JOLT Digest

Written by Raquel Acosta
Edited by Albert Wang and Vicki Blohm
Editorial Policy

I. Introduction

The current copyright framework is becoming obsolete as we try to make a digital world run on an analog legal system. The Copyright Act covers “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be visually perceived, either directly or with the aid of a machine or device.” 17 U.S.C. § 401. The ability of the digital medium to interact dynamically with a user or generate unique visualizations along predefined parameters has enabled many novel forms of art which could not have been foreseen by the drafters of the Copyright Act of 1976.[1] Terms of art such as “fixed” or “copy” have lost much of their meaning, and the law’s notion of a tangible medium is becoming less relevant.[2] The digital arts are a misfit medium within current copyright categories as the underlying software and possible Internet platform add dynamic and collaborative elements which were previously absent from intellectual property. This Comment will address the disconnect between traditional copyright law and the realities of the digital age, using emerging forms of digital art as archetypal examples.  (more…)

by Michael Adelman

Copyright Suit Fails to Prevent Memorial Day Weekend Release of The Hangover: Part II

On Tuesday May 24, the New York Times reported that Judge Catherine D. Perry of the U.S. District Court for the Eastern District of Missouri denied tattoo artist Victor Whitmill’s preliminary injunction that would have halted the release of the film The Hangover: Part II over Memorial Day weekend. Mr. Whitmill claims that Warner Brothers has infringed on his exclusive rights to the Maori-inspired tattoo which he designed and inked on boxer Mike Tyson’s face by putting it on the face of the character Stu, played by Ed Helm, in the film and promotional merchandise. Wired reports that the litigation has prompted an about face by the nation’s preeminent copyright scholar, UCLA law professor David Nimmer, who testified that tattoos should not be copyrightable while serving as an expert witness for Warner Brothers. Likelihood of Confusion noted that Judge Perry strongly indicated Mr. Whitmill stands to recover on his claim in the future, but that she declined to issue the injunction after finding the public interest in letting the movie be released outweighed the harm of infringement.

G8 Nations Issue A Statement on Internet Governance

Ars Technica reports on the recent G8 summit that produced a Declaration of Renewed Commitment for Freedom and Democracy, which extolled the power of the Internet in increasing democratic participation and as a driver of economic growth. The document emphasized the need to safeguard against “arbitrary or indiscriminate censorship” in preserving the Internet as a democratic forum. The G8 nations also announced their commitment to enhancing protections of intellectual property (copyright in particular) through greater international cooperation of governments and private entities.

New Legislation Would Make Unauthorized Internet Streaming a Felony

Ars Technica reported on the testimony of new Register of Copyrights, Maria Pallante, before the House Judicicary Committee about whether illegal online streaming should be upgraded from the current misdemeanor status to a felony punishable by up to 5 years in jail. Pallante asserted that increased bandwidth and greater scrutiny of file-sharing networks have made video streaming sites that display pirated material increasingly popular, and that the law needed to be adjusted to keep pace with technology. This is also the position espoused by the Obama Administration’s White Paper on Intellectual Property Enforcement. But Techdirt warned that by making “performance” of a copyrighted work a felony, the proposed bill (via GovTrack.us) could potentially render the act of embedding or hosting an infringing video a felony.

Amazon Launches New Mac Software Store to Compete with Apple’s App Store

Amazon has recently launched a subsection of its online downloads store specifically oriented to Mac OSX software. Ars Technica reports that Amazon has called this service the “Mac Downloads Store”, probably to avoid another legal dispute with Apple. Slashdot has covered Apple previously filed lawsuit against Amazon for trademark infringement over Amazon’s ‘Appstore for Android’. ComputerWorld analyzes some of the differences between Amazon’s Mac Download Store and Apple’s Mac App Store, speculating that these differences are largely driven by differences in Amazon and Apple’s licensing agreements with software developers.

Appropriation artist found to have infringed copyrights after failing to show transformative use
By Matthew Becker – Edited by Chinh Vo

Cariou v. Prince, No. 08 Civ. 11327 (DAB) (S.D.N.Y. March 18, 2011)
Slip Opinion hosted by Scribd

In a closely watched copyright case, the United States District Court for the Southern District of New York granted summary judgment for the plaintiff, Patrick Cariou, ruling that the appropriation artist Richard Prince, in conjunction with the Gagosian Gallery, infringed Cariou’s copyrighted works.

The Southern District held that Prince’s works, paintings and collages that incorporated significant portions of Cariou’s published photographs, were not entitled to defense under the doctrine of fair use. Most relevant in this analysis was a consideration of the purpose and character of the use, with a focus on whether Prince’s works were “transformative,” requiring that they “in some way comment on, relate to the historical context of, or critically refer back to the original works.” The court concluded from Prince’s testimony that he did not have an interest in the original meaning of Cariou’s photographs, but simply wanted to reproduce them to send his own message, and therefore the transformative content of his works was “minimal at best.”

The NYT Arts Beat provides an overview of the case. The Art Law Blog criticizes the decision for its narrow interpretation of transformative use, noting that other cases, such as Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006), have found works to be transformative even when they did not comment directly on the original copyrighted work. (more…)

Seventh Circuit Denies Moral Rights Protection to Chicago Garden
By Albert Wang – Edited by Matthew Gelfand

Kelley v. Chicago Park District, Nos. 08-3701 and 08-3712 (7th Cir. Feb. 15, 2011)
Slip Opinion

The Court of Appeals for the Seventh Circuit affirmed the Northern District of Illinois’ judgment in favor of the Chicago Park District on Chapman Kelley’s Visual Artists Rights Act (VARA) claim, while reversing the court’s judgment in favor of Kelley on his claim of implied contract.

The Seventh Circuit, while affirming on the VARA claim, rejected the district court’s finding that Kelley’s garden was unoriginal and that VARA categorically excluded site-specific art. The court held that the garden was ineligible for copyright not for want of originality, but of authorship and fixation.  As a work not subject to copyright, the garden was not covered by VARA’s grant of moral rights. In addition, the court attacked the district court’s finding that the garden constituted a painting and sculpture for VARA purposes. In reversing on the contract claim, the circuit court held that the commissioner lacked the power to bind the city through her representations.

IPLawChat provides an overview of the case. Clancco and ArtSlant discuss the decision’s ramifications for concept art at large. (more…)

Chippendales’ “Professional and Classy Sexy Fun” Deemed Not Inherently Distinctive.
By Phillip Hill – Edited by Ian C. Wildgoose Brown

In re Chippendales USA, Inc., Serial No. 78/666,598 (Fed. Cir. Oct. 1, 2010)
Opinion

On October 1, the United States Court for the Federal Circuit affirmed the Trademark Trial and Appeal Board, which ruled that Chippendales USA, Inc. could not register its “abbreviated tuxedo” costume, the “Cuffs & Collar,” as an inherently distinctive mark.

The Court held that even though live adult entertainment typically involves “revealing and provocative” costumes, individual costumes can nevertheless be inherently distinctive. The Cuffs & Collar only qualified for acquired distinctiveness, however, because of shared heritage with the Playboy Bunny costume.

Both the Trademark Trial and Appeal Board and the Federal Circuit applied the test articulated in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977) for determining inherent distinctiveness. In applying the Seabrook test, the court agreed with the U.S. Patent and Trademark Office (“PTO”) that inherent distinctiveness must be measured at the time of registration as opposed to the time of first use. The court reasoned that it would be unfair to allow applicants to delay registration and then “preempt intervening uses that might have relied on the fact that registration . . . had not been sought at an earlier time.”

PatentlyO provides an overview of the case. The TTABlog speculates that Chippendales will petition for certiorari. (more…)