Thoughts on current legal news in media, technology and the arts

Public Association Trademarks: The Case of the New York Yankees and the Evil Empire

Posted: Thursday, March 14, 2013 | Posted by Lizbeth Hasse, Esq. | Labels: , 0 comments

Every once in a while, a court issues a decision reminding us that we may have rights we’ve never known about or sought to assert. This time the Trademark Trial and Appeal Board (TTAB) has given the New York Yankees more than they initially sought to claim for themselves. 

Last month, a panel of TTAB judges held that the New York Yankees could prevent Evil Enterprises, Inc. from using the phrase BASEBALLS EVIL EMPIRE on clothing because the public had, in fact, come to regard the New York Yankees as, the “evil empire” of Major League Baseball.

Remarkably, the Yankees (as well as Major League Baseball and the Baseball Commissioner whose legal action the Yankees joined) prevailed in their opposition to Evil Enterprises application for trademark registration even though the Yankees had never sought to use the phrase themselves in connection with any goods or services. This is possible because “if the public has come to associate [a] term with [a] company or its goods or services,” the company “may have a ‘protectable property right in the term’.” Big Blue Prods. Inc. v. Int’l Bus. Machines Corp., 19 USPQ2d 1072, 1074 (TTAB 1991). 

In 2002, when the Yankees signed Jose Contreras for $32M, Larry Lucchino, President of the rival Red Sox, described the pinstriped club as an “evil empire extend[ing] its tentacles even into Latin America.” According to the TTAB, the epithet stuck: “We have no doubt that EVIL EMPIRE, in the world of baseball at a minimum, has become famous in identifying the Yankees….” Consequently, Evil Enterprises’ use of the moniker on its apparel would likely confuse consumers into believing that its products were associated with or endorsed by the Bronx Bombers. The conclusion, from a trademark perspective: “we find that [the Yankees] have a protectable trademark right in the term…as used in connection with baseball.”

Greg Dunne, the lawyer who initially filed the trademark application for Evil back in 2008, and waged this long losing battle for the company, said his client may appeal: “We disagree with the opinion because we don’t think ‘Evil Empire’ exclusively refers to the Yankees anymore. You’ve seen it used with the Phillies, the Rangers and other teams,” he said. That observation won’t win Evil Enterprises any trademark points or support its application for a registration, but it could undermine any particular team’s or business’ rights to claim exclusive use of the phrase in the sports or sporting apparel world. Not a point Evil Enterprises is likely to want to pay its attorney to advance, nor one the Yankees have sought to contest.

So, the Yankees have “won” this match, but they are up against the Jedi Sox for three games starting April 1.


California Attorney General Provides Mobile App Privacy Checklist: Guidance for App Developers, Distributors, Advertisers

Posted: Wednesday, March 6, 2013 | Posted by Lizbeth Hasse, Esq. | Labels: , , , , 0 comments

The Fly Delta App is the subject of
a pending lawsuit by Harris.

As discussed in a previous Creative Industry Law blog post, California Attorney General Kamala Harris began a two-pronged enforcement strategy last year to bring mobile app developers, platform providers, and mobile ad networks in line with California’s Online Privacy and Protection Act (“COPPA”). The AG sent notices of non-compliance to offending entities (a sample notice letter can be found here). In December, selected lawsuits were filed (e.g., Harris’ action against Delta). Recently, the Attorney General’s office released Privacy on the Go, a set of guidelines to help those involved in mobile app development, distribution platforms, and advertising to better understand how to meet California’s OPPA’s requirements.

For app developers, the guidelines recommend constructing a data checklist that accounts for all personally identifiable information (“PII”) an app could collect. Developers are also advised to avoid, if possible, any unnecessary collection of PII. App developers should be sure their privacy policy is “clear, accurate, and conspicuously accessible to users and potential users.” As previously mentioned, to be conspicuous, privacy policies must be accessible from within an application itself. Posting a policy on an independent website will not suffice.

Also, a policy must be “holistic” to meet COPPA requirements. It must specify the PII it gathers, how it will be used, whether it will be shared, and whether the user retains any control over that information or not. The AG recommends that privacy policies open with a short, clear synopsis of their terms, and that developers offer users privacy settings to control how their data will be used.

Recognizing that platform providers play an important role in making consumers aware of rights and threats to privacy, the AG’s office also recommends that privacy policies be accessible from an app store, or other platform, so that consumers can review privacy information before making a download decision.

The role of operating system managers is also recognized. They are encouraged to put global privacy settings in place to provide users with a convenient means of controlling the data all their apps may utilize.

The most controversial of Harris’ recommendations concerns advertisers. Privacy on the Go suggests that advertisers should “avoid” delivering out-of-app ads that direct browsers to an advertiser’s URL or place icons on the device’s desktop. It further advises advertisers to cease their use of device-specific identifiers, which advertising engines may exploit to identify a consumer, in favor of less personally intrusive app-specific or temporary device identifiers.

These hortatory directives to the advertiser have drawn the ire of some important ad groups including the Direct Marketing Association, the Interactive Advertising Bureau, the American Advertising Federation, the Association of National Advertisers, the American Association of Advertising Agencies, and others. Charging the Attorney General with bias for the perspective of “the privacy, academic, and mobile app community,” the groups complain in an open letter that the office’s guidelines go beyond what the law requires and will “create uncertainty in the marketplace, raise unnecessary costs for business, restrict innovation, slow economic growth, reduce benefits for consumers, and result in job losses” (a familiar litany in the regulatory world).

Will Privacy on the Go come to be regarded as a set of guiding principles to promote better compliance with COPPA goals, or will it evolve into a more substantive legal standard? Will it be helpful or confusing? At the early stages of COPPA application standards are still unformulated, and either could happen. As the AG brings more enforcement actions in the context of this lively debate, we may begin to discern where on the spectrum between rulebook and recommendations specific preferred practices fall. Meanwhile, Privacy on the Go provides a useful checklist for app developer and distributors alike. Take a look at it here.        

Trademark Applications Web Specimens: the USPTO Releases New Guidelines

Posted: | Posted by Lizbeth Hasse, Esq. | Labels: , , 0 comments


Because so many companies market their goods and services online, owners and management naturally expect that their branded websites will be good specimens to support their applications for trademark registration and extensions. Websites are usually excellent and appropriate demonstrations of the use of a trademark. But, companies are well-advised to use extra care when submitting a website sample as a supporting specimen for trademark registration; the USPTO’s examination of them is especially exacting. If it finds the specimen insufficient, the consequence may be long delays in the application process and possible rejection of the mark.

As background, trademarks are intended to protect consumers from confusion about the source of goods and services. US trademark registration is based on use in interstate commerce, and requires a declaration that a mark is in actual use in order to entitle a would-be trademark holder to final registration. To demonstrate use in commerce, applicants submit samples showing the brand being employed to actually sell, or offer for sale, the goods or services in question. An appropriate specimen for goods might be a product’s packaging or a point of sale display showing the mark affixed to or next to a product and the price at which it is offered to consumers. For services, a brochure or advertisement might describe a company’s service, its pricing structure and how the service is contracted for.

Applicants must take heed that the USPTO applies not only a “commerce,” but also an “interstate commerce” requirement. Worldwide websites often seem the obvious solution to the requirement that a specimen show use in multiple states. But according to recent guidelines released by the USPTO, websites will only suffice under certain fairly defined circumstances.

First, the sample must contain either a picture or textual description of the goods or services offered. Also, if the website is intended to demonstrate use of the mark for goods or services in several classes of use, i.e. kitchen equipment (Class 21), aprons (Class 25), and cooking classes (Class 41), each class must be represented in the specimen provided.

A shot from American Apparel's homepage showing their mark,
goods associated with it, and a link to order them.
Second, the mark must be prominently displayed in the website specimen on or next to the associated goods or services. What does prominently mean?  Applicants should ensure that the website distinguishes the mark from surrounding text by using a different font, stylization, color, or position. The mark should look like a brand for the goods or services.

Finally, the web specimen should provide the information necessary to purchase the goods or services. This typically includes their price as well as a method for ordering them, such as a 1-800 number, an order form, or “checkout” button. 

Having a web specimen that incorporates the requisite elements will significantly streamline the registration process. Months can pass before the USPTO issues its office action to inform an applicant that a specimen is deficient. Then the applicant is challenged to find an appropriate specimen that was in existence at the time of the use date stated in the application. If an owner expects a website to support a trademark application or a demonstration of continued use, a company and its web developer should consider these trademark application standards at the time the website is being constructed. These best practices go a long way toward efficiently establishing the trademark protection companies value.  

Mobile Apps and Terms of Use: the Instagram Debacle

Posted: Tuesday, January 29, 2013 | Posted by Lizbeth Hasse, Esq. | Labels: , , , , , 1 comments


Mobile app developers frequently need to update their Terms of Use, prompting the familiar but often ignored, “Terms & Conditions Have Changed” iPhone alert. The updates usually accompany new technologies and services, and do not represent policy shifts or noticeable service changes; hence the heedless recipient. But as the recent Instagram controversy shows, providers should avoid hiding big changes in small print.

Instagram is a mobile application downloaded by more than 80 million users to date. It allows users to stylize and share photographs and other images using a variety of preset filters. Late last year, Instagram unveiled its new Terms of Use policy that included the following clause:

“You agree that a business or other entity may pay us to display your username, likeness, photos (along with any associated metadata), and/or actions you take, in connection with paid or sponsored content or promotions, without any compensation to you.”

Thus, it seemed, by uploading photos to Instagram, users were deemed to have consented to use by others of the images for advertising materials. To add injury to insult, users would be neither notified nor compensated for this use of their images.

Alert users did take notice of this “update.” The internet erupted in a firestorm of criticism as well as widely circulated articles from Gizmodo, Slate, CNET, Wired, Mashable and major news outfits like the New York Times disparaged Instagram’s “Instagrab.”  The public relations nightmare, coming three months after Facebook completed its acquisition of the photo-sharing site, resulted in the unique coming together of Pink with Kim Kardashian, and prompted an abrupt about face and mea culpa from CEO Kevin Systrom, who insisted, “Instagram has no intention of selling your photos, and we never did. We don’t own your photos, you do.” It appears as if Instagram was not really seeking to steal and profit from misappropriation, but probably issuing an overbroad provision to try to protect itself for the future or in the event of inadvertent uses of users’ images.

Unfortunately, Instagram’s retraction was too little too late. The app continues to hemorrhage active users. It also found itself the subject of a lawsuit challenging the class action waiver and liability cap in their revised Terms of Use. (Given the approval of clearly worded and conspicuously posted class action waivers by the U.S. Supreme Court in 2011, AT&T Mobility v. Concepcion, this challenge won’t be an easy one.)

Now a month later, the storm has calmed, but not disappeared. Instagram’s amended Terms of Use went into effect on January 19. Stories continue about the application’s fate, the sufficiency of its privacy settings, and data privacy in general. The new rights language is similar to that found on many file sharing apps: “… you hereby grant Instagram a non-exclusive, fully paid and royalty free, transferable sub-licensed worldwide license to use the Content that you post in or through the Service, subject to the Service’s privacy policy…” The impact of the controversy on the app’s market remains. Almost half of Instagram’s daily users have abandoned the application. According to AppStats, a service that monitors the usages of apps by those logged in through Facebook, Instagram’s active daily users declined to 8.42 million from 16.35 million the day before the ill-fated announcement. Although Facebook argues this data does not show the complete picture, the extent of the losses Instagram may have sustained should put all app developers on guard.

A caveat to app developers who think Terms of Use and Privacy are largely “boiler plate” or that revisions to them are a simple matter of course: when creating a social network, developers should not underestimate the community they bringing into being. Users are often sophisticated and vigilant about their online rights, and they know how to demand respect.

Mobile Apps and Consumer Privacy: California is Setting a New Standard for App Developers

Posted: Tuesday, December 18, 2012 | Posted by Lizbeth Hasse, Esq. | Labels: , , , 0 comments

California Attorney General Kamala Harris

Do your mobile apps run afoul of California’s privacy laws?  About one hundred mobile application developers are discovering that their products might be “illegal,” and many others now have to worry.  California Attorney General Kamala Harris, consistent with her commitment to consumer privacy interests, has begun to send non-compliance letters to companies like United Airlines and OpenTable, whose applications not only offer consumers the convenience of tracking their flights or making dinner reservations, but also collect information about their preferences through their smartphones.  The letters, which the AG’s office started sending in November, warn of a $2,500 fine for each copy of a non-compliant app downloaded by a California consumer.  Developers were given thirty days to respond. 

This is yet one more battleground as the law tries to catch up with the pace of technology (and vice versa).  At issue is whether the privacy policies these companies must post are conspicuous and reasonably accessible for consumers.  The California Online Privacy Protection Act (“CalOPPA”) requires that mobile application providers (“online service providers” within the language of the Act) post privacy policies describing the “personally identifiable information” (“PII”) their products gather, how that information will be used or shared, and the processes in place for a user to review and edit their PII.
 
The CalOPPA also requires this disclosure to be “reasonably accessible” to consumers.  For companies developing mobile applications, providing a privacy policy website, accessible only outside of the app, may not be enough.  Mobile developers must either post the policy or include a link to the policy within the app itself.

Harris’ action follows an agreement reached in February with Amazon, Apple, Google, Hewlett-Packard, Microsoft and Research In Motion, which together comprise the bulk of the mobile application market and are the industry’s largest accumulators of consumer data.  These six developers agreed not only to formulate privacy policies compliant with the CalOPPA’s requirements, but also to make these policies available to consumers before they download the application.
    
LinkedIn's in-app privacy policy
Going forward, entities developing applications that capture Californians’ personally identifiable information must carefully examine their privacy practices to avoid enforcement action by the California Attorney General.  Best practices include a carefully drafted privacy policy that clearly articulates what information an app will gather, how it will be used, whether and when it will be shared, and the consumer’s right to review and edit their collected data.  The policy should be accessible within the application, either on a separate screen or through a link.  A company may also choose to make the policy automatically available to consumers, in advance, on the platform from which the application is purchased (e.g., Apple’s App Store or GooglePlay) in order to bring itself in line with standards now being set by the large corporations that have already worked through the particulars with the AG’s Office.

There is a further caveat for app developers and providers.  Don’t forget that privacy policies create their own teeth and can bite back.  That is, a policy may be held to constitute a contractual obligation between the company and the consumer who agrees to it.  Thus, failing to provide the protections that a policy promises may subject a provider not only to an enforcement action from the Attorney General’s office (when, for example, the CalOPPA has been violated), but also to claims by consumers (perhaps many thousands of them in the case of a popular app) that a contract has been breached.  For example, in Claridge v. RockYou (2011), a judge in the Northern District of California allowed a class action to go forward where RockYou represented their servers as “secure” in its privacy policy despite its knowledge of security issues with its database.  RockYou later settled the action.

Although the Los Angeles Times reports that the state will “give app makers time to craft a privacy policy and fall into line with California law,” Harris has sent a clear message: her newly created Privacy Enforcement and Protection Unit will enforce the Golden State’s privacy laws.  A barrage of warning letters may sound relatively benign, but this is an opening salvo to what appears to be a vigorous litigation strategy.  On December 6, the Attorney General sued Delta Airlines in a San Francisco Superior Court for its failure to respond to a thirty-day warning letter concerning its Fly Delta app for mobile devices.  The complaint alleges that Delta’s application stores users’ credit and debit card information, geo-location information and photographs, and that Delta has “knowingly and willfully” or “negligently and materially” failed to disclose how it collects, manages, or shares this information.  The lawsuit seeks $2,500 in damages for each violation of the CalOPPA, which could quickly add up to given the fact that the Fly Delta app has been downloaded by millions of users already.  With the swiftness of the Attorney General’s action and the extent of relief that CalOPPA affords, any business seeking to reach California consumers through a mobile app must take heed.  And as we know, especially in the technology world, as California goes, so goes the country …  

The Lively Jurisprudence of Dead Celebrities: Albert Einstein, New Jersey, and the Post-Mortem Right of Publicity

Posted: Wednesday, December 5, 2012 | Posted by Lizbeth Hasse, Esq. | Labels: 0 comments

Will your image live longer than you do?  Artists, celebrities, and other creatives often invest substantial time and effort cultivating a personal brand image, and most likely anticipate its longevity.  The law recognizes a person’s right to profit from this investment by preventing third parties from “free riding” on a famous individual’s name or likeness.  A majority of states recognize this “right of publicity,” but vary as to whether this right should outlast its initial rightsholder and for how long.  In some, like New York, the right is extinguished with the death of the individual.  But in others, including California, the right of publicity constitutes personal property that can be passed on to ones’ heirs.

How long should an heir expect to control the inherited value of a celebrity’s image?  Some state statutes set explicit time frames.  For example, in California, where Hollywood has a stake in protecting personal images, the Celebrities Rights Act allows holders of publicity rights to sue for infringement for up to 70 years after the personality’s death.  This corresponds to the protection copyright law currently affords to creative works.  In contrast, fame in Virginia is short-lived; its law bars right of publicity actions commenced more than twenty years after the individual’s death.  One wonders if this variation reflects a difference in the perceived half-life of a Hollywood star’s commercial image versus that of a beltway politician.

Most states follow a common law approach and have allowed courts to decide the duration of the post-mortem right.  But not all state courts have had the opportunity to do so.  This is the case with New Jersey; its post-mortem right of publicity was recently the subject of a highly publicized lawsuit brought in California by the Hebrew University of Jerusalem against General Motors.
   
The case began with a single GM ad in People Magazine’s 2009 Sexiest Man Alive edition.  The ad, for GM’s 2010 Terrain vehicle, featured a photo of Albert Einstein’s head digitally grafted onto an extremely athletic physique.  GM captioned the image with the slogan “Ideas Are Sexy Too,” playing with the theme of the magazine and marketing its brand as smart and seductive.
 The ad caught the attention of Hebrew University, which had obtained “all [of Einstein’s] publication rights … of any and every kind whatsoever” from Einstein’s secretary and stepdaughter who held them in trust.  Even though Einstein had not expressly devised his “publicity rights,” the University had leveraged the Einstein gift into an $18 million licensing program by attracting dozens of high-profile corporations like Apple, Panasonic, and Warner Bros. which sought to trade on the genius’ name and likeness.  By using Einstein’s face without a license, the University alleged that GM falsely implied an endorsement and undermined the University’s legitimate business interests in the famous relativist’s publicity rights.

The case, Hebrew University of Jerusalem v. General Motors LLC, was filed in 2010 in the U.S. District Court for the Central District of California.  Still, New Jersey law would be applied to Hebrew University’s claim because the application of post-mortem publicity rights is determined by the place of death of the rightsholder.  Einstein died in Princeton, NJ in 1955.

GM argued that the University had no basis to restrict its use of Einstein’s famous visage. First, GM noted, no New Jersey state court has recognized a post-mortem right of publicity.   Secondly, it argued, even if New Jersey were found to recognize a surviving right in the deceased’s image, it should be conditioned upon his or her having commercially exploited that publicity right while alive.  The District Court rejected both arguments.  Citing a history of cases and treatises, Judge Matz wrote:

There are sound … reasons to allow the heirs of a famous decedent to prevent strangers from exploiting his name, image, reputation and identity, even if the decedent himself did not do so during his lifetime.  … [T]here have been famous people who … renounced wealth or declined to pursue it, and … were revered for their modesty and spirituality.  Surely a part of whatever happiness and satisfaction they derived from being famous came from the realization that they were setting an example for those closest to them—presumably including their heirs.  Such people fairly can be deemed to have “exploited” their fame by developing a persona that showed what they cared most about … [D]eath should not deprive them of the very attribute that they intended to leave as their legacy.

This evocative language clearly sets forth grounds for observing the legacy of a famous individual’s image, perhaps also for limiting the financial exploitation of it to the individual’s heirs.  (One also wonders if Judge Matz isn’t giving grounds potentially for an heir to complain that a joint rightsholder or licensee is not accurately portraying the deceased’s image in its exploitation.)  The question of how long such a personal property right ought to be enforceable is not self-evident.  No state court in New Jersey had considered the issue. (Although the New Jersey legislature twice considered a 70-year term as part of the “Celebrity Image Protection Act,” that bill failed on each occasion.)  In the absence of New Jersey authority to determine the duration of the post-mortem right, the District Court in California considered the nature of the right itself, the laws of sister states, and public policy.     
 
Judge Matz noted that the right of publicity developed, historically, within the context of privacy rights, as a means of guarding against invasion of privacy and protecting personal dignity.  Over time, right of publicity jurisprudence moved from the privacy framework in which it originated and, as its commercial value grew, became more aligned with intellectual property rights, which protect against unjust enrichment or consumer deception through the infringement of creative “intangible” property.  Major legal treatises, such as the American Law Institute’s Restatement (Third) of Unfair Competition, “codify” this contemporary understanding of the right of publicity.  Because New Jersey courts generally align with the Restatement, the court in California determined that New Jersey would likely follow an intellectual property-type approach as well, perhaps analogous to trademark or copyright law.

From a trademark perspective, the question then becomes: how long does a person’s name, image or likeness function as a signifier of goodwill?  The court suggests that this issue involves a test familiar in advertising and trademark law: would a viewer of a famous name, image or likeness infer that the celebrity, or his or her heirs, endorsed the product to which it was attached?  The likelihood of such an inference diminishes after death, but it does not disappear.  In fact, the success of Hebrew University’s licensing program demonstrates the continued viability of Einstein’s image as a signifier of genius, science, and education.  The court, observing that it was unlikely any viewer of the ad would reasonably infer that Einstein (or his heir) was endorsing the GMC Terrain, made an assessment that the duration of the post-mortem right of publicity ought to be no more than 50 years.  (The decision appears to leave open the possibility that the viewer’s assessment might have been different if the ad had been for a fountain pen.) 

Taking a copyright perspective, Hebrew University argued that the post-mortem right should be coterminous with the current Copyright Act, which provides for 70 years of protection after death.  The court disagreed for a number of reasons.  First, under this theory, the University could have initially expected no more than 50 years of post-mortem protection because, in 1982 when it acquired Einstein’s publicity rights, the 1976 Copyright Act only afforded 50 years of protection after the death of the originator.  Secondly, the court noted that copyright and publicity rights emerge out of different legal regimes and serve different goals.  Grounded in constitutional language, copyright promotes “the useful Arts” by rewarding creatives (and their heirs) with a limited monopoly over the fruits of the artist’s labor.  On the other hand, the right of publicity, for all its commercial appeal, still has a far more personal orientation, protecting the identity of an individual and the general interest in disassociating oneself from personally offensive products or ideas.  Because of these differences in origin and function, the court concluded that, aside from recognizing what the University might have expected, it had no reason to track the duration of publicity rights with that afforded to copyright holders.

For the District Court, all of this pointed to a 50-year post-mortem right in New Jersey.  This particular length of time aligns with the laws of the other states.  Of the thirteen states with statutes expressly providing a post-mortem right of publicity, a majority, seven, limit their duration to 50 years or less.  Further, in the other states where the right has developed at common law, none has yet addressed the issue of when the right ought to expire because most of the actions have been filed within a relatively short time after the testator’s death.

"I belonged to the public and to the world"
By addressing, at some length, the nature, purpose, and national application of the post-mortem right of publicity, the District Court sought to avoid the appearance of imposing an arbitrary limitation on the enforcement of this right.  Still, the arbitrariness lies in the patchwork of state authority that allows Einstein’s heirs to enjoy 50 years of publicity rights after his death in New Jersey, while Marilyn Monroe’s image passes immediately into the hands of the public because she lived in New York at the time of her death. The Balkanized enforcement of this “right” is certain to give headaches to publishers and other distributors that wish to communicate widely over an environment geographically divided in its approach.  For example, in Milton H. Greene Archives Inc. v. Marilyn Monroe LLC, the Ninth Circuit recently rejected the claims of Monroe’s heirs to a right of publicity in her enduring image because, at the time of her death, her executors (seeking advantageous tax treatment) insisted that she was domiciled in New York, which does not recognize the right posthumously.  But, perhaps this is how she would have intended it to be.  After all, contrary to what Monroe LLC might wish, the American icon herself said “I knew I belonged to the public and to the world, not because I was talented or even beautiful, but because I had never belonged to anything or anyone else.”  The post-mortem issue will be taken up again soon with an appeal to the same circuit court of a Washington judge’s decision with respect to Jimi Hendrix’s image in Experience Hendrix, LLC v. Hendrixlicensing.com, LTD which found that state’s post-mortem right of publicity laws to be unconstitutional on full faith and credit and dormant commerce clause grounds.  As with the Marilyn Monroe case, the forum-shopping of the Hendrix estate for a potentially more lucrative domicile for its decedent prompted the court to draw a line.  For those interested in the images of dead physicists and other famous people, the variation among the states promises to keep this jurisprudence lively. 

Big News for Small Copyright Claims?

Posted: Monday, October 29, 2012 | Posted by Lizbeth Hasse, Esq. | Labels: , , 0 comments


Copyright Office considers new proposals for a copyright small claims court, but specifics are still lacking.

The story is familiar to many artists.  A freelance photographer is surprised to find that an online service has reproduced a number of copyrighted images from her website.  She reaches out to the organization with phone calls, offers to license her work for what she considers a reasonable fee, and drafts her own “cease and desist” letter.  These all go unanswered.  Realizing that her only remedy may be to sue, she seeks out an attorney who will file her case in federal court.  But the case is too small; attorneys’ fees are high; it would take at least a year to litigate; and the recovery, if she wins, is uncertain.  In the end, she simply gives up.

In 2006, the United States Copyright Office brought stories like these to the attention of Congress.  In a statement before the subcommittee on intellectual property, the Office noted the costs associated with the federal court system, which has exclusive jurisdiction over copyright cases, and concluded that “[it] is reasonable to ask whether federal courts are hospitable to most small claims.”  Two years later, Congress directed the Office to study the creation of a special network of courts that would hear low-value copyright claims.  As part of its research, the Copyright Office asked for input from interested parties in the creative community.  That commenting period just ended on October 19, and the opinions of artists’ rights organizations, corporations, and intellectual property scholars are ready for review.

Copyright owners, such as the photographer in our example, would generally like to see an inexpensive, easily accessible forum with robust powers to grant and enforce judgments.  Reduced cost and ease of access, they argue, will lead to meaningful enforcement of intellectual property rights.  On the other hand, some worry about the potential danger to small-scale defendants who often settle rather than engage in expensive, lengthy litigation, even if they have valid defenses.  They suggest that a copyright small claims court may end up a mechanism for powerful interests to extract settlements from unsophisticated defendants.

Proposals submitted thus far address these concerns and others.  Foremost among them are the questions of how independent a court of small claims would be, whether it would limit the role of attorneys and the discovery process, whether it would be a voluntary option or mandatory, and where the cap on monetary damages would be placed.

Although the debate continues, a consensus has emerged with respect to at least some of these issues.  For example, a majority of commentators agree that such a court should be instituted outside the federal court system, either at the Copyright Office, or as an independent administrative agency.  State courts do not present a viable alternative since their dockets are already crowded and state court judges have relatively little experience with copyright law.  However, the field is far less unified when it comes to the questions of attorneys, attorneys’ fees, the permissible amount of claims, and the right of appeal.

Recently, the United Kingdom instituted its own “small claims track” in the Patents County Court, which may offer some insight.  The “small claims track” provides a venue for suits under £5,000 where neither lawyers nor experts are required and the rules of evidence are less strict.  Further, judges may grant either monetary damages or permanent injunctions, but are prohibited from entering preliminary injunctions or awarding attorneys’ fees in excess of £200.

While copyright holders laud the UK’s new “small claims track,” it is unlikely that a comparable court will be established in the United States any time soon.  As a next step, panels in New York and Los Angeles will meet next month to consider specific aspects of the many proposals offered.  As the discussion progresses, the many questions raised are sure to receive a hard look from interested parties, and the debate is bound to intensify.

Update: the Copyright Office is extending the time to submit requests to participate in the public meeting to consider remedies for small copyright claims in Los Angeles on November 26 and 27, 2012. Requests to participate are now due by November 9, 2012.

For more information, see www.copyright.gov/docs/smallclaims