the right to do something doesn’t mean you should.”  Facebook obviously understands that.

While the company has achieved critical mass and its 175 million users gives Facebook considerable muscle at the moment, internet users are a fickle bunch.  The next social networking site is only an e-mail address and password away.  And if that site were to offer comparable or better services and a more user-friendly TOS that gives its users more control over their content, word would spread as only word can on the internet.  Every internet business is acutely aware that its next competitor may be a garage or college dorm room away.  So Facebook will be cautious in what it does, as its reversion back to the old TOS demonstrates.

Zuckerberg also correctly notes that these issues are “difficult terrain to navigate and we’re going to make some missteps.”  As a technology lawyer, I can attest that they are indeed difficult issues to address and require a great deal of thought.  So while this may have been a bit of a misstep from a public relations perspective, it’s also a “sensible” one given some of the concerns that the company has.  While Facebook is going to slow the TOS amendment process down somewhat, it will still move forward.  It will be evolutionary, not revolutionary. 

As an attorney who both drafts and litigates TOS policies, there are some practical lessons to be learned here.  At the very outset of a website’s inception, I often—but not always—tell my clients to go for the broadest possible content license from its users when the TOS is first posted, unless there are reasons against it (which there sometimes are depending upon the type of entity that is collecting the content and the type of content being collected).  Better to have it and not need it, than to need it and not have it.

This way, users know at the very outset (or at least are given the opportunity to know) what licensed rights the company has in their content.  Based upon all of the TOSs that I’ve drafted through the years, I’ve found that in many instances it’s only after a site catches-on and becomes popular that people start to pay really close attention to how they’re content is being used.  And the site may never catch-on so it may never become an issue.  Also, as a general matter, few users read a TOS when it’s first posted anyway.  And since so many sites use them, there tends to be ”TOS fatigue.”  They don’t exactly make for a stimulating read no matter how plainly they’re written.

It’s only later when a company announces its inevitable changes to the TOS that users then pore over the language—which is what happened to Facebook.  If after the site has been up-and-running, a company wants to restrict what it does with a user’s information, i.e., disseminate or use it less broadly than originally intended, few users would raise an eyebrow.  After all, people don’t often complain that a company isn’t using their personal information broadly enough.  How would users even know?  If the TOS is drafted properly, the company would have the right to use as little information as it wants anyway.  It’s the broader uses that get a company into trouble. 

While I realize that this is much easier said than done and that a company may not really know what it needs when it first starts doing business (Facebook, after all, started out as a site while Zuckerberg was at Harvard), I prefer to err on the side of caution and ask for broad user license rights that a company may never need, as opposed to too few rights and then run the very real risk of alienating users if the company needs to ask them for more.  At that point, everyone is paying attention.  But it depends on many factors and can be a bit of a “balancing test.”  So if you’re in the process now of putting together your site, develop the TOS carefully and think it through.

Perhaps that’s the plus side from the Facebook story.  People are indeed paying attention to these issues more and more.  So companies do need to be careful.  All it takes is one blog post and . . . .