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 . . . .

When I heard the Author’s Guild claim that Amazon’s new Kindle 2 text-to-speech feature violated an author’s copyright, all I could first think of was . . . good grief.  And being a lawyer with a good stable of Yiddish terms, the phrases “oy vey” and “meshugenah” came to mind also.  This nifty feature allows the Kindle to read the e-book’s text to the user in a computer-generated voice.  But Paul Aiken, the Guild’s Executive Director, stated very matter-of-factly:  “They don’t have the right to read a book out loud.”  

There’s something inherently silly about this statement which makes me want to unequivocally proclaim: “That’s ridiculous!”  After all, when you buy a book, you certainly have a right to read it out loud, whether to yourself, your children, your colleagues, or to the friends in your book club.  This is a “fair use.”  Is it really that different if a machine does it for you—at least in this limited instance?

You probably already know that you don’t have the right under copyright law to publicly perform a literary work.  You can’t, for example, hold a public gathering open to all and begin reading salient portions of a book out loud for all to hear solely for the purpose of disseminating it (and for no other reason).  This would almost certainly constitute infringement.  And you also couldn’t record yourself reading the book out loud to your children or friends and then sell or give away the recording.  That would be infringement also.

Aiken, however, isn’t raising the public performance or the recording issues (at least not directly).  Rather, he’s claiming that the Kindle’s speech feature creates a “derivative work.”  This seems like a bit of a stretch, but not a wholly unreasonable one.  As I’ve said before, intellectual property law is a highly nuanced area of practice, and many courts don’t see eye-to-eye on these issues.  Easy answers are usually elusive, even though common sense may compel a rush to judgment.  Let’s take a look at the issue.  Under the Copyright Act, a derivative work is defined as:

A work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.

17 U.S.C. § 101 (emphasis added).  At first blush, it doesn’t seem to me that a device which reads a book’s text out loud to a person who lawfully possesses the copy would meet the “original work of authorship” test. 

For example, it makes sense why translating a book from one language to another is a derivative work.  It takes a certain degree of deliberate judgment and choice on behalf of those translating a book for a different audience to convey what the author is trying to express.  This would meet the minimum level of creativity needed for originality.  But that’s not the case here with the Kindle.  (For the moment, I’ll sidestep the more difficult question of whether automatic translation software creates a derivative work.  If the Kindle was translating the book AND then reading it aloud, it would present a more complicated issue.)

But the originality question here is a deceptively simple one, and some of the analyses I’ve read so far—in their somewhat understandable quest to show that common sense should dictate that the law respond with a resounding, “NO” in this instance—overlook subtle distinctions which need to be analyzed carefully.

Michael Kwun of the Electronic Frontier Foundation takes the position that there’s no way a derivative work could be created due to the originality requirement.  While he may ultimately be correct in the result, his analysis fails to take into account several factors.  For example, he confidently cites the case of Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 964 F.2d 965 (9th Cir. 1992), for the proposition that a derivative work “must incorporate a protected work in some concrete or permanent ‘form,’” which he argues that the Kindle’s audio feature fails to do as no recording is ever made. 

While the Galoob court stated this, it also noted that, “[a] derivative work must be fixed to be protected under the act . . . but not to infringe.” (emphasis in original).  Thus, in order for it to be copyrightable, the derivative work has to be fixed, but if it infringes it doesn’t have to be—yet it must be in some “concrete or permanent form.”

If this distinction seems fleeting to you, you’re not alone.  Kwun fails to note that other courts have disagreed with the 9th Circuit’s approach.  For instance, in Lee v. Deck the Walls, Inc., 925 F. Supp. 576 (N.D. Ill. 1996), an Illinois district court expressly rejected this rationale:

Respectfully, the Ninth Circuit’s determination of a dual definition (1) “risks that courts will naively apply this broad definition to find activities infringing that are more properly viewed as altogether beyond the scope of copyright,” . . . and (2) ignores the definition of a “derivative work” found in § 101, in which Congress specifically included an originality requirement.

In affirming the Lee court’s holding, the 7th Circuit (in Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997)) also found the 9th Circuit’s approach to be lacking: 

If Lee (and the ninth circuit) are right about what counts as a derivative work, then the United States has established through the back door an extraordinarily broad version of authors’ moral rights, under which artists may block any modification of their works of which they disapprove.

Moreover, the 9th Circuit seems to have significantly loosened the originality requirement for derivative works in Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988).  There the court found that a company which purchased legitimate copies of the plaintiff’s artwork and glued them onto ceramic tiles, which it then resold, was creating illegal derivative works.  This case has also been met with significant criticism by courts and commentators due to the lack of creativity and originality that such activities by the defendant actually entailed.

Other courts have also declined to follow the 9th Circuit’s approach.  In Precious Moments, Inc. v. La Infantil, Inc., 971 F. Supp. 66 (D.P.R. 1997), the district court noted:

Reading Galoob in conjunction with Mirage, however, it appears that the Ninth Circuit also relaxes the originality requirement when considering whether a work is a derivative work for purposes of infringement. Even if Galoob was correct with regard to fixation, Mirage reads the originality requirement out of the definition of “derivative work.”

Thus, while Kwun may have ultimately arrived at the correct result, 9th Circuit precedent doesn’t firmly support his position. 

Indeed, if the Precious Moments court is correct, originality isn’t even a requirement when creating a derivative work and  “open[s] the door for the most trivial of modifications to generate an infringing derivative work.”  Consequently, notwithstanding Kwun’s belief that the 9th Circuit’s standard immunizes Amazon from liability, the Kindle 2′s text-to-speech feature could potentially be “trivial” enough to be deemed an infringing derivative work under another formulation of the 9th Circuit’s approach.  As discussed below, the 2nd Circuit (where suit would most likely be brought) appears to have expressly rejected this rationale.

Moreover, there are also some practical considerations that Kwun fails to take into account.  As noted above, standards of originality vary from circuit to circuit, and Kwun makes the implicit and unsubstantiated assumption that if the Guild were to sue Amazon, it would sue in Washington state, where the 9th Circuit’s test would be applied.  This is unlikely.  As a litigator, I often wrestle with forum and venue issues and their importance shouldn’t be underestimated—it can make all the difference in the world.

While Amazon is located in Seattle, the Author’s Guild is located in New York, which is the 2nd Circuit’s jurisdiction.  The 2nd Circuit would apply its own test and isn’t bound by anything that the 9th Circuit does.  (And even though the 9th Circuit handles many intellectual property cases due to Silicon Valley and Hollywood, it’s still the most reversed circuit by the Supreme Court—about 86% in 2007—and its rationale would likely be met with considerable skepticism in New York.)  So if the Guild were to sue, it would almost certainly bring suit in a jurisidiction favorable to itself, and that’s not the 9th Circuit.

In fact, in Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir. 1980), the 2nd Circuit appears to have rejected the 9th Circuit’s questionable dual approach to derivative works:

First, to support a copyright the original aspects of a derivative work must be more than trivial. Second, the scope of protection afforded a derivative work must reflect the degree to which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material.

Thus—assuming that the court doesn’t distinguish between copyrightability and infringement (and the Lee court cites to the 2nd Circuit in this regard)—in order for the Kindle’s speech feature to be deemed non-infringing under the 2nd Circuit’s test, Amazon would have to show that: (1) the speech feature is “trivial,” even if it constitutes original expression; or (2) there is no “scope of protection” for the text-to-speech feature because even though it relies upon the author’s preexisting expression in order to generate its audio, no recording is ever made (as discussed shortly) and it therefore doesn’t affect any exclusive rights in the preexisting material.  (As the test is conjunctive, Amazon only has to show that it fails to meet one of the elements to succeed in its defense.)

It is this last point upon which the Guild appears to be focusing.  It seems concerned that this feature could somehow impact audio book sales and therefore affect an author’s ability to commercially exploit the audio aspects of the work.  Several commentators, however, have correctly noted that it’s unlikely an unfeeling, monotone computer-generated voice could ever replace an audiobook read by a live person.  I’ll take a book read by James Earl Jones any day over one read by the HAL 9000.

Another commentator, Nilay Patel, states that what the Guild is essentially arguing in a roundabout way is that while Amazon has the right to sell you the electronic version of the book, it can’t sell you a recording of the book, which the speech feature emulates.  He notes that the claim isn’t as “ridiculous as it seems.”

While Patel states that the Kindle’s “text-to-speech feature blurs the line between books and recordings,” sound recordings under the Copyright Act are defined as  “works that result from the fixation of a series of musical, spoken, or other sounds . . . .”  17 U.S.C. § 101 (emphasis added).  Fixation is absent here.  As Kwun correctly notes, the Kindle 2′s sounds are not fixed but “immediately trail away into the ether.”  So under the statute, it’s not technically a sound recording.  But that doesn’t make it a “ridiculous” claim either.

Finally, as mentioned earlier,  “fair use” would be a major—and likely successful—defense if the Guild ever sued Amazon.  Amazon would almost certainly cite the ubiquitous “substantial non-infringing use” rule from Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984).  It’s practically a staple defense in every technology lawyer’s arsenal these days.  And it may prove to be a persuasive one.  

Surely the legion of customers who may want to listen to a computer-generated voice in the privacy of their own homes should be allowed to do so, shouldn’t they?  The technology does appear to have substantial non-infringing uses along the same lines as video recorders and “time-shifting” of programs did in the Sony case.  Instead of reading to themselves, consumers are simply “voice-shifting,” i.e., letting the Kindle read to them. 

Ultimately, the Guild’s position seems like a weak claim, but not one devoid of merit.  It could have some teeth if presented in the proper context, but the Guild would have an uphill battle.  As a litigator, I enjoy a good lawsuit (yes, there are such things!) when there are interesting and significant issues at stake. 

Alas, however, Amazon doesn’t seem to think so.  At least not at the moment.  The company announced that while it was convinced the audio feature was legal and didn’t violate copyright law, it would give authors and publishers the right to determine, on a book-by-book basis, whether the audio feature would be enabled.  According to one report, Amazon may have retreated from its position due to the contracts that publishers (particularly large publishers) had with their authors over e-book rights.

Sigh.  It would have been an interesting and possibly ground-breaking case in copyright law.  And a good fight besides.  But I’m sure that the next one is right around the corner.  Hey, a lawyer can dream, can’t he? 

Fart.  Fart.  Fart.  It’s not often a lawyer gets to use that word in a courtroom once, let alone repeatedly.  But sometimes the practice of law in these modern times lends itself to some unusual—dare I say fun?—cases that are not your traditional fare.  Or perhaps I should say, “iFart,” which is a bit more apropos here.  

Flatulence—or more specifically, fart noises—is apparently big business in software today, especially for the iPhone.  Who knew?  And this story underscores the lengths that some companies will go to protect their trademarks and brands in this digital age.  It seems that two companies which make competing “flatulence noise simulation software” for the iPhone have gotten themselves into a bit of a, uh, legal stink. 

InfoMedia, which makes “iFart Mobile,” a popular novelty application for the iPhone, has filed for a declaratory judgment in a Colorado district court against Air-O-Matic (“AOM”), which makes “Pull My Finger,” a competing application which was apparently the leading fart simulation software before iFart, uh, exploded onto the scene.  A copy of the complaint can be viewed here.  I, for one, had no idea that digital fart simulation technology had advanced so rapidly.

AOM filed for a trademark on the term “Pull My Finger” at the Patent and Trademark Office (“PTO”) in December of 2008.  The application is pending.  InfoMedia alleges in its complaint that its use of the term “pull my finger” in its advertising and other marketing constitutes a “fair use” under trademark law and does not and will not infringe upon any of AOM’s trademark rights.   It also wants the court to declare that “Pull My Finger” is a “descriptive” phrase and therefore doesn’t qualify for protection.

According to letters and e-mails between the parties, in addition to using “pull my finger” in press releases, AOM has also accused InfoMedia of posting a YouTube video prominently using the term, posting false negative reviews and testimonials of “Pull My Finger” (while extolling the virtues of iFart), and spamming AOM customers on Twitter with ads for iFart.  While I’m not exactly sure what makes one fart application better than another—and my expertise is strictly limited to my own personal experiences with flatulence—these differences are apparently quite significant.

So what did InfoMedia do?  Exactly what it should have.  It beat AOM to the punch and filed for a declaratory judgment in its home state of Colorado.  Even though AOM is located in Florida, it now has to defend itself in a Colorado court.  That’s not necessarily a bad thing, but InfoMedia now has the “home field” advantage and AOM doesn’t have the option of suing in Florida.  It now has to find a Colorado law firm.

I’ve only seen InfoMedia’s complaint and attachments and not AOM’s response, so I’ll reserve my opinion on the case’s merits.  Trademark law can be quite complex anyway, and intellectual property cases in general can turn on factual or legal nuances.  If, however, this case was only about InfoMedia using “pull my finger” descriptively in some of its press releases, then it would probably have a strong case that it didn’t infringe. 

But if InfoMedia kept using “Pull My Finger” in fake testimonials and reviews and ran a deceptive ad campaign on Twitter, than AOM’s claim could be stronger.   As noted by AOM’s counsel:  “InfoMedia’s efforts have been directing at merging Pull My Finger and iFart in the consumers’ minds, so that searches for Pull My Finger pull up the iFart application.”

Of course, all of this depends upon whether or not the court finds “Pull My Finger” to be protectable.  InfoMedia has alleged that the term is “descriptive” and doesn’t qualify for registration.  So what does descriptive mean?  According to the PTO’s Trademark Manual of Examining Procedure:  “A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”

InfoMedia correctly notes in its complaint—and cites that most revered of internet sources, Wikipedia—that the term “pull my finger” is synonymous with flatulence.  The company is essentially alleging, among other things, that the term merely describes the function or feature of AOM’s software. 

So is “Pull My Finger” descriptive?  It’s hard to say.  The PTO notes that the ”great variation in facts from case to case prevents the formulation of specific rules for specific fact situations.  Each case must be decided on its own merits.”  Translation:  The court will have to make the call after carefully considering all of the flatulence-related evidence.

If the term is found to be descriptive, AOM would then have to show that the phrase has acquired “secondary meaning” in order to get it registered.  Secondary meaning is defined as “proof that [the mark] has become distinctive as applied to the applicant’s goods or services in commerce.”  In other words, ”it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.” 

Thus, AOM would have to show that customers primarily associate the term, “Pull My Finger,” with AOM and not just with the application itself.  This isn’t easy to do, especially if a product just entered the marketplace and hasn’t been in use for a long period of time, and been extensively marketed and advertised. 

So we’ll have to wait and see what happens.  The parties may very well settle and not take the risk that litigation often entails—somebody’s got to lose, after all.  I hope they don’t settle, though.  I would love to read a court opining on flatulence and fart noises.  It would be quite entertaining.  You know, a real gas.

I’m not sure whether to be amused or upset by this story, but I thought it was worth a quick post.  It seems that a petulant 19 year-old in Florida took the law into his own hands when he was told by a Starbucks customer that he couldn’t use the customer’s laptop to check his Facebook account. 

So what did this genius do?  What anyone would do, of course.  Wait a little while and check his account from home, you ask?  No, that would take too long.  And since we live in a society of instant gratification, he decided to snatch the laptop and run out of Starbucks.  Needless to say, he was apprehended in the parking lot and arrested.  Now he’s been charged with robbery (which is a felony). 

I guess when you need your hit, you need your hit.  And you won’t let something as trivial as the law stand in your way.  Just ask any drug addict.  Is Facebook really that addictive?  I haven’t yet experienced any tremors or nightmares from failing to check my various e-mail accounts, but maybe I’m just not hip enough.

While this guy is clearly an idiot, it does portend ominous things for the future.  Facebook junkies.  Social networking lifers.  Will they have entire wings in drug rehab centers or prisons for people like this?  I know it sounds ridiculous, but with social networking sites like Facebook growing by 4 to 5 million users a week, the power of the medium can’t be underestimated. 

Some people will obviously take it to the extreme.  Some always do, but it does make me wonder.  And I wonder what this guy will do when he can’t check Facebook from his prison cell.  The withdrawal pains may be incapacitating.

I know advertisers are constantly looking to determine how effective their ads are, but this story is just creepy.  Not necessarily for what it is at the moment—which seems harmless—but for what it can (and will) lead to in the not-too-distant future.  It seems that advertisers, in their never-ending quest to gather as much information as they can about you to supposedly better target your preferences, have now started to embed cameras in video screens that display advertisements.  These cameras watch you as you watch the ad.

The cameras can apparently determine—with a fair degree of accuracy—the person’s gender, approximate age range, and ethnicity (in some cases).  As a result, the advertisements can tailor themselves to the person viewing them.  Thus, according to the article, men could see ads for razors, women could view cosmetics ads, and teens could check-out the latest video game advertisements. 

The advertising industry hasn’t quite decided what to call these ads yet, but early contenders include such terms as “smart ads,” ”proactive merchandising,” “gaze tracking,” or the lengthier “face-based audience measurement.”  Sounds innocuous, doesn’t it? The article is quick to point out that the technology doesn’t identify people individually, but only the categories mentioned above. 

So it’s far from perfect.  For now.  But does anyone truly think that it won’t be vastly improved in the future?  Advanced face-tracking technology is already used by various government agencies and security companies.  How long do you think it will be until these types of ads can identify people individually, correlate and aggregate the information, and then engage in “hyper-targeting” (for lack of a better word)?

Imagine staring at an advertisement for Ex-Lax at a local mall for a few seconds only to return home and find a $5.00 off coupon waiting for you in your e-mail.  Or how about ads from Ex-Lax’s competitors, with the heading, “Constipated”?  Or better yet, how about if it’s sent directly to your cell phone or PDA, especially when you walk past a drugstore?  There’s nothing like instant gratification these days. 

Think it won’t happen?  It’s only a matter of time.  Of course, Congress or the states can step in and try to outlaw these eventual types of advertising practices (which will hopefully withstand First Amendment challenges), but there’s no indication that they will—especially given the considerable strength of the advertising lobby.  

Advertisers will undoubtedly claim that such methods will allow them to tailor their message to people who not only want their products, but need them.  I can see the pitch to Congress now during the hearings:  “Our methods allow us to deliver specifically-targeted content to consumers who will not only benefit from use of our product, but will also be given the opportunity to derive savings and . . .” blah, blah, blah.  Remember, the business of America is business, and advertising is the great facilitator of that.

And of course, the issue is never just the collection and aggregation of the data, but what happens to it, who can see it, how it’s used, under what circumstances it can be disclosed, and all of those other pesky policy questions that relate to giving an individual some semblance of control over their personal lives.  Just don’t expect any help from the advertisers.  

When I first heard about the Associated Press (“AP”) accusing Shepard Fairey, the artist who created the ubiquitous red and blue Obama poster emblazened with the word “HOPE,” for copyright infringement, the first thing I thought of was “fair use,” most notably the concept called “transformative use.”  The AP alleged that Fairey infringed its photograph of Obama when he developed his poster.

Then I read the story shortly thereafter about Fairey filing a “declaratory judgment” lawsuit in New York asking a federal court in Manhattan to “declare” that he was not infringing the AP’s photograph.  Fairey doesn’t deny that he based the painting on the photograph, but claims that it was a fair use, which is a defense against copyright infringement. 

Although I haven’t had a chance to read the complaint yet, transformative use is the principal part of Fairey’s defense.  And it’s a meritorious one that will make for an interesting legal analysis—assuming the case gets that far.  So what is “transformative use” exactly?  The Supreme Court addressed this issue most recently in Campbell v. Acuff-Rose Music, Inc. in 1994.  The Court described a transformative use as follows:

The enquiry here may be guided by . . . looking to whether the use is for criticism, or comment, or news reporting, and the like. The central purpose of this investigation is to see . . . whether the new work merely “supersede[s] the objects” of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.”  Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. . . . and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.  (emphasis added)

So the court will be focusing on to what extent Fairey’s painting adds something new to the original AP photograph, i.e., its “expression, meaning, or message” and thereby “transforms” it.  While a fair use analysis can be quite lengthy and complicated (and is very fact-specific), Fairey will certainly be able to make a credible argument that his colorful and abstract painting combined with the word “HOPE” alters and transforms the photograph’s meaning or message. 

In fact, it’s unclear to me exactly what message the original photograph would be communicating by itself.  Is Obama looking confident?  Reflective?  Poised?  Attentive?  Presidential?  It’s somewhat subjective and it will be interesting to see how the AP characterizes the picture’s message.  It’s really more a question of opinion, which works strongly in Fairey’s favor.  (And what does “hope” consist of anyway?)  So Fairey has a strong defense in this regard.  But one thing that I learned about litigation over the past 15 years or so is that it’s a very fluid and dynamic environment and can change rapidly.  Unforeseen things happen.

So in practical terms, what’s the lesson to be learned here?  Here’s the basic one:  Contacting a party or sending a cease and desist letter can be risky business sometimes.  In any type of infringement action—whether it’s patent, trademark, or copyright—notifying the other side that you believe it’s infringing on your intellectual property rights gives them the ability to go running into federal court and seek declaratory relief.  After all, you’ve just told them that a problem exists.

Your notification to them of possible infringement creates what’s called a “justiciable controversy” and can give them the ability and standing to go into court to seek a declaration that they’re not infringing, just as Fairey has done.  Of course, each federal circuit has its own rules as to what creates a justiciable controversy, so Massachusetts may use a different standard than another state—although the standards will usually not differ all that much.

So why is this a problem?  If you’re located in Boston, Massachusetts and the possible infringer is located in California, that party can now go into a federal court in California and file its action and get the “home field” advantage.  The court would very likely have jurisdiction over you.  So in addition to now having to hire counsel in California to defend yourself, you would also be forced to go there to give and take depositions and engage in other forms of “discovery.”  It can be very incovenient and expensive.  That’s the point.

This is why whenever somebody contacts me about either sending a cease and desist letter or is the recipient of one, it’s crucial to really sit down and strategize as to what your next move should be.  If litigation is a probable outcome and you’re dealing with a well-financed adversary, then it may be best to strike first and file an action in your home state where it would be most convenient for you.  (It’s been my experience, however, that many clients—especially those who have never been through the litigation process before—are somewhat leery of filing litigation first given its potential expense and duration.) 

Of course, these are general guidelines only and each situation will have its own facts and nuances that will dictate how best to proceed.  The practice of law doesn’t usually lend itself to easy answers, particularly where issues of infringement are concerned.  Many factors need to be taken into consideration.

So, Fairey did the smart thing.  Rather than wait and let the AP sue him—especially given the meritoriousness of his case—he struck first.  It will be interesting to see how things develop.  And it’s always possible that the case will settle before the court has a chance to rule.  In many instances, filing an action such as this is simply designed to show the other side that a person is serious about protecting his/her rights and that a compromise might be in everyone’s best interest.  But Fairey has a strong case.  We’ll have to wait and see.

Ask and ye shall receive.  My January 21st post discussed some of the potential legal issues that could arise by using Twitter.  Lo and behold, one just did.  And from a Congressman no less.  And not just any Congressman, but House Minority Leader John Boehner, who also happens to be the Ranking Member of the House Intelligence Committee.

It seems that Boehner could have used some of that intelligence before he twittered his network about his secret trip to Baghdad.  As he arrived in Iraq, he sent the following “tweet” from his BlackBerry:  “Just landed in Baghdad. I believe it may be first time I’ve had bb service in Iraq.  11th trip here.”  Nothing like letting people know the time and place of where you happen to be.  It’s not like terrorists would be interes—whoops.  Nevermind.

If the Ranking Member of the House Intelligence Committee can so easily and nonchalantly disclose secret information, you can only imagine what else will be coming down the pike in the near future.  While it’s unclear if any laws were broken in this instance, it nevertheless highlights the dangers of the informal nature of Twitter that I discussed in my earlier post.  Security lapses like this are just the beginning.

A common theme in my blog is that there’s just too much damned information out there about people and the various privacy concerns that it raises.  Of course, it’s hard to point the finger when people themselves foolishly contribute to the daily onslaught of information.  Facebook, like many other social networking sites, has become a clearinghouse for stupidity over the past few years and it seems like there’s no end in sight.

Take the case of Betsy Ramsdale, a teacher in Wisconisn.  It seems that Ramsdale couldn’t resist the urge of taking a picture of herself pointing a gun at the camera.  Kids, make sure you get your homework in on time!  (And no mistakes!) 

While it doesn’t appear that there was any malicious intent on her part, you have to wonder in this age of school shootings what she could have possibly been thinking.  She’s been a teacher for over a decade.  Ramsdale was placed on administrative leave while the school investigates.

This is just another cautionary Facebook tale.  There will be many others in the not-too-distant future.  If you must include potentially controversial or questionable pictures in your Facebook profile, it’s best to keep your profile private and only share it with friends you know and trust. 

Of course, there’s still no guarantee that even controversial photographs won’t be disseminated outside your network.  All it takes is one friend with a “you-gotta-see-this” mentality who sends it to somebody else and the next thing you know, it’s a news story.  So, when in doubt, just leave it out!

     For those of us who practice in the technology law field, one of the most exciting and novel areas is what’s happening in virtual worlds and with “massive multi-player online role-playing games” (“MMORPGs”).  The variety and depth of the legal issues are fascinating, and I’ll do my best to cover them in this blog and on my site.  From a societal perspective, virtual worlds and MMORPGs present a glimpse of where things are headed.  It’s not quite “The Matrix” yet, but stay tuned.  In the minds of many, this is where social networking will be heading sooner rather than later.  

     There’s a short but interesting article on wired.com regarding Congress’s apparent overreaction about the possibility of Second Life (“SL”)–or any virtual world, for that matter–being used by terrorists to launder funds.  While the article downplays the potential for such abuse given SL’s low retention and transaction rates among users, it misses the point.  Yes, for the moment our government may be overreacting as only a post-9/11 government can.  But its fears are not unfounded even if somewhat overzealous.

     First, despite the relatively “unpopulated” nature of SL and other virtual worlds, it’s foolhardy to think that their appeal won’t continue to grow—for both good and bad guys.  As of March of 2008, it’s been reported that SL has 13 million registered accounts.  While many users have more than one account and many accounts are inactive or used infrequently, the fact still remains that virtual worlds and MMORPGs are growing at a phenomenal rate.  One study estimated that this market will increase from $3.4 billion to $13 billion in 2011.  Also even in the absence of such statistics, moving from the margin to the mainstream is the usual trajectory that technology takes.  There’s no reason to think that SL and MMORPGs won’t do the same.  It just takes time.  Furthermore, despite the Wired article’s emphasis on SL’s low retention and transaction rates, there’s a reason that Congress is looking to tax virtual assets and property.  A great deal of real money is being made in the virtual world.  So it’s only logical that the government investigate the criminal implications of using these forums.  They’ll only become more and not less “populated.”

     Second, terrorists—despite their evil and depraved nature—are, sadly, quite creative.  It’s naive to think that they won’t be using virtual worlds in the same manner in which they now use the internet, e-mail, or any other technology to recruit followers, disseminate their hate, and devise attacks.  Laundering money may be at the bottom of their list, but it’s probably there.  While virtual worlds will hopefully provide a way to track and monitor such people, these technologies may nevertheless be quite appealing to increasingly savvy criminals who intend to do us great harm.  At least our govenment is asking the right questions.  Time will tell if it arrives at the right answers.