Pattishall IP Blog

June 26, 2014

Aereo’s Internet-Based Television Streaming Services May Be Wizardry, But the Supreme Court is in No Mood for Magic

Filed under: Copyright, Internet, Litigation — Tags: , , , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:17 pm

Ekhoff_Jessica_2 F LRby Jessica Ekhoff, Associate

Describing its Internet-based television streaming services, tech start-up Aereo proclaims, “It’s not magic. It’s wizardry.”[1] In yesterday’s 6-3 decision the Supreme Court disagreed, or at the very least, adopted a staunchly anti-wizardry stance.[2]

Justice Breyer, writing for the majority in American Broadcasting Cos. v. Aereo, Inc., characterized the issue before the Court as whether “Aereo, Inc., infringes this exclusive right [of public performance under §106(4) of the Copyright Act] by selling its subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as the programs are broadcast over air.”[3] Despite Aereo’s self-description as a mere equipment supplier doing no “performing” of its own, the Court held in the affirmative.

The Court analyzed the issue in two parts: whether Aereo “performed” under the Copyright Act, and if so, whether the performance was “public.”

In concluding that Aereo did, in fact, perform under the Copyright Act, the majority of the Court turned to the 1976 amendments to the Act, which were adopted, in large part, to bring community antenna television, or CATV—the precursor to cable television—within the scope of the Act. CATV functioned by placing antennas on hills above cities, then using coaxial cables to carry the television signals received by the antennas into subscribers’ homes. CATV did not select which programs to carry, but rather served as a conduit for the transmission and amplification of television signals. Before the 1976 amendments, Supreme Court precedent considered CATV to be a passive equipment supplier that did not “perform” under the Act.[4] After the amendments, to “perform” an audiovisual work such as a television program meant “to show its images in any sequence or to make the sounds accompanying it audible.”[5] CATV thus “performed” the shows it transmitted because it both showed the television programs’ images to its subscribers, and made the accompanying sounds audible. Over a strong dissent authored by Justice Scalia[6], the majority found that, because its services were so similar to those once offered by CATV, Aereo also “performed” under the post-1976 definition of the term.[7]

Having determined that Aereo’s services constitute a performance under the Copyright Act, the Court next turned to the issue of whether those performances are public. Aereo argued its services do not constitute public performance because whenever a subscriber selects a program to watch, Aereo places a unique copy of the show in that subscriber’s folder on Aereo’s hard drive, which no one other than that subscriber can view. If another subscriber wants to watch the same show, she will receive her own copy of the program in her own folder from Aereo. The Court dismissed this argument, finding the “technological difference” inconsequential in light of Congress’s clear intent to bring anything analogous to CATV within the scope of the Copyright Act’s requirements. Under the post-1976 Act, an entity performs a copyrighted work publicly any time it “transmits” a performance. A performance is “transmitted” when it is communicated by any device or process beyond the place from which it is sent, whether the recipients receive the transmission at the same time and place, or at different times and places.[8] Aereo therefore publicly performs a copyrighted television program each time its system sends a copy of that program to a subscriber’s personal Aereo folder.

The majority characterized its holding as a “limited” one, and was careful to emphasize that its decision does not apply to other new technologies, such as cloud-based storage and remote storage DVRs. But with a slew of amici curiae predicting the decision could have a catastrophic impact on the tech industry, there are surely some who will take no comfort from the Court’s assurances. Aereo, unfortunately, may not have a spell to resurrect itself.

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Jessica Ekhoff is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Jessica’s practice focuses on trademark, trade dress, copyright and false advertising litigation, as well as film clearance, media and entertainment, and brand management.

[1] https://www.aereo.com/about

[2] http://www.supremecourt.gov/opinions/13pdf/13-461_l537.pdf

[3] American Broadcasting Cos. v. Aereo, Inc., No. 13-461, slip op. at 1, 573 U.S. __ (2014).

[4] Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968); Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U.S. 394 (1974).

[5] 17 U.S.C. § 101.

[6] Justice Scalia argues that Aereo does not “perform” because it is the subscriber, rather than Aereo, who selects the program she wishes to watch, which in turn activates the individual antennae Aereo has assigned to her for the purpose of viewing that program. This means it is the subscriber who is doing the performing, since she is the one rousing Aereo’s antennae from dormancy and calling up a specific program to watch. Justice Scalia went on to note that although he disagrees with the majority’s interpretation of “perform,” he agrees that Aereo’s activities ought not to be allowed, either because Aereo is secondarily liable for its subscribers’ infringement of the Networks’ performance rights, or because it is directly liable for violating the Networks’ reproduction rights. If future courts fail to find Aereo liable under either of those theories, Justice Scalia advocates relying on Congress to close the loophole. Slip Op. at 12.

[7] Slip Op. at 8.

[8] 17 U.S.C. § 101.

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September 30, 2013

The Likely Impact of a Federal Government Shutdown on the United States Patent and Trademark Office, Copyright Office, and Federal Courts

Filed under: Copyright, TM Registration, Trademark (General) — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:10 pm

By Belinda Scrimenti, Partner

Like many areas of commerce to be effected in the United States, the threatened government shutdown – currently scheduled for midnight on Tuesday, October 1, 2013 – will impact trademark owners, copyright applicants, and federal court litigants.  Immediately available information suggests that a brief shutdown would have little impact, but the impact of a longer shutdown is uncertain.  We will keep current status information posted here.

Patent and Trademark Office

The United States Patent and Trademark Office (“USPTO”) has announced that, in the event the October 1, 2013 shutdown comes to pass, it will remain open and will continue to operate as usual for a period of as much as four weeks.  The USPTO is able to keep its doors open because it has enough available reserve fee collections  to remain in operation until that date.  Should a shutdown occur and continue longer than the four-week period, the USPTO has advised that it “would shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions.”  The USPTO has advised that it will continue to post information on its website as it becomes available.  The agency’s plan for an orderly shutdown are available on page 78 of the United States Department of Commerce’s shutdown plan.  http://www.commerce.gov/sites/default/files/documents/2013/september/2013_doc_lapse_in_appropriations_plan_9_27.pdf

Copyright Office

The United States Copyright Office has not issued any public release about its operations during a shutdown.  Like all agencies, it will be required to follow Office of Management and Budget procedures outlining an orderly shutdown, which will leave only “exempt” (i.e., essential) personnel in place.  It remains unclear what effect this would have on services, such as, for example, the issuance of expedited copyright registrations during a shutdown.

Federal Courts

The federal court system will face a more urgent shutdown date.  The Judiciary has announced that, should Congress not agree on a continuing resolution to fund the government before October 1, “the federal Judiciary will remain open for business for approximately 10 business days. “

On or around October 15, the Judiciary has advised that it “will reassess its situation and provide further guidance.”  The Judiciary also advised that, “[a]ll proceedings and deadlines remain in effect as scheduled, unless otherwise advised.”  The Case Management/Electronic Case Files (CM/ECF) system will remain in operation for the electronic filing of documents with the courts.

The Judiciary has not provided further guidance as to the potential shutdown after October 15.However, the contingency plans likely would be comparable to those announced at the time of the threatened April 2011 shutdown.  At that time, the Judiciary described those functions as “limiting activities to those functions necessary and essential to continue the resolution of cases. All other personnel services not related to judicial functions would be suspended.”  Further guidance during that earlier threatened shutdown suggested that criminal trials would continue as needed, but left uncertain the impact on civil cases.

Following this expectation, late today The Department of Justice published its contingency shutdown plan which can be found at:  http://www.justice.gov/jmd/publications/doj-contingency-plan.pdf.  It “assumes” only a five-day furlough for planning purposes.  With respect to litigation, the Department of Justices’ plan assumes that the Judicial Branch will continue to operate through the furlough, noting that criminal litigation will continue without interruption as an activity essential to the safety of human life and the protection of property.  However, the plan provides that civil litigation “will be curtailed or postponed to the extent that this can be done without compromising to a significant degree the safety of human life or the protection of property,” and requires DOJ civil litigators to seek postponement of such cases.

Check back here for current updates.

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Belinda Scrimenti is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Belinda’s practice focuses on litigation in trademark, copyright, trade dress, and Internet law, as well as trademark prosecution and counseling.  She has worked on numerous matters relating to the registration, protection, and enforcement of trademarks, and litigated in over 40 U.S. federal district courts.

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March 16, 2012

Bare Trademark Rights? Naked Cowboy’s Infringement Action Against CBS Dismissed

Filed under: Litigation, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:11 pm

By Janet Marvel, Trademark Attorney

Robert John Burck has made a career as a New York street performer.  He is (arguably) famous under his alias, “The Naked Cowboy”, appearing with his guitar in Times Square, clad only in a hat, boots and briefs.  In Naked Cowboy v. CBS, 101 USPQ2d 1841 (S.D.N.Y. Feb. 22, 2012), Burck sued CBS for what he believed was a  take-off of his Naked Cowboy character in the CBS television soap opera “The Bold and the Beautiful,” a segment of which CBS later posted on You Tube.  In the soap opera episode, a character appears clad similarly to the Naked Cowboy, namely, with guitar, boots, hat and briefs only.  Burck alleged trademark infringement, state and federal unfair competition, fraud, and violation of New York’s right of privacy statute, New York Civil Rights Law §§ 50, 51.  The court dismissed the complaint, holding that while Burck owned trademark rights in “Naked Cowboy,” CBS had not used “Naked Cowboy” in commerce

CBS titled its You Tube clip “The Bold and the Beautiful – Naked Cowboy” and  purchased the You Tube adword “naked cowboy.”  The court held that purchase of adwords was not trademark use because Defendants did not use the term “naked cowboy” in a way that denotes source or sponsorship.  The holding with respect to adword use seems directly contrary to the holding in Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009), which held that Google’s sale of adwords constituted use in commerce.  Indeed, for support, the Naked Cowboy court cited Merck v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402, 415 (SDNY 2006), the holding of which Rescuecom cast into doubt.

The court also held that CBS’s use of “Naked Cowboy” in the title of its You Tube clip was not intended (at least on the facts plaintiff pled) to trade on the plaintiff’s goodwill, and therefore that it was “fair use.”  Fair use typically requires a showing that the mark is used nominatively, descriptively, or comparatively.  Reading between the lines, the court must have considered that any performer with boots, briefs and a guitar was an (almost) “naked cowboy,” hence the use was descriptive.

Nor did the court find that the soap opera actor’s costume infringed that of the Naked Cowboy, because Burck plasters “Naked Cowboy” and “Tips” across his articles of clothing, while the actor did not.

Finally, the court rejected the Naked Cowboy’s claim that CBS violated New York’s right of privacy statute, which forbids the “use [] for advertising purposes or for purposes of trade,  the name, portrait or picture of any living person, without prior consent.”  N.Y. Civ. Rights § 50.  The court rejected this argument, citing the Burck’s previous loss in Burck v. Mars, a case in which the Naked Cowboy alleged that a talking M&M candy violated his right of privacy:  “[T]he right of privacy  does not extend to fictitious characters adopted or created by celebrities[,] and it does not protect ‘a trademarked costumed character publicly performed by a person.'”

The case, while probably not doctrinally correct should give hope to naked cowboys everywhere.

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Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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April 8, 2011

The Likely Impact of a Federal Government Shutdown on the United States Patent and Trademark Office, Copyright Office, and Federal Courts

Filed under: Copyright, Litigation, TM Registration, Trademark (General) — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:34 am

Categories: Copyright, Litigation, TM Registration, Trademark (General)
Tags: Federal Litigation, Belinda J. Scrimenti

by Belinda Scrimenti, Trademark, Copyright, and Litigation Attorney

Like many areas of commerce to be effected in the United States, the threatened government shutdown – currently scheduled for midnight on Friday, April 9, 2011 – will impact trademark owners, copyright applicants, and federal court litigants.  Immediately available information suggests that a brief shutdown would have little impact, but the impact of a longer shutdown is uncertain.  We will keep current status information posted here.

Patent and Trademark Office

The United States Patent and Trademark Office (“USPTO”) has announced that, in the event the April 9, 2011 shutdown comes to pass, it will remain open and will continue to operate as usual for a period of six business days, through Monday, April 18, 2011.  The USPTO is able to keep its doors open because it has enough available reserves, not linked to the current fiscal year, to remain in operation until that date.  Should a shutdown occur and continue longer than the six-day period, the USPTO has advised that it “anticipate[s] that limited staff will be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.”  The USPTO has advised that it will continue to post information on its website as it becomes available. (more…)

March 31, 2011

Amending a Washington State Statute to Ignore Choice of Law Principles Could Not Gain Jimi Hendrix’s Heirs a Post-Mortem Right of Publicity: Court Rules Amendment Unconstitutional

Filed under: Constitution, Litigation, Right of Publicity — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:14 pm

Categories: Constitution, Right of Publicity, Litigation
Tags: Right of Publicity, Federal Litigation, Conflict of Laws, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

Jimi Hendrix died before his time in a London hotel room in 1970.  His legend lives on.[1] But his right of publicity appears to have died with him.

Right of publicity generally developed out of the right of privacy and is entirely governed by state law, which varies from state to state.  A post-mortem right to publicity is only available in some states.  States with many deceased celebrities or very famous deceased celebrities often want to give their constituents the greatest economic advantage they can in exploiting post-mortem rights, predominantly in the area of merchandising.  Such was the case in Washington state, the birthplace of Hendrix.

Despite the best efforts of his father, the sole heir of Hendrix’s estate, and the company to which Hendrix’s father assigned all of his rights, Experience Hendrix LLC, Hendrix’s right of publicity likely cannot be resurrected because New York – Hendrix’s place of domicile at the time of his death – did not have a post-mortem right of publicity.  See Experience Hendrix, L.L.C. v. The James Marshall Hendrix Foundation, No. C03-3462Z (W.D. Wash., Apr. 15, 2005), aff’d, 240 Fed. Appx. 739 (9th Cir. 2007). (more…)

February 28, 2011

Use of a Trademark in Metatags May No Longer Lead to a Nearly Automatic Finding of Trademark Infringement

Filed under: Internet, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:05 pm

Categories: Internet, Litigation
Tags: Metatags, Federal Litigation, Trademark Infringement, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

Ever since search engines became the primary entry point to the Internet, website operators have been trying to take advantage of search engine algorithms to attract more traffic and raise their placement in search results.  Many of the earliest search engines would read the metatags[1] embedded in a website’s metadata to aid the search engine in determining that website’s responsiveness to a search query.

Thus early courts dealing with allegations of “infringement by metatag” were persuaded that use of the plaintiff’s trademark as a metatag lead easily to a conclusion of trademark infringement.  The most prominent and most often cited case holding this was Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), finding that such use could cause initial interest confusion, i.e., actionable confusion in attracting searchers to a site even if the confusion was subsequently dispelled.  Many courts followed this reasoning. (more…)

December 14, 2010

Amendments to Fed. R. Civ. P. 26 Alter the Disclosure Rules for Trademark Survey Experts

Filed under: Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:18 pm

Categories: Trademark (General),
Tags: Federal Litigation, Federal Rules, Trademark Surveys, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

On December 1, 2010, revisions to Federal Rule of Civil Procedure 26 came into effect that will change the way litigants deal with experts.  In trademark litigation, survey experts have become invaluable to building a successful case.  Working with an expert who will testify at trial presents practical challenges, however, in protecting the interactions between the expert and litigation counsel from discovery.  Frequently, attempted discovery of these interactions leads to significant, and costly, disputes.  The recent revisions to the Federal Rules attempt to limit discovery of these interactions.

Revisions to Rule 26(a)(2)(B)(ii) and 26(b)(4):  Work-product Protection for Draft Expert Reports and Communications Between Attorney and Expert

Rule 26(a)(2)(B)(ii) has been revised slightly, but in an important practical way: the report prepared by an expert must now include the “facts or data or other information considered by the witness.”

The addition of subsections (B) and (C) to Rule 26(b)(4) grants greater protection from discovery to draft reports and communications with experts in litigation. (more…)

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