Corporate Counsel's IP Trademark, Copyright & Licensing Forum in New York City

ALM's Corporate Counsel is hosting a conference focused on the legal issues that are inherent with trademark, copyright and licensing. The conference will be held on September 14, and 15th at the Harvard Club of New York City. I have attended several of ALM's intellectual property conferences and each time they have covered very timely topics and have had outstanding faculty.

Some of the topics that will be covered include: trademark enforcement in a global economy, managing intellectual property as an asset, new generic top level domain names, and protecting your brand in the digital age. Some of the companies who will be presenting include: Playboy Enterprises, Inc., ABC, Inc., The New York Times, ESPN, and Macy's.

To learn more about the conference here is the link.

[Full Disclosure-Shear on Social Media Law is part of ALM's Law.com Blog Network]

Copyright 2011 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

Did Letterman's Alleged Blackmailer Register The "Screenplay?"

This morning The Today Show aired a piece on the alleged bribery of David Letterman by Robert Halderman. Halderman's attorney Gerald Shargel made an extremely novel and interesting argument. Mr. Shargel stated that Halderman was merely offering Letterman the first opportunity to buy a "screenplay" that included alleged damaging information about Letterman's private life. Halderman purportedly offered to sell Letterman the "screenplay" for $2,000,000.

Mr. Shargel's argument might be a winning one if some of the following questions were first answered: Did Halderman register his "screenplay" with the U.S. Copyright Office? How about the Writer's Guild? What type of social media promotion plan did Halderman have to promote his project if Letterman did not want to buy it? Was Halderman shopping his "screenplay" around to any other potential buyers?

It costs $35 to register a work online with the U.S. Copyright Office and at most $22 to register a work with the Writers Guild of America East. If Halderman registered his "screenplay" with either of these organizations his argument that he was merely offering Letterman a first crack at his work may be successful. However, if the "screenplay" was not registered, I do not believe that the argument his attorney mentioned this morning will be a winning one. If this purported screenplay had widespread commercial value Halderman would have taken the steps necessary to protect his intellectual property.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

Google Book Settlement Angers Chinese Authors

I have written extensively on this blog that the biggest beneficiary of the Google Book Settlement as it is currently configured is Google. Surprise. Surprise. Surprise. Did I just say that or was that my Gomer Pyle impression? Fortunately, the U.S. Deparment of Justice and the U.S. Copyright Office has strenuously objected to the settlement and the parties are back at the negotiating table. According to the New York Times, the current settlement may create some international difficulties for the U.S. because the proposed settlement may affect authors whose rights are protected under various international treaties. I am not surprised that international authors are against the proposed settlement. I am just a bit surprised that it has taken so long for the international community to become mobilized.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

NFL Fights Over Access To College Game Day Content

The NFL is currently in a standoff with the company that video records college football games for eight conferences and then delivers it digitally to the NFL. The content is primarily utilized by the NFL's College Advisory Committee to form an official opinion on college juniors who are thinking about entering the NFL draft before their college eligibility is exhausted. The College Advisory Committee acts as another source for potential early entrants to the NFL draft because without this committee prospects would only be able to obtain information about their possible draft prospects from sports agents and their college football coaches.

The company that creates the content and then delivers it to the NFL, XOS Technologies, has reportedly made a mulit-million dollar rights fee request on behalf of the college football conferences it works with to the NFL for content that was previously delivered free. The College Advisory Committee is made up of participants from each NFL team and it provides a draft opinion of college underclassmen. This arrangement has provided college juniors an opinion that is not biased by the opposing interests that sports agents and college coaches inherently possess. The analysis that the College Advisory Committee provides is mutually beneficially to both the NFL and to underclassmen. Potential draft prospects are able to obtain a professional opinion about their readiness for the NFL while the NFL has been able to scout potential draft picks with free access to game day tapes.

From a legal and business perspective, there are several issues that need to be determined. What is the monetary value of the game tapes to the NFL? Who owns the rights to these game day tapes? Does the conference own the game day content or do the two schools who play the game own the rights? If the content is used for purposes other than talent evaluation, such as for entertainment or analysis on the NFL Network, what is the value of this use? If a college underclassman would like to obtain the game day tapes and post clips on a social media website to promote himself can the player also obtain the rights for this use? How much is the College Advisory Committee's talent evaluation services worth to college football programs and their players?

These questions need to be answered sooner rather than later because there is a high probability that a larger number of juniors than usual will declare themselves available for the upcoming NFL draft due to the possibility that a new NFL Collective Bargaining Agreement that is in the initial stages of negotiation may put some type of cap on rookie salaries.

In my opinion, the NFL should pay some type of fee for the game day tapes depending on the type of rights that are granted. Since NFL teams pay tens of millions of dollars to top draft picks, game day tapes are very valuable in the evaluation process. I do not believe it would be practical to charge potential draftees for an independent evaluation because most likely they could not afford the cost of the review. However, I think some type of deal should be worked out that would allow a player to obtain game day content that would allow them to directly promote themselves on social media websites.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

Catch-22: Scrib.com Copyright Dispute Has the Potential to Create New Law

A unique copyright lawsuit has recently been filed in the U.S. District Court of the Southern District of Texas, Houston Division. The lawsuit was filed by Elaine Scott, an author of children's books against Scribd.com, an internet based social publishing company. Ms. Scott claims that Scribd.com is violating copyright law because it is using unauthorized "digital fingerprints" of her book "Stocks and Bonds, Profits and Losses: A Quick Look at Financial Markets" ("Stocks and Bonds") in a filtering system to ensure that her book does not appear again on its website.

In July 2009, Ms. Scott visited Scribd.com and found that her book "Stocks and Bonds" was illegally uploaded to the site. Subsequently, a letter was sent to Scribd.com notifying the company about the copyright violation. Scribd.com removed the copyrighted work and left "digital fingerprints" of the work in its filtering system to ensure that the the copyrighted work did not appear again on its website. However, before including the "digital fingerprints" of the copyrighted work in its filtering system, it appears that Scribd.com did not obtain a license from Ms. Scott permitting it to utilize her work in this manner.

Generally, before a copyrighted work can be utilized a license from the copyright holder must be obtained. For example, when The Sopranos ended a couple years ago, the show's creator had to obtain permission from the band Journey so the song "Don't Stop Believin" could be played in the background of the last scene of the series finale. Sometimes, copyrighted material may be used without obtaining permission due to the Fair Use Doctrine. In determining whether a utilization falls under the Fair Use Doctrine there are 4 factors that the courts consider.

This lawsuit brings up a very interesting Catch-22 for companies trying to abide by copyright law after they are notified of a copyright violation. If a company does not take protective measures to ensure that it is following copyright law, the company may be held liable for copyright infringement. However, Scribd.com's solution to avoid violating copyright law appears to include a filtering system that may violate copyright law by utilizing part of the author's work without permission. The courts will have to decide if utilizing part ("digital fingerprints") of a copyrighted work without an author's permission in a filtering system to stop others from committing copyright infringement falls under the Fair Use Doctrine.

In my opinion, Scribd.com and others in Scribd.com's space should be denied the ability to claim Fair Use because Scribd.com is in the commercial business of publishing content and its proprietary filtering system may be licensed out to other companies confronting the same dilemma as Scribd.com. Therefore, Scribd.com should be forced to obtain a license from Ms. Scott. However, since Scribd.com appears to be trying to protect Ms. Scott's published work, Ms. Scott should not be allowed to obtain an unreasonable license fee. If Scribd.com would have approached Ms. Scott about obtaining a license before including her work without her permission in its filtering system, I believe Ms. Scott would have granted the required license at a reasonable rate. I learned a long time ago that being polite and making a fair offer resolves most legal matters.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

Google Book Lawsuit Not Ending Any Time Soon

Earlier today, Judge Denny Chin of the United States District Court for the Southern District of New York granted a motion to delay an Oct. 7th hearing on the Google Book Lawsuit Settlement because it appears that Google and its allies are now willing to modify some of the proposed settlement terms to allay the fears of copyright holders and Google's competitors. I believe this is a good sign because this signals that Google may be more flexible in their position. Lets hope this is the case for all stakeholders since the proposed settlement has the ability to fundamentally change copyright law throughout the world.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

U.S. DOJ is Against the Google Book Settlement

Not surprisingly, the U.S. Justice Department came out against the proposed Google Book settlement. DOJ advised the U.S. District Court for the Southern District of New York that it should not accept the class action settlement in The Authors Guild Inc. et al. v. Google Inc. DOJ encouraged the parties involved to continue discussions to craft a resolution that all parties affected would be willing to accept. I hope that that the U.S. Copyright Office's official position along with the U.S. Department of Justice's official position will encourage Google to make a good faith effort to resolve the outstanding issues in a manner that does not shortchange copyright holders and does not create a monopolistic system that harms consumers.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

U.S. Register of Copyrights Attacks Google Book Settlement

The U.S. Register of Copyrights, Marybeth Peters agrees with most of my previously stated positions on the proposed Google Book Settlement. In particular, Ms. Peters stated in her testimony to Congress on September 10, 2009, "[i]n the view of the Copyright Office, the settlement proposed by the parties would encroach on responsibility for copyright policy that traditionally has been the domain of Congress...We are greatly concerned by the parties' end run around legislative process and prerogatives, an we submit that this Committee should be equally concerned. To read Ms. Peters entire statement click on the link above.

According the New York Times, [h]er ("Ms. Peters") opinion is important because it could be reflected in a brief expected from the Justice Department this month. The government has until September 18, 2009 to make a filing in the case so stay tuned.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

Google Book Search Copyright Class Action Settlement

I have talked at length in previous posts about the proposed Google Book Search Copyright Class Action Settlement. In my opinion, the settlement is a raw deal for copyright holders and consumers due to many issues that I have discussed in some of my older posts. One of the most important sections of the settlement is the cash payment section that discusses how copyright holders are compensated for their work. Many rights holders will not be pleased with the details.

If you made a claim by the filing deadline and receive documentation from the lawsuit claims administrator you should read the documents thoroughly. If you disagree with your claim determination you may want to consider sending a rejection of the claim determination certified return receipt. If the company contacts you and states that there is nothing more they can do and asks you to send a letter or email stating that you now agree with their claim determination you may want to consider contacting an attorney to assist you with the claims process.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

The Google Book Lawsuit: Continued

A new group called the Open Book Alliance has just created a web site that states the case that the Agreement between Google,the Authors Guild, and the Association of American publishers should be scuttled. Members of the Open Book Alliance include: Amazon, Microsoft, Yahoo, the American Society of Journalists and Authors, the Council of Literary Magazines and Presses, the Internet Archive, the New York Library Association, Small Press Distribution, and the Special Libraries Association.

As I stated in an earlier post, I am against the agreement in its present form because it appears to grant Google an unfair monopoly, it short changes some copyright holders, and it may enable Google to track the published works that a user views. While I applaud Google for taking the lead on this initiative, Google should not be handed a monopoly just because it started the project.

The bottom line is that the parties who favor the Agreement will reap financial benefits from it while the parties who are against the Agreement may be financially harmed or may not benefit from the Agreement. History has demonstrated that monopolies stifle innovation and hurt consumers. For example, when Network Solutions controlled all domain registration the cost to register a domain name was exorbitant . However, after other companies were allowed to become domain name registrars the cost to register a domain name drastically dropped and more people were able to participate in e-commerce.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

The Google Book Lawsuit: Next Round

According to the New York Times and the Wall Street Journal, Yahoo, Microsoft, and Amazon are planning to join with several non-profit groups in their opposition to the agreement that Google has forged with the Authors Guild and the Association of American Publishers that would have settled the 2005 lawsuit regarding Google's plan to digitize millions of published works.

I think Google's plan to digitize millions of published works is brilliant (as the British would say). When operational, the project will allow any Internet user to access millions of previously hard to view published works. However, we all must remember that Google did not envision this project as a philanthropic venture. The project was meticulously planned and implemented as another revenue stream. I am glad that some of the other E-Commerce heavyweights are finally realizing that their participation in this discussion is vital to ensuring that Google does not obtain a monopoly as the gatekeeper to the published works they scan. Democracy and capitalism work best when there is healthy discussion and lots of competition.

Is Flickr Hiding Behind Copyright Infringment To Censor Free Speech?

Social Media has the ability to spread ideas like wildfire. However, if you don't own the platform from which you want to espouse your views your speech may be stifled. A perfect example of this occurred when Firas Alkhateeb, a college student from Chicago created a photo that some call art, others call politically charged, and some have called racist.

According to the L.A. Times, Mr. Alkhateeb utilized Adobe Photoshop and modified a photo of President Obama to make the President look like Heath Ledger's Joker character from the most recent Batman movie. In January of this year, Mr. Alkhateeb uploaded his creation to Flickr. Several months later somebody downloaded the photo and put the word "Socialism" on the photo and started plastering posters of the modified photo throughout Los Angeles.

Whether or not you agree with the message that it conveys, it appears that the photo modification is protected under the famous 1841 Folsom v. Marsh case that established the analysis later codified in the United States Copyright Act of 1976 Title 17, U.S.C. Section 107: Limitations on exclusive rights: Fair use.

From a legal point of view, there is a valid argument that the photo represents protected political commentary. Under our First Amendment, no matter how reprehensible a person's words or ideas may be that person has a right to them and a right to publish them. As Social Networking use increases, these types of incidents will increase ten fold. Therefore, this type of censorship that Flickr is engaging in may be just the tip of the iceberg.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.

The Google Book Lawsuit

The New York Times has an interesting article about some of the objections to the proposed deal to settle the Google Book Lawsuit. For those not familiar with this lawsuit here is a condensed description of events: Google is in the process of scanning millions of books into digital format from several famous libraries. In return, Google wants to profit from their scanning work along with the authors and publishers of the scanned books.

I have no problem with Google wanting to profit from their work since new ideas are what drives capitalism. However, some of the legal issues that need to be addressed include:

1) Fair Compensation: Is the monetary settlement fair to the rights holders of the published works? For example, is it fair for the settlement to set non-negotiable royalty terms for works that are out-of-print but still in copyright?

2) Privacy concerns: How will Google track users and will Google then profit from selling ads directed to those users. Will the published works rights holders be able to share in the profits from any ad revenue that Google generates from these ads?

3) Monopoly concerns: Will other companies be able to join Google in profiting from this venture? Remember the old AT&T? After AT&T was broken up, we started to have more telephone choices. Some of the Baby Bells have since merged and now there are some rumblings about possible monopolistic activities but in general we have more innovation with healthy competition than we did before the break up.

I am not in favor of any agreement that sets non-negotiable royalty terms for any published work because each work should stand on its own and be given the opportunity for the marketplace to determine its worth. I also have grave concerns about Goggle's "big brother" capabilities and the possibility of a monopoly. The final agreement needs to address these issues and until it does it should not be implemented.

Copyright 2009 by the Law Office of Bradley S. Shear, LLC. All rights reserved.