Garcia v. Google, Inc.

Garcia v. Google, Inc.

“While answering a casting call for a low-budget amateur film doesn’t often lead to stardom, it also rarely turns an aspiring actress into the subject of a fatwa.” is the mild understatement of the Appeals court decision in Garcia v. Google, a case rooted in the anti-Islamic “film” that sparked riots in the middle east a few years back. Ms. Garcia was one of the unfortunate soles who was originally hired to act in what seemed like a vanity project of Mark Basseley Youssef. The film project was originally entitled “Desert Warrior” and while it is not clear what it was originally about, what is known is that the footage was reedited and dubbed over with new dialogue. The resulting project was entitled “Innocence of Muslims,” and the reaction to it is thought to have resulted in over 50 deaths.

Following the riots and subsequent calls for her death, Ms. Garcia filed eight DMCA take down notices with Google claiming infringement of her copyright. The trial court ended up denying Ms. Garcia’s request for relief on the basis that it did not believe she had any copyright interest in the film to base her claims on. The Appeals Court however did find that Ms. Garcia she retained some degree of copyright based on her acting and perhaps more notably that her contribution was not a work made for hire, as she was not an employee, nor was there a written work-made-for-hire agreement, but rather was provided to Basseley as an implied license – a license that was exceeded when the performance was severely chopped-up, redubbed, and placed into a new context.

The three take aways from the opinion are the facts that the Court made a great deal about the amateur status of the filmmaker preventing the Court from viewing the relationship between actor and company as one of an employer/employee – this conclusion highlights the importance of getting a written work-for-hire agreement in place especially in more personal and vanity productions. Additionally, the opinion demonstrates that while an implied license may be given much leeway, there is a limit as to how distorted a project can be from the original intent. Finally, citing Stanislavski and Sanford Meisner, the Court noted that an actor’s contribution to a performances not merely a reflection of the written page (Otherwise, “every shmuck . . . is an actor because everyone . . . knows how to read.” Sanford Meisner & Dennis Longwell, Sanford Meisner on Acting 178 (1987).), but is also of sufficient originality to establish authorship.


Minnesota Do-Gooders Club

I recently had the opportunity to sit-down with Wendy and Matthew with the Minnesota Do-Gooders to talk about copyrights and trademarks. They did a great job of putting my ramblings together into a pretty comprehensible program.


Top 10 Lists

Trademark top tensI was recently asked by an attorney friend about using the phrase “The Top Ten Reasons…” in relation to a top ten list (á la David Letterman) that she was planning on using in a marketing piece.  This wasn’t a comic work meant to mimic the David Letterman version, but rather a serious piece meant to provide useful information regarding estate planning strategies.  So the question to me was whether she could use the “Top Ten List” format without running afoul of Letterman’s intellectual property.

My response was that there was a very low probability of risk – the term “Top Ten List” is descriptive and therefore not generally protected by trademark unless it has acquired such distinctiveness that the term is pretty much only associated by one source.  While, in certain contexts it is undoubtedly a very famous list, it is hardly the only place in which you can find people putting together lists of things in quantities of 10.

Further, there would need to be a showing that her use was so similar, that consumers were likely to be confused as to the source – i.e. people looking to enjoy a late night comedy show routine, were somehow distracted by her “Top Ten Reasons” and were confused as to the source of the information thinking it came from David Letterman. While it’s always important to make sure that you aren’t infringing other’s IP rights, it’s equally important to not let the use of descriptive terms by others prevent you from describing your own goods and services and sharing what you have with the world.


Sometimes They Don’t Quite Get It.

Courts sometime get the right answer for the wrong reason. In a recent case in the US Tenth Circuit (Enterprise Management Limited, Inc. v. Warrick); the court discussed a diagram of a basic idea which was the basis of the defendant copying a similar diagram to explain the same concepts.    While the end result was correct in this circumstance, the reasoning used falls short.

Where concepts or ideas are being presented there is a general rule that expression and ideas are sometimes merged and therefore the copying is allowed to not allow the copyright owner to weld exclusive rights to the idea.   The Enterprise Management court articulated this by noting:

“In short, the copyright law is not a patent law: it protects the expression of ideas rather than the underlying ideas themselves. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344-45 (1991) (“The most fundamental axiom of copyright law is that no author may copyright his ideas or the facts he narrates.”) (quotations omitted). And, when a work expresses an idea in the only way it can be expressed, courts deny those expressions protection under the “merger doctrine” to avoid giving the author a monopoly over the underlying idea. See Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823, 838 (10th Cir. 1993). Conversely, when an idea is capable of many different “modes of expression,” the expression of the idea is eligible for copyright protection. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983).5”

Infringing Diagram

Original Diagram

The court analyzed a fairly basic diagram similar to what we have all seen on countless Power Point slide, comprising a series of rectangles.  Although the original was no longer in use, but a modified version using different shapes, the court held, correctly, that the diagram is protected by copyright.   The real issue in my mind is to what degree that protection extends – with a diagram based on common shapes, typefaces, and general structure the strength of the copyright protection is limited, as the protection is limited by the limited methods in which to express the idea.  The diagrams are virtually identical, excepting for the border around the title page.  While that the court was correct in its’ holding, the court seemed to indicate it would find the same even of the diagram had included a significant deviations to the aesthetic elements, instead basing the similarities on the use of boxes and other common design elements and implying the only acceptable method of circumventing this thin copyright was to use an entirely different diagramming method in affect allowing the copyright holder to lay claim to entire concepts based on the charting tool used.   Using the court’s analysis, parties wishing to lay broad claims to concepts and ideas could circumvent the merger doctrine, by going into any basic diagramming program, entering in the data and allowing the program to kick out different charts.


France – Where Everyone Has the Right to Privacy

Article 9 of the French Civil Code provides that: “everyone has the right to privacy.”

A little while back Kate Middleton was spotted (via a long range lens) topless at a private residence in France.  The resulting photos ended up in the French magazine Closer. The ensuing outrage by the British and the French demonstrates an important issue when works of authorship cross international borders: namely, the U.S. expectations of privacy and Freedom of Speech laws are not embraced in the same ways in other nations and cultures.

For example, the French maintain some of the strictest privacy laws in world.  These laws leave little room for arguments of news worthiness.  In fact the French go so far as to prohibit “theft of personal image,” which can theoretically be used to ban the taking of photos of individuals even in public spaces.  While the U.S. states have many comparable types of laws, the extent of the French laws is illustrated by the fact that the images of Ms. Middleton are no different than what you might see on most beaches in France, however the French laws still provide little leeway for these arguments – arguing instead that this is a private matter and not for public consumption.  Similarly, the British courts have a distinctly different view of libel that favors parties making such claims.

Beyond the civics lesson, what is important to take from this is the fact that as we are in a global economy, laws of other countries may be in  play and when dealing with more sensitive topics, a few minutes of research may be beneficial in keeping you out of trouble.


Why I Oppose Amending the MN Constitution for Voter ID.

As an attorney, I feel compelled to speak up concerning the proposed Voter Identification Amendment to the Minnesota Constitution.  Putting aside the partisan political aspects of the issue for a moment, this is a bad idea.  Simple ideas sometimes have complex consequences, and in the case of voter id, the simple idea is both expensive and potentially harmful to our most sacred right as Americans.

The Minnesota Constitution was enacted in 1857.  Generally speaking, amendments to constitutions are made to accomplish things that cannot be done through the legislative process.  Unfortunately, this is not always the case in MN and the Voter Id Amendment is a prime example.   In the case of the Voter Id Amendment, some Legislators decided they had a law they wanted to pass, and rather than working the law through normal legislative channels which require the checks and balances of Executive Branch approval and judicial oversight, they are seeking to circumvent and embed the administrative practice of verifying a voter’s identity, not in the state statute or regulation, but into the state’s highest legal authority.  This is akin to the legislature deciding to put a 30 MPH speed limit into the Constitution and it is simply inappropriate.  Constitutions are documents meant to provide a framework for our governing system and to place restraints on government intrusions.  However, in the case of voter id, proponents are asking Minnesota citizens to shackle themselves to what is essentially an untested administrative procedure by including it in a document that requires a state wide vote in amend or modify.

A report from the University of Minnesota estimates that this unproven procedure for tackling a problem that is questionable at best, will cost local governments (the ones that raise property taxes) approximately sixty-three million dollars.  This is money that comes out of our pockets when local government funds are already short.  In order to implement the Amendment, entire new computer systems have to be built to handle provisional balloting, new id cards issued for thousands of people at no cost, new employees hired and training revised.   These things cost money, and in the event that the structure of this Constitutional regulation doesn’t work, instead of modifying it through legislative or regulatory process, our only means of change will be to wait for the legislature to once again place an amendment on the ballot at the next general election – this is simply not the way to do things.

When I think about the amendment, I also have to look at what it means for people’s right to vote.  While some say that voting is a privilege and it is not too much to ask for a photo, I say perhaps, but I do know that using a photo id isn’t necessarily fool-proof and without significant safeguards, requiring it may result in citizens losing out on one of their most fundamental privileges as citizens.  As of January 2012, 24,738 registered voters in Ramsey County do not have valid MN driver’s licenses or state issued ids — that’s roughly 9% of voters.  Presumably many of these folks with driver’s licenses may not have license that will comply with the Amendment or which will be difficult to use as verification of the holders identity.   Ask yourself these questions:

  • Do you have a photo id?
  • Is your id issued by the state (not a private school, nursing home, employer, etc)?
  • Did you recently move and does your id have your current address?
  • If you recently married, does it have the right address and your current legal name?
  • Do you still look like that DMV photo (weight gain/ loss, hair color, etc)?

Now ask yourself if your friends, family members and neighbors have the same.   Problems are sure to arise with the proposed procedure.  By entombing this legislation in the Constitution, Minnesotans would be handcuffing themselves to a single method of accomplishing a goal and, ironically, restricting their own future ability to free themselves from problematic outcomes.

While we can debate whether requiring a photo id is needed and whether there is a real problem being solved, I have heard no real arguments as to why a constitutional amendment is the best way to address the issue.   While I don’t believe voter id laws are needed, I appreciate that concern for the integrity of the voting process; I just don’t think that the administrative procedures of verifying identity belong in our constitution.


Of Flesh Eaters and Copyright

Have you ever seen Night of the Flesh Eaters?   Probably, though you probably know it as the 1968 classic Night of the Living Dead.  Now ask yourself why have you seen it (besides it being a fun little romp about zombies) – because it has been pervasively shown on broadcast television and other media for decades.   While we now view this film as a classic and all that air play is only respect to the genre defining classic, when it came out it was simply a B movie.  The reason it received so much initial air time, however, probably had more to do with the formalities of copyright than the artistic vision of George A. Romero and John Russo.

Up until March 1, 1989, in order to maintain a copyright in a work a notice of copyright was required somewhere on the work – in films this usually consisted of a listing on the title card showing the copyright symbol, the year, and the owner’s name.  When the film was sent to the film’s distributor it had a title card for “Night of the Flesh Eaters”, however it was decided at the last minute to change the name to “Night of the Living Dead” and the title card was changed – unfortunately no copyright was placed on the film and it was released to the public – under then current copyright law, this release caused the film to go into the public domain for free use, display, copy, and creation of derivatives without any payment to the film makers. While current copyright law no longer requires new works to have this notice (though it is still recommended), the unintentional release of the film to the public domain had an immediate impact on the pocket books of Romero and Russo, and resulted in a long term impact on American culture.

The broad distribution that resulted from local TV stations being able to show the film at no cost likely broadened the film’s appeal and thus created a bigger cult classic, which in-turn allowed Romero to cash-in on future sequels, as well as changing the mythology of the zombie from a voodoo ritual, to that of the brain dead flesh eaters we know and love today.  So when you put on that zombie outfit for Halloween or sit down to watch the Walking Dead on AMC, remember to give a little thanks for the zombie copyright of Night of the Living Dead.


Uncle Fester and Justin Bieber

Coogan in The Kid

Well before before Uncle Fester shaved his head and joined the Addams Family, the actor Jackie Coogan was appearing in silent film alongside Charlie Chaplin.  Unfortunately for Jackie, his parents spent all the money from his work and when he  turned 18 he had little to show for his time on stage and screen.  The spectacle  of a child star of Coogan’s stature being exploited in that way led to a California Law requiring that child performers be paid in such a way that around 15% of their pay is automatically placed into an untouchable trust fund that only they will be able to access when they turn 18 – many states around the country now have similar laws and they are typically referred to as Coogan Laws.  It is estimated that Bieber is worth around 100 million dollars.  While its impossible to know how much of that is held in a Coogan Trust, it is likely that upon his 18th birthday upwards of 15 million will available to him to spend freely and without oversight – not a bad birthday present.

While contracting with minors is always an issue when considering the enforceability of the agreement,  you also have to be aware of whether your state requires a portion of funds to be paid directly to a trust fund.  This is a matter handled on a state by state basis – presently performers in California, New York, Louisiana, and Arizona are subject to the trust requirements.  Other states have addressed the concern raised in the Coogan case by affirming that the earnings of the child are the child’s property (not the parents as was the argument of Coogan’s mother and father), and that the parents have a fiduciary obligation to safeguard the property.


Linsane Trademarks

Speicman Fail - A speciman of a mark in actual use is required for trademark applicaitons, but this one only shows the mark superimposed on the goods.

Since February 7th the Trademark office has received eight trademark applications for the term LINSANITY.   The products identified in applications range from clothing, jewelry, and sport drinks, to eyeglasses and cell phone covers.  The only problem is only one of these applications is on behalf of the Knick’s Jeremy Lin (Serial 85541426); and it is a basic premise of trademark law that you can not register the name of a living person without that person’s written consent.  Perhaps more concerning, however, is the attempt of people who know him to cash in on his name – one of the applications is by Roger Montgomery for the purpose of “Business management of sports people” (Serial 85542514) and who the Washington Post identifies  as Lin’s own agent.

While some of the applicants may try to argue that it is purely coincidental that they want to register the name in the middle of Mr. Lin’s hot streak (“by Linsanity, I mean LENS -Anity for eyeglass lens – really I did!”), presumably, the trademark examiners will call them out on this blatant attempt to cash in on Mr. Lin’s new found celebrity; but if they don’t, Mr. Lin’s attorney will be able to oppose the registration on his behalf.


The Copyright Dilimma for Pinterest

In case you’ve been living under a digital rock, one of the currently hot internet properties is Pinterest is a social media platform that allows users to skim pictures from third-party websites and to post them along with a link back to the original website that the image originally appeared on – sort of like a much more streamlined & robust method of saving bookmarks/favorites.   Unlike Facebook or some of the other social media sites which encourage users to come-up with their own content, Pinterest is largely based on a model of users creating collections of photos from third-parties.

This model creates a bit of a dilemma for the copyright holder because it is in essence a model based on using their photos to create traffic to someone else’s website.  Proponents of Pinterest argue that it isn’t really diverting traffic, but rather increasing traffic to business who may have images represented on user’s “boards.”   This is similar to the argument that websites solely consisting of framing (placing other websites’ content into a frame appearing on the framer’s website) used a few years ago in cases like Washington Post v. Total News.  While the Washington Post case settled, the complaint argued a variety of claims including copyright infringement and misappropriation.  On the flip side, in cases involving images that are part of search engine results, courts have found that the use of the smaller images constituted fair use under the Copyright Act (e.g. Kelly v. Arriba Soft Corporation336 F.3d 811).   Notably, however, cases like Kelly were very specific to the smaller inline images and found that that reasoning did not apply to larger images or images that were independently framed or linked to – arguably what Pinterest does.

So where does this leave Pinterest?  Quite simply – in a bit of a bind.  While many businesses will not care that their images are being used, as it can mean a real increase in their business, other copyright holders may be less enthralled since the same benefits are not bestowed upon them from the appropriation of their intellectual property.  While Pinterest can initially rely on the DMCA safe harbor (assuming they can continue to comply with take down notices), at some point they will be challenged on grounds that the site is designed for the purposes of facilitating infringement and therefore the safe harbor does not apply.  In my opinion this is a real dilemma – if Pinterest is to survive long term and generate real income they will need to distance themselves from a purely appropriation model of content development.

Additional reading:  Pinterest: Is It A Facebook Or A Grokster?

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