2nd Circuit’s Safe Harbor Ruling Influences 9th Circuit to Reconsider: What’s an ISP to do?

Many Internet Service Providers (ISP) assume that take-down requirements with respect to copyright claims are fairly standard and that they can readily avoid copyright liability for posts by users by following some simple rules. The activity in the Courts on the Circuit Courts on this issue shows otherwise.

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Art Imitates Art: “Pictures Generation” Artist Richard Prince and Fair Use

The Fair Use doctrine allows others to use copyrighted material without the copyright holder’s permission under certain circumstances. It sets limits on the exclusive rights copyright law grants copyright owners: the rights to reproduce, distribute, perform, display and make derivative works. Originally a judicially created exception[1], Congress incorporated the fair use exception as a defense into the Copyright Act of 1976 under section 107. 

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France Gives the "Feu Vert" to Google Books

The United States has yet to reach an agreement over the Google digital books project, but France, a literary haven and copyright devotee, has forged ahead. With what its supporters have praised as a tool for bringing out-of-print books into the hands of new readers, the Google digital books project has sought to digitally scan collections of current and out-of-print books to create a massive digital collection on Google’s database.

Similar to the Author’s Guild class action lawsuit against Google for the alleged infringement of thousands of copyrights, the French Publishers Association and the Société des Gens de Lettres, an authors’ group, filed a lawsuit charging that Google’s digital book scanning infringed French copyright laws. However, the French publishers and authors’ group have recently dropped their six-year lawsuit and reached an agreement that would allow Google to scan books and offer digital copies for sale. This agreement will make France the first country to have an industry-wide standard for digitizing books.

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Universities and Professors Consider Possible Shifts in the IP Interest “Balance”

Who controls intellectual property that is the product of grant-funded faculty research and work in a university environment? Are the "inventions" of professors essentially the result of their positions and participation in a research environment and, as such, like those of an employee produced in the course of employment with a private company? Should written works of authorship – articles, scholarship, books, and textbooks – be treated differently from medical, biotech, or software advances that professors create or contribute to? What about the input from students, especially specialized graduate students, in the process? Should the contributions of third-party industry funds to research and development in the university setting be acknowledged with intellectual property interests? Are the creative products of professors ever “works for hire” for their universities? The American Association of University Professors (AAUP) doesn’t think so.

Two weeks ago the AAUP released a draft version of its report, “Recommended Principles & Practices to Guide Academy-Industry Relationships,” with 21 new guidelines for governing the relationship between academia and industry. Much of the 300-page report recommends already familiar principles for maintaining the integrity of academic research, but it also contains new recommendations with the controversial (for some) aim of giving faculty members more ownership interests in the products of their research than many universities currently allow.

The section entitled, “General Principles to Guide Management of Intellectual Property (IP)”, contains 11 principles that would gird up a structure where the intellectual-property interests of faculty “extend to decisions involving the management, intellectual property (IP), licensing, commercialization, dissemination, and public use” of their inventions.  It also calls for faculty senates or equivalent faculty-governing bodies to play a key role in setting policies dealing with faculty inventions. And, it suggests a process for effecting the enhancement of faculty rights: universities “should not undertake intellectual property or legal actions directly or indirectly affecting a faculty member’s research, inventions, instruction, or public service without the faculty member’s and/or the inventor’s express consent.”

It’s not surprising that the AAUP decided to draft new guidelines governing IP at this time. Before this week, many of AAUP’s most-recent documents had been criticized as archaic in light of increasing commercial sponsorship of university research. Further, a U.S. Supreme Court decision about intellectual-property rights published a year ago focused attention on the issues. Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc., 131 S.Ct. 2188 (2011), held that neither universities that receive federal research grants nor the government itself has an automatic right to patents or inventions that may result from federally financed research. The ruling was initially praised by many as providing stronger support to the intellectual-property claims of individual university faculty members. Still, it didn’t offer a practical solution and, in some instances, may have back-fired on faculty stakeholders. As the AAUP reports, many “universities have responded by announcing, or weaving into faculty contracts, policies declaring they have the rights to faculty members' inventions.”

The AAUP and the report explain that because faculty have little bargaining power at the time of hiring, for instance when Ph.D. candidates are offered tenure-track jobs, they are susceptible to institutional pressures. New faculty typically sign away their invention rights without objection or much foresight about the issues, sometimes for their entire careers.

While the AAUP contends that the new changes are proposed to promote the long term interests of both universities and private industry, as well as to protect faculty interests, the report faces opposition from other important academic organizations that say they, too, are balancing the needs of universities, industry and other stakeholders which may have been overlooked.  The Association of American Universities (AAU), which represents leading public and private research universities, and the Association of University Technology Managers (AUTM) were extremely critical of the draft version of the AAUP report, especially its recommendations regarding intellectual property rights. AAU and AUTM argue that laws currently in place, like the Bayh-Dole Act of 1980 (which governs IP issues arising from federally sponsored research; permitting universities, instead of the government, to hold title to inventions), adequately address the IP issues that arise between researchers, universities and private industry.

AUTM’s vice president for advocacy opposes the recommendations because they "oversimplify the incredibly complex, nuanced process of academic technology transfer.” In addition, many believe that the recommendations overlook the fact that most university research is the product of more than one professor or department, usually involves a team of faculty and students and, sometimes, even more than one university.  AUTM also said that the report "assumes that faculty alone are the most qualified to make decisions about how and to whom technologies are licensed." AAU and AUTM believe that license negotiations should be handled by those trained and experienced in balancing all stakeholder interests, those of universities, faculty, funders, students and the larger society. Of course, bringing in experts to manage negotiations does not mean that enhanced interests or participation cannot be given to certain constituents.

The debate surrounding assignment and ownership of inventions by employees or employers is nothing new. There are state statutes and a large body of case law on the matter.[1] The AAUP draft report is part of the intense legal activity concerning IP ownership and scope of employment. It’s not surprising that there’s a lot of talk about this report and its IP issues, and it’s not surprising there are no easy or uniform answers. There will be intense discussions about any kind of rule proposed to structure academic relationships and faculty interests. And a lot of proposed exceptions are to be expected in a sometimes rarefied world where relationships are defined in contrast to the “standard” of employee-employer, and where “academic freedom” and the unfettered exchange of knowledge and ideas are paramount values.  

In addition to the new guidelines concerning IP management, the report has sections devoted to strategic corporate alliances and mechanisms for addressing potential conflicts of interest that can undermine research integrity. The report recommends a number of measures to encourage transparent public reporting of professors' industry ties and discourages certain kinds of relationships that may distort professors’ public-knowledge functions.[2]

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[1]  As one of many examples, the California Labor Code § 2870 bars the assignment to an employer of inventions developed on an employee's own time, unless (1) the employee used the employer's materials or information; (2) the invention relates at the time of conception or practice to the employer's business, or actual or demonstrably anticipated research or development of the employer; or (3) the invention results from work performed by the employee for the employer. See also Mattel, Inc. v. MGA Entertainment, Inc., C.A.9 (Cal.)2010, 616 F.3d 904, 96 U.S.P.Q.2d 1012 (where employment agreement did not unambiguously require assignment of employee's idea for a new line of fashion dolls; contract specified that “inventions” included all discoveries, improvements, processes, developments, designs, know-how, data computer programs and formulae, but did not mention “ideas”).  

[2] The report cites the BP oil spill in 2010 where BP’s contract with academic scientists imposed a three year confidentiality restriction that later put scientists in a bind when the federal government sought them out as expert witnesses; BP imposed gag orders based on its contract. See “BP Buys Up Gulf Scientists for Legal Defense, Roiling Academic Community,” Mobile PressRegister, July 16, 2010; “BP Accused of ‘Buying Academic Silence,” BBC News, July 22, 2010; “BP Tries to Limit Release of Oil Spill Research,” Associated Press, July 23,2010. It also address concerns such as faculty or institutions promising or implying to deliver predetermined research results; masquerading "marketing projects” as scientifically driven clinical trial research;" and undertaking "seeding studies" from pharmaceutical companies mainly to introduce doctors and their patients to new drugs.

“Here’s Looking at You, Kid”: That’s Not London Fog in the Moroccan Mist

Burberry has made extensive social media efforts this year to tell the public how its iconic look and status developed over time. Companies, like Burberry, with a visual history to promote, are especially attracted to Facebook’s Timeline. 

Timeline lets users post stories and pictures in chronological order. Visitors scroll down on a Facebook page and go back in time to the initial creation of a product. 

The company can create a nostalgic connection between the visitor and the brand. The Facebook Timeline for this “156 year-old global brand with a distinctly British attitude” includes photos of Burberry’s first store opening in 1856, images of pilots wearing Burberry aviator suits, and pictures of its classic trench coat through the years. 

Then Burberry posted a photo of Humphrey Bogart (Rick) wearing an actual Burberry trench coat in that sublime final scene of the film Casablanca, where Rick stands on the foggy runway, one of “three little people” whose problems “don't amount to a hill of beans in this crazy world…” The Burberry caption underneath the photo reads: “Humphrey Bogart wearing a trench coat in the final scene of Casablanca (1942).”

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Google Disclosures

Last month Google announced a new addition to its website’s Transparency Report. 

Google has decided to release information on the number of requests it recieves from copyright owners (and the organizations that represent them) to remove Google Search results that allegedly link to infringing content. 

Google's senior copyright counsel Fred von Lohmann writes on Google's blog, “We believe that openness is crucial for the future of the Internet. 

When something gets in the way of the free flow of information, we believe there should be transparency around what that block might be.” It’s no surprise that entertainment giants are at the top, notably, Microsoft Corporation, NBC Universal, British Recorded Industry and the RIAA. 

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Obama’s Campaign Committee Sues Online Vendor for Trademark Infringement

Rising Sun Trademark

Last week President Obama’s campaign committee, Obama for America, filed a trademark infringement lawsuit against an online vendor, DemStore.com, for allegedly using the campaign’s trademarked logo without permission. 

The campaign sent DemStore.com two “cease and desist” letters last year, but the company did not stop using the logos. DemStore has sold merchandise supporting Democratic candidates since 1985, and currently sells Obama election merchandise bearing two logos that belong to Obama for America. 

The two logos at issue are the “Rising Sun” logo, which Obama for America has owned under a federally registered trademark since 2008; and the “2102 Rising Sun” logo, for which it has a pending federal trademark application.

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Viacom v. YouTube Brings About a Sea of Change in the Safe Harbor

Over the past decade, websites and Internet Service Providers (ISPs) have learned to rely on the takedown procedures of the Digital Millennium Copyright Act (DMCA) in order to generally avoid copyright infringement liability imposed by content owners. 

ISPs have been able to shield themselves from all liability form their users posting infringing material by having a proper takedown system in place. But, a recent Second Circuit case undermines that level of confidence in takedown procedures. The Second Circuit Court of Appeals is the first U.S. court to decide that ISPs may still be liable for copyright infringement even after complying with the takedown provisions of the DMCA.  

As a result, the underlying questions remain: should intermediaries be held liable for their users infringing actions? If so, then to what extent?  Where does the law now draw the line? How can a website owner or ISP best protect itself when posting content provided by others?

I write more about this here

German Court Ordered Google to Do More to Prevent Copyright Violations on YouTube

A German court ordered Google to install filters on its YouTube services in Germany in order to detect and stop people from accessing copyright infringing material.

I wrote about the Google decision on my own website