The ABCs of Alphabet

So, what is Alphabet? Alphabet is Google – sort of. As by Alphabet CEO and Google cofounder Larry Page, Alphabet is a collection of companies, the largest of which is��Google, now a subsidiary of the new company. Google in turn has “slimmed down” and moved its non-internet projects��to Alphabet – similar to��lifespan research company����or investment-focused . According to Page, “This new structure will allow us to keep tremendous focus on the extraordinary opportunities we have inside of Google.”

BMW is No Crash-Test Dummy

For BMW, “alphabet” has quite a different meaning. The trademark and .com address are owned by a subsidiary of the German automaker, which provides corporate car fleet services. Presumably, Page and colleagues��(wait for it) googled their desired��name before the��big reveal, yet BMW informed the����that they were never contacted by Google prior to the Internet giant’s announcement. Also, BMW’s spokesperson, Micaela Sandstede,��told��the ��that BMW has no plan to sell the domain to Google, as the website is��a “very active” part of (BMW’s) Alphabet’s business.��However,��BMW is investigating into whether any trademark infringement indeed occurred.

Is BMW Geared-Up and Ready to Go?��

The big question is: does BMW have a case and will it pursue it? Under US , infringement occurs when a registered mark is used in a way that will likely “cause confusion, or cause mistake, or to deceive.” In other words, having two companies with the same name is okay, as long as there is no possibility that consumers could become confused.

This is where the road gets rocky. Google’s Alphabet is located at , but BMW’s ��experienced a huge spike in visits after Page’s announcement – so��significant��that it was�� that BMW’s site crashed. The traffic spike��might��be indicative to a court of��confusion among many investors and curious minds as to where they might access Google’s Alphabet online. Furthermore,��it was�� that there is a connection between the services of Google and BMW, as BMW is a car manufacturer and Google has a line of self-driving cars. This could potentially be submitted as evidence under the “likelihood of confusion” test.

Although BMW may be annoyed, I think it is rather��unlikely they will pursue legal action, no matter what their��investigations may uncover. It has been made clear that Alphabet Inc. is purely a parent company and will not sell��products or brands built under its name. There should��be no confusion between the products and services of Alphabet (Google) and Alphabet (BMW), as Google’s Alphabet technically has neither. Further, Google and BMW are��each��titans in their respective industries, and I think it would be difficult to prove that the average Joe could��not differentiate between the ABCs both companies spell out.

That said, this editor also (wait for it again)��googled “how many 'alphabets' are there in the world?” Although the answer was��not confirmed, a quick search of the ��revealed that over one hundred registered marks with some use of the word “alphabet” exist. It is unknown if��any of these companies could��be impacted by the��new Alphabet, and what the fall-out, if any, might��be. As reported by the , it is possible that��some “Alphabet” companies sell their domain names, while others may be��concerned about their Google result priority, which could affect��their online presence. Regardless, the harsh reality is that these smaller entities are unlikely to��gear up for battle, because (in the words of an alphabet-named business owner): “Who sues Google?” (Note: this editor also googled this question and over 5 million results appeared in 0.37 seconds, although I did not include the��search term “successfully”).

This will be an exciting case to follow should a lawsuit unfold; however, as of today, BMW’s decision on the issue is unknown. You can be sure that I will google it again tomorrow.

Jaimie Franks is an��IPilogue editor and JD candidate at Osgoode Hall Law School.��

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It is a well-established principle of copyright law that as per Section 3(1) of the , copyright means “the sole right to produce or reproduce the work or any substantial part thereof.” However, as noted by other copyright law , Canadian courts have frequently avoided defining what a “substantial part” actually means. In the Court stated that it is a flexible and contextual concept rooted in quality rather than quantity. Conversely, in , the Supreme Court explained it as being “not trivial” or “important.” As such, if an insignificant part of a work (a part that is not “substantial”) is copied the copyright owner’s rights are not violated. What a “substantial part” actually is is therefore quite important to an infringement analysis, and comments by the Copyright Board in their recent decision are worthy of discussion.

The Access Copyright stemmed from objections by various provincial and territorial governments to the proposed statements of royalties that the Canadian Copyright Licensing Agency (operating as ) filed in March 2004 and 2009 pursuant to the . Specifically, the royalties to be collected concerned the reproduction of various literary works. In the decision, the Board had to determine what copying occurred in order to determine the proper royalty calculations. In doing so, the Board made the following finding at :

In this matter, without the benefit of a qualitative analysis of each of the copied works, and without even knowing which portions of a work were copied, in our opinion the amounts [of]…1 to 2 pages of a work, are reasonable approximations in establishing non-substantiality. However, since 1 to 2 pages of a short work can amount to a great portion of that work, we further limit this approximation by requiring that the copying of 1 to 2 pages not constitute more than 2.5 per cent of the entire work…Thus, for the purposes of calculating a royalty rate for this Tariff, we consider that copying events where 2 pages were copied from a work of 80 pages or more, or 1 page were copied from a work of 40 pages or more, represent copying that was not a substantial amount of the work.

In my opinion, the Board has navigated into dangerous waters in this attempt to quantify what makes “substantial part” substantial. Imagine hypothetically that I wrote a 100-page work which takes only two consecutive pages to describe the plot and characters (forget that this sounds like a pretty awful book unlikely to be infringed). If another author used the information from those two pages (and nothing from the rest), would my rights be unprotected because the copying percentage falls below 2.5 percent? Or would my rights be protected by a qualitative assessment of the work as a whole with those two pages deemed substantial, omitting a quantitative analysis? In either circumstance, the Board is making murky waters murkier, not clearer, by adding a number to an assessment that has traditionally remained (in my opinion for good reason) concerned with what was copied from the page rather than how many pages were copied.

It is possible that these fears are premature. notes that the Board’s decisions are not court decisions, and this one is particularly tempered with an acknowledgement by the Board that the above numbers were determined “without the benefit of a qualitative analysis.” Yet, the fact that the Board felt compelled to define “substantial” in order to conduct its calculations may indicate that this is a practice it will embrace not just in regards to literary works, but other protected creations in the future.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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Looks Like the Cabin May Have Been Double-Booked for the Weekend

In the , Gallagher alleges that Whedon and co-writer and director Andrew Goddard took the idea for their successful horror movie ��from Gallagher's 2006 novel entitled The (filed in the U.S. District Court, Central District of California – Western Division) names Whedon and Goddard as defendants along with Whedon's production company Mutant Enemy Productions, and Lions Gate Entertainment. Gallagher's claim (which can be read in full ) explains the ways in which his novel and the movie are similar, including shared plots, themes, and even characters.

For example, Gallagher states: "Like the Book, Cabin in the Woods tells the story of five friends (three guys and two girls) between the ages of 17 and 22 who take a trip to a remote cabin in the woods…In the end, it is revealed that the friends are being filmed and manipulated by persons behind the scenes, thus becoming inadvertent characters in a real-life horror show for the enjoyment of others." He noted that: "Even the names of the lead characters are similar. The name of the lead blonde in the Book is Julie and in the Film it is Jules. Similarly the name of the lead brunette in the Book is Dura and in the Film it is 'Dana'…The cabin in the book is referred to as the 'Brinkley Cabin' and in the film it is the 'Buckner Cabin.'" Gallagher includes a detailed list (beginning on page 11) comparing similar elements of the two works side-by-side. When paired with descriptions like those noted above, the list is admittedly quite convincing in favour of his claim.

Additionally, Gallagher provides evidence demonstrating Whedon and Goddard would have had access to the book prior to creating their film. The evidence references the popularity of his book and the location in which the novel was marketed and distributed: Los Angeles neighbourhoods in close proximity to the defendants' residences and business operations.

But Might Gallagher Emerge from the Woods Successful?

The American test for copyright infringement is described in That case established that infringement occurs upon proof of two elements: [1] ownership of a valid copyright; and, [2] copying of constituent elements of the work that are original. As the copyright holder of his novel, and considering the substantial evidence suggesting substantial similarities between the works, it would seem��at first glance that Gallagher has the law on his side (note: a brief analysis of the infringement claim was done by IP law blogger Inayat Chaudhry ).

However, Gallagher's seemingly strong claim, based on the evident similarities between the works ("Julie" and "Jules" are not exactly miles apart), may not be as strong when applied to more rigorous legal review. Commentators have rightly that copyright laws do not protect ideas, facts, or "material traceable to timeless themes." As such, pure copying is not infringement; there must be copying of protectable (original) material. This principle will be significant if the case is litigated. Gallagher's claim admits that both works employ "a self-referential awareness of classic horror movie tropes." Attorney and blogger highlights that many of the shared clichés between the novel and movie are those "which the Scream franchise has milked for laughs over the years." Michelen concludes that Whedon's legal team will "likely argue that at best the plaintiff can prove that they are similarities but they are not substantial, and that both of them used age-old teen horror movie plot devices to move their works along."

Consequently, it appears the case will turn on the facts – are the shared elements so substantially similar that it will be impossible for the defendants to argue they are are the result of pure coincidence, and found in the realm of classic scary story-telling? In my opinion, this is not an easy case. The evidence in the complaint weighs in favour of Gallagher, but the principles of copyright law sway towards Whedon. Nonetheless, in his complaint Gallagher has demanded a jury trial. It is likely that the layperson sitting in a courtroom would see the list of similarities, the timeline of the pieces, and the evidence regarding the availability and accessibility of the novel to Whedon and Goddard and conclude that unlawful copying occurred. I would not be surprised if the powerhouses of Whedon, Goddard, and Lions Gate met with Gallagher (perhaps in a cabin) and settled this matter quietly and without the costs of litigation. Until then, I suspect Whedon will not be taking any backwoods vacations for the next little while.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

The post A Shared Cabin in the Woods? Joss Whedon Hit with $10 Million Dollar Copyright Infringement Lawsuit appeared first on IPOsgoode.

����徱�ٴǰ� ��originally reported on this case back in a September ��on the SCC’s decision to grant leave to appeal. The case arose out of the Board’s ��to collect royalties on these aforementioned ephemeral copies. The ��disagreed on tech neutrality grounds, arguing that under those principles royalties should not be charged for incidental copies since payments are already made for the use of the original content in final broadcasts. The Board, finding for , relied on the SCC’s decision in , which determined that because incidental copies add value to a final broadcast they should attract separate royalties. Furthermore, the SCC in Bishop narrowly interpreted the ��(the “Act”) to conclude that incidental copies made in the process of creating a broadcast were not part of the broadcast right itself.

At the FCA, CBC argued that Bishop was no longer good law. As ��by some commentators on the case,��CBC argued that the SCC in��fundamentally changed the law through its statements about tech neutrality. The Court however decided that neutrality did not override the language of the Act that gives owners of music works the exclusive right of reproduction. The FCA said in ��that nothing in ESA “would authorize the Board to create a category of reproduction or copies which, by their association with broadcasting, would cease to be protected by the Act. ESA did not explicitly, or by necessary implication, overrule Bishop v Stevens.” The Court further stated that since the majority’s reasoning in ESA did not rely on or refer to technological neutrality the case did not provide guidance on applying the principle to the situation at hand.

The importance of this appeal has been discussed by many members of the IP world. One commentator�� that the greatest danger in this case is that the SCC could potentially “roll back its finding that technological neutrality is a foundational principle within the law.” Additionally, if the SCC rules that all copies, incidental or not, are copies under the Act��there is “the very real possibility of payment demands for the myriad of copies that occur through modern technologies.” In this world of digital copies and Internet file sharing, accessing digital goods could potentially become an expensive task.

Although a webcast of the oral arguments was not available at the time of the writing this post, the parties’ ��are – and prove to be interesting reads. CBC ��that SODRAC is the first copyright holder to “attempt to monetize broadcast-incidental copies…[which is] a subversion of the purpose of the Copyright Act in an attempt to generate economic rents through a layer licensing scheme.” CBC contends that the layered licensing scheme at question was upheld by the Court through a fundamental error of law, “namely the rejection of technological neutrality as a guiding principle in the interpretation and application of the Copyright Act.” CBC asserts in its factum that this layered approach to licensing is “impermissible double-dipping that violates technological neutrality.” It is also interesting to note one of CBC’s requests that if the SCC decides that a licence is indeed required for incidental copies then the royalty should be reduced to a nominal amount “to reflect the fact that broadcast-incidental copies do not have independent economic value.” This request seems to reflect the reality that incidental copies tend to be a part of the production process in creating content, and are not necessarily “valuable” items on their own.

The SODRAC ��on the other hand contends that CBC is attempting “to reverse decades of settled law” and does not mince words in its opening paragraphs:

This appeal amounts to an attempt by CBC to persuade this Court, through a misuse of the principle of technological neutrality, to upset the existing statutory balance in relation to broadcast-incidental copies and to substitute its own policy preferences for those of Parliament, enabling CBC to escape liability for copies it is making and deriving benefits from, and that it has been making and paying for, for decades.

It is also fascinating (and sort of juicy!) to scan through the SODRAC factum and see a couple portions crossed out, specifically the paragraph describing how CBC has made tape and digital broadcast-incidental copies over the years for its programs.

An attendee of the hearing����on the opening stages of the appeal, saying that it did not start well for the CBC with the SCC being “clearly skeptical” of its arguments. In discussing technological neutrality however, one of the intervenors () suggested that a test should be established for when a copy should be treated as a copy under the Act. CIPPIC’s fear is that in this digital world that constantly uses ephemeral copying to function, literally interpreting the right to reproduction would give copyright owners control over everybody else’s access to digital content – which is not realistic.

It has been ��that this case��may “serve to reinforce the importance of the technological neutrality principle and confirm that in the digital world, not ever copy is a copy for the purposes of the Copyright Act.”��I agree with this position. Although SODRAC relies on the established law, the law must keep up with our ever-changing (and technologically advanced) world. It is simply impractical to suggest every copy is a copy under the Act when the way we access and store digital information heavily relies on ephemeral copying. To charge royalties on the digital content used in the production process before the final (valuable) broadcast is made seems to be an inappropriate cash-grab and abuse of copyright owners’ powers. However, the conclusion that the law may lend itself to could be completely different, and unfortunately we can never predict with certainty how the bench will sway. I guess we will just have to sit on the couch and find something else to watch until the final result is ready for the air.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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After Professor David Vaver’s light hearted introduction of Professor Dinwoodie’s long list of accomplishments and status as a “force of intellectual property internationally”, Professor Dinwoodie began his talk. He opened his lecture by indicating that his talk was part of a��working project on examining the dynamics of IP law in America, and��comparing whether the same dynamics existed in European IP law. Professor Dinwoodie proposed that a cardinal principle of IP law is that it is territorial, and it has always been that way even within the international systems since the late 19th century.�� However, global trade and social changes along with the creation of the online marketplace have called into question the practical relevance of this territoriality principle.�� There is a growing gap between the global reach of trade and the local nature of IP law, and what should be of interest to us is how we respond to this gap between the social reality and the legal principle of territoriality.

Professor Dinwoodie then put forth the question of whether we should reconfigure the legal principle of territoriality to comport with today’s commercial reality. He noted one approach worth paying attention to: the Community Trade Mark (“CTM”) created by the European Union (“EU”) about twenty years ago. The CTM allows European producers to try and adapt their trademark rights from a national basis to a regional basis, and has been mimicked, whether adopted or considered, around the world – for example, among the Russian commonwealth of independent states, by groupings of African countries - both French-speaking and English-speaking countries,�� a trans-Tasman mark for Australia and New Zealand , and a group of Portuguese speaking countries considering a��‘Lusófona’ mark. Professor Dinwoodie then said that this evolution in the approach to trademarks suggests that trademarks could be understood to have a connection to culture and language, and not necessarily solely territory as traditionally accepted by IP law. The room then pondered whether cross-country trademarks like the CTM would work here in North America – perhaps something like a “NAFTA” mark?

We were then presented with the three different dimensions to territoriality that would inform the rest of Professor Dinwoodie’s talk. Professor Dinwoodie suggested that territoriality could be understood as: (i) territorial laws (the applicable legal norms), (ii) territorial rights (the acquisition of trademarks and the scope of those rights), and (iii) territorial actions (such as issues regarding jurisdiction and relief). Consequently, Professor Dinwoodie noted that these three different aspects of territoriality each create unique problems for trademark law, with each requiring unique solutions.

To illustrate this argument Professor Dinwoodie began in the realm of American IP law, using cases like , and to demonstrate how the US has created two different conceptions of territoriality with respect to trademarks. Professor Dinwoodie suggested that there is both a political purpose (deriving from registration systems stemming from the territorial character of political institutions) and an intrinsic purpose (the defining of trademark rights by referencing the geographic reach of a mark’s goodwill) of American trademark law.

From there Professor Dinwoodie took us to Europe where we discussed the directive to harmonize legal norms and regulate through unitary rights as attempted by European trademark law. ��We explored in further detail the nature of the CTM and the importance of distinctiveness in trademark protection. I thought it was very interesting how in Europe a mark must be distinctive on all relevant grounds, in that a similar mark cannot exist anywhere else in Europe. This means that an application for an English mark could be defeated by the existence of a similar mark in Greece. Furthermore, marks in Europe cannot be descriptive – a secondary meaning must be shown in every country where there is a distinctiveness problem. In other words, if there is a problem with a mark in any part of the EU the applicant must be able to resolve the problem in each country where the issue lies (see ). Therefore, although the EU has tried with the CTM to create one trademark region, in reality the needs and challenges of twenty-eight separate territories must be satisfied in order for a trademark application to be successful. Trademark law in the EU is therefore not a total picture, but rather a puzzle – and if one piece is missing the image remains incomplete.

Professor Dinwoodie continued his talk with further discussions of the unitary character of the CTM in Europe, from dilution protection based upon reputation (as applied in ), to genuine use (see ). We then came to the issue of the scope of injunctive relief in regards to a CTM violation. As Professor Dinwoodie explained, if an infringement of a CTM is found an injunction for the infringing act is supposed to be put in place for the whole of the EU. However using French, English, and Dutch cases to demonstrate the different approaches to granting relief I found myself agreeing with Professor Dinwoodie’s proposition that the unitary market is a legal fiction in the EU that does not exist in fact. Professor Dinwoodie’s analysis demonstrated that the intrinsic territorial nature of a trademark’s reputation tends to restrict the political grant of EU-wide relief that is meant to occur.

Two main lessons were given to the room to think about in the final moments of the talk. Firstly, Professor Dinwoodie suggested that the value of remedial flexibility in preserving local markets might grow as political units enlarge. Secondly, he said that the dangers of a gap between the market and trademark law lie in reform that both forces change too quickly and reform that fails to keep up with changes in the market. As such, other approaches to territoriality and trademarks that are connected to the intrinsic territoriality of marks might closer align with our social and commercial reality. Professor Dinwoodie proposed that the EU should consider American systems such��as remedial flexibility and the use of disclaimers to avoid the issue of multiple trademark conflicts across the EU’s large regional area. Professor Dinwoodie then wrapped up his remarks by saying that while countries consider whether they should mimic the CTM in their own regions they must think about whether territoriality is best configured by a top-down political approach or if there are forces tied to the actual scope of goodwill that allows for a definition of territoriality that is not too far from the reality of the markets.

The lecture finished off with questions from the room – from Professor Vaver’s questioning of Professor Dinwoodie’s seemingly “cut and dry” comparison between intrinsic territoriality and political territoriality, to a question about the major problems countries may face setting up a model similar to the CTM. The entire experience was both engaging and informative as someone who is not familiar with the international conversations regarding trademark law. Admittedly, I had never considered trademark issues outside the borders of one country but Professor Dinwoodie brought to light many of the issues a global marketplace has created for IP law. As our world continues to expand and connect it is true that the law cannot remain confined within the boundaries of territorial lines – these lines have become more fluid and the law must flow as well.

Jaimie Franks is an IPilogue editor and a JD Candidate at Osgoode Hall Law School.

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As was discussed in the��IPilogue by Nicholas Arruda, Friday’s ruling stems from a�� ��filed by former UCLA basketball star Ed O’Bannon. O’Bannon and nineteen others sued the NCAA, claiming that the organization violated the ��because of its rules that prohibit student-athletes from receiving a share of the revenue earned by the NCAA and its schools from selling ��licenses to use the names, images, and likenesses of its athletes in footage like live game telecasts, commemorative DVDs, and video games. NCAA regulations only allow its players to receive money for attending school and through scholarships, arguing that their restrictions on compensation for student-athletes are necessary “to uphold its educational mission and to protect the popularity of collegiate sports.”

U.S. District Judge Claudia Wilken did not agree with the NCAA, and at the end of her ninety-nine page ��she issued an injunction prohibiting the NCAA from continuing on in its ways. Taking effect at the start of the next Bowl Subdivision Football and Division I Basketball recruiting cycle, student-athletes will now receive a share of the revenue generated from the use of their likenesses. The funds will be held in a trust until the student leaves school or is no longer able to compete. The injunction allows the NCAA to set a cap on how much they give to its athletes, however it does “prohibit the NCAA from setting a cap of less than five thousand dollars (in 2014 dollars) for every year that the student-athlete remains academically eligible to compete.” Schools also have the option to offer a lower amount, but only if the schools do not illegally conspire with each other when setting the number.

Those on team NCAA are not exactly happy with the loss, and have already reportedly����an intention to appeal the decision. Those on the opposite side of the court to O’Bannon ��that paying players and moving away from amateurism (where “players participate for the love of the game”) would cause a drop in the number of college sport spectators and would create an imbalance among schools and conferences. NCAA witnesses further contended that the education athletes receive is in fact payment for their services.

Several players however testified that they viewed being an athlete and not a student as their main job while at college.�� According to O’Bannon testified: “I was an athlete masquerading as a student...I was there strictly to play basketball. I did basically the minimum to make sure I kept my eligibility academically so I could continue to play.” Co-lead counsel for the plaintiffs Bill Isaacson to the media that he was pleased with the verdict, calling it a “major step towards decency for college athletes.” Furthermore, Rutgers law professor Michael Carrier, who specializes in antitrust and IP law, reportedly the outcome may not actually be that scary since payouts may not be huge and will only come to the athlete after their career is over.�� In a statement to USA Today, Carrier does however ��that the decision��is a huge loss for the NCAA because their prized defences of amateurism and competitive balance ��are no longer persuasive in the face of an argument of fairness. As O’Bannon reportedly :��“It is only fair that your own name, image and likeness belong to you, regardless of your definition of amateurism. Judge Wilken’s ruling ensures that basic principle shall apply to all participants in college athletics.”

So what now? In a very opinionated about the decision��CBS Sports’ senior college football columnist Dennis Dodd said that “a seal has been broken. Players can be paid, and we can’t turn back from here.” And since the ruling is limited to male football and basketball players surely the cause will also be taken up by female athletes and those in other sports. The future implications of the decision, from its impact on the structure of American college sports, the potential influence it will have on athletes in other jurisdictions, and to the financial consequences for major sport colleges, speaks to just how important IP law issues are in all realms, whether it be business, sport, or education. The fact is, you have a right to you - it does not matter if you work in an office tower or run drills in a gym. Your name, image, and likeness are yours and, as confirmed by Justice Wilken, they are not for someone else to benefit from for free.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post N-C-Double Don’t: Student-Athletes’ Likenesses No Longer Free for Use appeared first on IPOsgoode.

The Evolution of the Kirby vs. Marvel Saga

In 2010, Marvel filed suit against Kirby’s heirs, who contended that they had the right to issue copyright termination notices to Marvel (and other entertainment powerhouses like Fox, Sony, Universal and Paramount Pictures) on characters created by Kirby under section ��of the . Marvel argued that Kirby’s works were made for hire and thus his estate had no termination rights. In August of 2011 the district court found in favour of Marvel, applying the “instance and expense test” to find that the works were indeed made for hire. The Kirbys thus appealed and subsequently lost both the and a for the Second Circuit appeal court to rehear the case. Their latest brings the issue to where it stands today.

The Issue Hits the Stands

The March filed by the Kirbys to the Supreme Court focused its attack on the “instance and expense” test used by the Second Circuit court to determine if a creation is work for hire (both doctrines explained rather well by IP lawyer Terry Hart ). ��The Kirbys submitted that the test was used “under the 1909 Act to eviscerate the 1976 Act’s inalienable termination right, and it did so with respect to a major independent artist and numerous invaluable works.” It further suggested that the late Kirby was a “creative genius who redefined an industry from a small drafting board in his basement, without financial security or any participation in the success of his creations, [epitomizing] the very author/publisher imbalance Congress sought to remedy in enacting the termination provisions.” The petition acts as a sort of call-to-arms for creators and their families, who would find great power in holding termination rights over the wealthy and powerful studios relying on these individuals for their works and talents.

Marvel Brings the (Asgardian) Hammer Down

Marvel did not hold back in its to the Kirbys, clearly tired of this seemingly never-ending dance (wait, I thought Marvel liked sequels?). In addition to submitting that the case in question presented “a factbound application of a test uniformly adopted by the lower courts” Marvel sharply summarized its position stating: “It [the decision] implicates no circuit split, no judicial taking, no due process violation, and no grave matter of separation of powers. It does not remotely merit this Court’s review.” Amongst the various arguments used to dismiss the Kirbys’ claims, Marvel’s papers include a discussion of why the Second Circuit was correct in finding that Kirby’s creations were works for hire. Marvel noted that comic book legend Stan Lee “supervised the creation of Kirby’s work from conception to publication” and had the authority to approve Kirby’s art or seek revisions, while Kirby was paid at a fixed fee-per-page created. As such, Marvel argues that they, not Kirby, “bore the “risk” and potential expense if the publication of the works was unsuccessful” and that Kirby himself had repeatedly stated that Marvel owned all the rights in his works.

The Interesting Web That Has Been Woven

Even though it will be a while until we know which party the Supreme Court sides with, the Kirby’s reopening of the issue and Marvel’s response have ignited a conversation about copyright and the��idea of work for hire - a concept extremely significant to the entire entertainment industry. On the Kirbys’ team, Hollywood guilds , the , and the submitted an to the Supreme Court, stating that the appeal court’s decision and a broad interpretation of works made for hire regarding commissioned works creates a huge power shift within the entertainment industry in favour of studios. The decision allows for a “presumption that copyright ownership vests in a commissioning party as a work made for hire, rather than in the work’s creator.”

The guilds’ interest in the matter reflects the importance of the case for the entertainment industry, especially if the Supreme Court reviews the issue. As noted by , “film studios, record labels and publishing houses have built their businesses in no small part on the conveyed rights of artists like Kirby, who worked quasi-independently.” If the Supreme Court were to find in favour of the Kirbys’ camp, the leaders of the entertainment industry could see their copyrights in important (and financially lucrative) franchises, characters, and works be challenged and potentially taken away by individual creators and their families or estates. This could result in a huge shift in how these studios, record labels, and publishing houses do business, having to possibly create partnerships with these artists and seek permission to use the works their businesses rely on. The artist’s or creator’s role could thus be elevated within the industry, no longer just a “worker” or “gear” in the machine but a partner in the creation of entertainment products. If Marvel wins or the Supreme Court decides not to revisit the case I can only assume that the status quo would hold and artists and their families may be deterred from spending the time and money to challenge industry giants like Marvel again. Whether this is the correct way for the entertainment industry to function (cue debate on artist’s rights and artistic integrity vs. the commercialization of art and entertainment), that is a discussion for another day.

There is a strong chance the Supreme Court will not open the case. Only a handful of cases from those requested to be reviewed are examined��each year, and as noted by this is a year of hot-button topics and to the that may trump the Kirby estate’s petition in importance. Yet, there are signs that the case may actually be heard. For example, Marvel originally declined to respond to the petition and only did so after being asked to by the Court’s justices because they planned to take the case into conference - a step towards a hearing. Again, nothing has been decided yet, but I think I feel my Spidey senses tingling...

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

The post Marvel’s Misadventures in the Kirby Copyright Chronicles appeared first on IPOsgoode.

The Game So Far

The story begins with ��In Harjo the TTAB decided to cancel six of the Washington team’s trademarks, determining ��that the marks “may disparage Native Americans and may bring them into contempt or disrepute.” However, as noted by attorney and professor , the decision was overturned on appeal in 2003. Fast-forward to 2014 and the play has been run again. On June 18th, the TTAB issued the Blackhorse . Once again, six trademark registrations issued between 1967 and 1990 for the Washington football team’s marks containing ��the term “redskins” were cancelled “because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, .”

Section 2(a) of the provides that a trademark can be refused registration if it consists of "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The principle point of conflict for the plaintiffs was the racist nature of the term “redskin.”��According to news reports, ��released the following statement: “The team’s name is racist and derogatory. I’ve said it before and I will say it again - if people wouldn’t dare call a Native American a “redskin” because they know it is offensive, how can an NFL football team have this name?”

“And Just Like Last Time, Today’s Ruling Will Have No Effect…”

On the other side of the field Bob Raskopt, the team’s attorney, issued a ��saying: “We’ve seen this story before. And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo.” So why does Raskopt seem so confident? Well firstly, the asserts that the evidence provided by the plaintiffs failed to show “that a substantial composite of Native Americans found the term “Redskins” to be disparaging in connection with [the football team’s] services during the relevant time frame.” The issue is that the evidence in question was almost identical to what was submitted in the overturned Harjo case, evidence that was found to be insufficient to uphold the cancellation order. Precedent would thus lead one to believe that the football team is likely to see ��the same victorious end result as Harjo when they appeal.

If, however, Raskopt is unsuccessful on appeal, the team will lose the legal benefits of federal trademark registration. As described by the USPTO’s official���� on the matter, lost benefits would include no longer having legal presumptions of ownership or rights in the marks, and no longer being able to stop the importation of infringing or counterfeit goods. According to ,��since the football team would have far less protections from other businesses exploiting their name (ex. in merchandise or apparel), in theory millions of dollars could be lost.

However, the team will not see money fly out of the bank just yet - they still have exclusive use of the logo and existing contracts for the production of “Redskins” products will not be nullified by the cancellation. Most importantly, the TTAB force the team to change its name or marks. If the team does decide to continue using the “Redskins” moniker, ruling and public opinion aside, the state and common laws of where the team does business may provide trademark protections. An attempt to enforce exclusivity could also be made using Section 43 of the , which allows for civil action against those who use a word, symbol, name etc. in a confusing way that may connect to and subsequently damage another entity. Thus, remedies still exist for the football team if the registrations are lost after the appeal.

But is a Moral Victory Enough?

As it stands the football team does not need to change its name, may still be protected under state and common laws, will not see any immediate economic losses, and could seek exclusivity under Section 43 of the Lanham Act. So, after the whistle is blown, did the plaintiffs win anything more than a thumbs-up from the TTAB?��While a moral victory does not have the same legal repercussions as may be desired by the plaintiffs, it does represent a growing trend in public opinion against derogatory names and symbols in sports that could force even the most ��mind to change. And this public opinion has been voiced fairly loudly. News sources have reported that��fifty U.S. senators ��to NFL commissioner Roger Goodell, asking him to recommend a name change for the team, that newspapers like the San Francisco Chronicle have they will stop printing the name “Redskins” when referring to the football team and that even ��has even weighed in on the issue, saying he would consider changing the team’s name if he knew it offended a large group of people.

It is not yet known how the negative publicity triggered by this case may impact the value of the team’s trademarks, registered or not. Diehard fans may not be swayed to stop buying merchandise, although blogger Jeremy Phillips made a good point in suggesting that the value of a brand lies in the worth given to it by the consumers of the goods and services for which the mark is used. A mark that has been publically denounced as disparaging to Native Americans may not be so valuable to future buyers of the team’s merchandise.

In Conclusion

The play is paused as we wait for the appeal to be heard, but even if the plaintiffs leave the field with the win - nothing but public pressure really has the ability to have the word “redskins” benched for good. It remains to be seen if this will occur, and even though I respect the loyalty many feel towards this historic brand, I know I will be in the stands cheering for a Blackhorse touchdown.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post The Washington Wrong-Skins: A Moral Victory over Tasteless Trademarks appeared first on IPOsgoode.

The Background to the Battle

According to the , Frank Petrella co-wrote a screenplay about boxer Jake LaMotta in 1963. When Frank Petrella passed away, renewal rights reverted to his heirs. Consequently, his daughter Paula renewed the copyright in 1991. However, LaMotta’s life had been put on film in 1980 in Martin Scorsese's Oscar-winning movie . In 1998 Petrella advised MGM that Raging Bull infringed her copyright, but did not sue until January 6, 2009. MGM argued in response that the equitable doctrine of laches��prevented Petrella from seeing through her lawsuit as her 18 year delay in filing the claim was unreasonable and prejudicial. The District Court and Ninth Circuit Court of Appeals agreed with MGM, but as we see here, the Supreme Court did not.

The Majority’s Strike

Justice Ginsburg delivered the of the Court, noting that of the Copyright Act provides that “[n]o civil action shall be maintained under the [Act] unless it is commenced within three years after the claim accrued.” The Court found that the equitable defence of laches could not be invoked to preclude an action brought within a federally prescribed limitation period. Therefore, since Petrella was not seeking relief for conduct that occurred outside the limitation period, and was only addressing acts of infringement occurring on or after January 6, 2009, the lower courts’ decisions to bar her suit on the basis of laches were overturned. Justice Ginsburg did, however, acknowledge that the doctrine and a plaintiff's delay in filing suit could still play a role in regards to equitable relief and when considering what an appropriate remedy may be.

The most powerful blow to the entertainment industry however was Justice Ginsburg’s ��that Petrella’s decision to hold off on suing MGM until the film made money was not a wrongdoing.�� Justice Ginsburg argued that “there is nothing untoward about waiting to see whether an infringer's exploitation undercuts the value of the copyrighted work, has no effect on the original work, or even complements it.” According to Justice Ginsburg, the limitation period allows a copyright owner to “defer suit until she can estimate whether litigation is worth the candle.” Essentially, knowing that your copyright has been infringed but waiting to see if the infringing work is profitable is not a reason to be barred from pursuing a claim - no matter how many years ago the infringement occurred.

The Dissenters Enter the Ring

For the ��judges, Justice Ginsburg’s decision “disables federal courts” from dealing with the unfairness that can arise in the “unjust hardship” created on a party by another that “unreasonably delays [filing] a suit.” Such hardships could include situations where a claim is made for a film released so far in the past that witnesses and evidence that could be crucial to a defendant’s ability to prove their case are no longer around.

In my opinion, the dissent's discussion of section , which is recognized by the majority as a tool to ensure fairness in awarding damages, was very convincing. ��§504(b) only allows a plaintiff to recover profits attributed to the infringement in question, and only those profits less “deductible expenses incurred in generating those profits.” However, the dissent rightly notes that fairness is not guaranteed. A plaintiff’s purposeful delay could mean that by the time a claim is filed the defendant may have recovered the majority of his or her expenses. Thus, a defendant that has devoted years to producing a work can lose their future profit stream to the plaintiff who waited in the shadows for the work to move out of the red, the plaintiff who will make more now than they would have had royalties and a licence been negotiated at the onset.

The Aftermath

Petrella is not just a bold statement about the doctrine of laches, but also greatly impacts the entertainment industry as it functions today. Movie studios, for example, will always be wondering if the film they put out twenty years ago may be subject to a lawsuit tomorrow. This may not be a bad thing however. According to lawyer :��“Now [studios] are going to have to be more vigilant, search their titles more, communicate more with copyright holders.” Copyright holders in turn will have to be more aware of the practices of studios, looking out for revivals of past forgotten works. The expectation for both sides of the copyright battle to do their due diligence in the creation of future works is in my opinion a happy consequence.

It is not yet clear how the decision may impact pending copyright infringement concerns for works already in existence. Commentators have discussed what the ruling might mean for the current infringement claim against�� Led Zepplin relating to their song��“”, and whether Stan Lee Media Inc. may be able to assert ownership over ��- a claim that has been dismissed in the past as “time-barred”. Lawyer believes that, “We can expect a flood of new lawsuits based on purported infringement of films, television programs, music and other copyrighted materials that were created decades ago but are still exploited today.” A statement all so true in this era of revivals and re-releases (exactly how many Spidermans have there been?)

Concluding Thoughts

I think it is a positive consequence of the ruling that both large studios and individual creators alike will now have an increased level of accountability when it comes to being aware of each other’s actions when releasing new works. ��However, with no way to shut out old claims, organizations may find themselves digging through files in an attic in order to defend against lawsuits for works possibly released before the company’s lawyers were born. In a way, there will be no sense of finality or completeness in the entertainment industry if creative works are forever vulnerable to lawsuit. What’s immortalized through film or script or song will essentially also live forever in the eyes of the law.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Has the Supreme Court Delivered a Knock-Out Blow to the Entertainment Industry? appeared first on IPOsgoode.

The Issue at Hand

According to the , in 2008 WREAL registered its FyreTV® and FyreTV.com® trade-marks for its on-demand pornography streaming service. Its service is accessible through the FyreTV® website, set-top box, and a few third-parties. On April 2, 2014, Amazon launched its set-top box named .��It is described as “a tiny box you connect to your HDTV” with video streaming capabilities and other features like child-friendly profiles and voice activated controls. WREAL contends that Amazon’s Fire TV performs “a substantially similar, if not identical, function” to the FyreTV® set-top box. This “function” is identified as access to a library of streaming videos that can be accessed by a consumer at home. WREAL argues that Amazon’s use of the Fire TV name has, and will, continue to cause serious and irreparable harm to WREAL’s established business.

Trade-mark Infringement and the U.S. Law

Under 15 USC § 1114 of the ,��trade-mark infringement occurs when “any reproduction, counterfeit, copy, or colorable imitation of a registered mark” is used in the sale, distribution or advertising of a good or service, or in connection with a use that is likely to “cause confusion, or cause mistake, or to deceive.” To determine if a registered mark has been infringed, American courts look to the “likelihood of confusion” test. The test considers eight factors, recognized as the “Polaroid Factors” as established in .

Will FyreTV Sizzle or Succeed?

��According to WREAL’s , it seems as if the company’s primary points of contention with Amazon are the similarities between “FyreTV” and “Fire TV”, and the documented confusion amongst consumers regarding the two names – similarity and confusion being two important “.” Such factors are aggravated by the wide reach of Amazon’s marketing capabilities compared to the smaller market-influence of WREAL. As such, confusion has allegedly led many consumers to assume that “Fire TV” belongs to Amazon, leading to the possibility of WREAL’s products being viewed as lesser-valued imitations.

FyreTV® and Fire TV are very similar language-wise. Despite the spelling difference, both are pronounced in the same way. ��The possibility for confusion is perpetuated by the fact that FyreTV® owns “FireTV.com.” As a result, if FireTV.com is typed into an Internet browser (Warning: DO NOT try this at work), it redirects to FyreTV.com®. WREAL included in its complaint various examples of consumers identifying the FireTV.com redirect and being confused as to whether WREAL and Amazon had merged. CNBC also ran an article on the day of Amazon’s Fire TV launch entitled “.” With so much immediate discussion by media and consumers alike, it is arguably difficult for Amazon to deny that confusion was created by the launch of its set-top box with the Fire TV name.

WREAL further contends that Amazon knew that FyreTV® was a registered mark. WREAL submits that had Amazon followed its past practice of registering domain names for major products, as it did for the Kindle, it would have likely attempted to register FireTV.com. Consequently, Amazon would have visited the domain name and seen the redirect. They would also have searched the name on the (TESS), finding that when “FireTV” is searched FyreTV® and FyreTV.com® appear – a result I was able to duplicate myself.

How May Amazon Respond?

Amazon may reply that there is a significant difference between the two products, as FyreTV® strictly streams adult entertainment. However, WREAL does state in its complaint that they have no intention of limiting the FyreTV® brand to adult content. Furthermore, CNBC that when Fire TV was launched WREAL did not mention its device on its website, and that silence from the corporation had many believing that WREAL had folded. We can possibly speculate that "FyreTV” was not considered to be an active brand, or specifically an available-for-purchase video streaming device, and thus not a problem in Amazon’s eyes.

Conclusion

So who will emerge from the flames victorious? In my opinion, the evidence does seem stacked against Amazon. The clear confusion demonstrated by various consumers and media as soon as Fire TV was launched, along with the apparent lack of due diligence by Amazon in searching "Fire TV" both on the Internet and TESS, leads to my conclusion that Amazon has not responded to the complaint because it is trying to figure out how to put out this fire. We must ask, however, how Amazon’s size and power may influence the outcome of this case. Will Amazon push for a settlement, which the admittedly smaller and less-influential WREAL will be drawn to? What does that mean for cases between larger companies infringing on the registered marks of smaller organizations? Can the value of a smaller group’s mark really be protected; can they really win the battle? Or, does the publicity that cases like this bring benefit��smaller companies��as a way to ensure that grand corporations like Amazon follow the rules? Maybe these questions will be answered as this case progresses, but either way I know I’ll be tuned into this channel to see which “fire” is put out.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Will Amazon Get Burned for Playing with Fyre? appeared first on IPOsgoode.