Property, intangible

a blog about ownership of intellectual property rights and its licensing

  • The Winnie the Pooh Case is Really, Really Over

    I’ve written in the past about a dispute over ownership of the Winnie the Pooh intellectual property rights. The original state court case was a claim by Stephen Slesinger Inc. (SSI), the successor to the rights from A.A. Milne, that Disney had underpaid royalties. A subsequent infringement case was brought in federal court, and Disney successfully defended itself on the basis that it was licensed or that SSI had fully assigned its rights to Disney.

    The most recent chapter in the case was a Trademark Trial and Appeal Board decision refusing to cancel the Disney registrations for a number of Pooh marks. The Board held that the district court decision collaterally estopped the cancellation claim. SSI appealed to the Federal Circuit.

    The Court of Appeals for the Federal Circuit affirmed, but there was a dissent. The problem was the loose language the district court had used to reach its conclusion that Disney was not liable to SSI:

    The district court’s use of the phrase “granted to Disney all of the rights” could indicate an assignment, but it could also indicate a license to use, i.e., to promote, advertise and otherwise exploit the commercial value of the trademarks. Similarly, the district court’s conclusion that Slesinger “retained no rights which Disney could infringe” is equally consistent with either a license or an assignment. The court’s recognition that “Disney’s uses of the Pooh characters were authorized and royalty-producing” can reasonably refer to an assignment, but the words chosen by the court are more consistent with a license given the implied extension of authority and the obligation for continued royalty payments for use of the Pooh trademarks.

    Indeed, the district court’s opinion appears to suggest that Slesinger retained some rights to the Pooh trademarks, but that any rights retained were insufficient to support an infringement action. Milne, 2009 WL 3140439 at *4 (“Slesinger transferred all of its rights in the Pooh works to Disney, and may not now claim infringement of any retained rights.”). This scenario is as suggestive of a license as it is of an assignment. It follows that a finding that some or all rights were transferred is not itself determinative of ownership.

    The dissent therefore would not have found that the claim for ownership of the trademarks was necessary to the decision by the district court and therefore the TTAB wasn’t collaterally estopped. But it was only a dissent.

    Not surprisingly, according to the Los Angeles Times, a spokesman for SSI said “An appeal may be appropriate.” Motion for rehearing and rehearing en banc, anyone?

    Stephen Slesinger Inc. v. Disney Enterprises, Inc., No. 2011-1593 (Fed. Cir. Dec. 21, 2012).

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  • Be Careful What You Sign

    There is a pair of interesting decisions out of the District of Massachusetts about ownership of the marks “Collaborative Problem Solving,” “Collaborative Problem Solving Approach” (the “CPS Marks”), “Think:Kids” and “Think:Kids: Rethinking Challenging Kids” (the “Think:Kids” Marks). “Interesting” because it is a case where marks that preexisted a business relationship were lost by signing an employment agreement.

    The “Collaborative Problem Solving Approach” is a treatment approach for resolving problems between children with social, emotional and behavioral challenges and their caregivers. Plaintiff Ross Greene developed it in 1993. Also in 1993, he began working part-time as a clinical assistant in psychology at Massachusetts General Hospital (MGH) using the CPS approach as part of his outpatient therapy work. He successfully reapplied for his position ten times, the last time in 2007, repeatedly signing agreements that he would abide by MGH’s policies and in later agreements also stating that he had read the policies. The case is more complicated than just the Greene-MGH dispute; there is also a copyright dispute between Greene and the name defendant J. Stuart Ablon that I won’t go in to.

    In 2001 Greene registered “Collaborative Problem Solving Approach” on the Supplemental Register. In 2002, he and Ablon founded the “Collaborative Problem Solving Institute at MGH” (the “Institute”) as part of MGH’s Department of Psychiatry. In the same time period Greene and Ablon also founded two entities not affiliated with MGH that later merged into the surviving “Center for Collaborative Problem Solving, Inc.”

    In 2007, Ablon and Greene rebranded the Institute as “Think:Kids,” an effort that MGH paid for. The Institute filed trademark applications for “Think:Kids” and “Think:Kids: Rethinking Challenging Kids.”

    The Ablon-Greene relationship ultimately fell apart, with Ablon remaining at the Institute and Greene terminated by MGH in January, 2009. And so we argue over who owns the marks.

    MGH adopted an intellectual property policy in 1995 (after Greene was already employed by MGH), which was revised in 2002. Greene argued that the policies didn’t apply to him because he started at MGH before the IP policies were adopted, but his repeated reapplications for his position subjected him to the policies. This is the relevant language in the policies:

    1995 IP Policy

    [t]rademarks shall be owned by MGH if they are created by Members in the course of their employment or affiliation with an Institution or if they are used to identify any product or service originating with or associated with an Institution ….

    2002 IP Policy

    [t]rademarks shall be owned by an Institution if they are created by Members in the course of their employment or affiliation with an Institution, if they are used to identify any product or service originating with or associated with an Institution, or pertain to significant Institutional Activities.

    The court had no problem concluding that Greene’s applications incorporated the IP policies by reference and that under these policies MGH would own the CPS Marks and Think:Kids Marks–I commend you to the decision if you’re interested in the analysis. Note that it doesn’t matter that the CPS Marks may have preexisted Greene’s employment by MGH; the language “associated with” clearly captures marks that existed before the relationship. Be careful what you sign.

    The second decision is slightly more interesting. It was on MGH’s motion to enjoin Greene from claiming ownership of and using the CPS marks (Greene’s website here). Greene argued that MGH had to demonstrate a likelihood of success that there is likelihood of confusion, which would also require that MGH prove that the marks have secondary meaning (recall that Greene was only able to register the Collaborative Problem Solving Approach mark on the Supplemental Register). I agree with Greene–the statutory claim is for trademark infringement, there is no separate claim for declaration of ownership in the Lanham Act.

    But the court disagreed. The court held

    This is not a matter of trademark infringement, but of the rights that Greene surrendered to MGH as a result of his prior employment contracts ….  In other words, whether MGH can successfully bring a trademark infringement suit against Greene or anyone else is a different matter from whether Greene contractually is restricted from suing or claiming ownership of the marks ….

    The court relied on Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101-03 (2nd Cir. 1989) for the proposition that it didn’t need to address confusion. In Murphy Door Bed, the court found that “Murphy Bed” was generic but nevertheless enjoined the distributor from using the term because the terms of the distributor agreement prohibited it. The Greene court conveniently overlooked, though, that the MGH policies didn’t address use, only ownership.

    But it doesn’t really matter in the end; they were arguing about ownership of the same mark so confusion is, in my book, per se. I’m sure that’s what the court meant.

    Greene v. Ablon, No. 09-10937-DJC (D. Mass. Sept. 17, 2012) (summary judgment).
    Greene v. Ablon, No. 09-10937-DJC (D. Mass. Dec. 17, 2012) (preliminary injunction).

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  • Of Course There is Copyright in Tattoos

    From Tattoo Art Inc. website

    There is an unpublished decision out of the 4th Circuit that doesn’t cover any new ground legally but is timely, given the recent brouhaha over copyright in tattoos. Unremarkably, because I’m not sure how anyone could think differently, there is no discussion on the copyrightability of tattoos; that is assumed. Instead, the case is about the damages one can accrue for exceeding the scope of a license.

    Plaintiff Tattoo Art Inc. licensed books of “flash” to defendant TAT International Ltd. “Flash” is “an original drawing or design of a tattoo printed or drawn on a sheet of paper or a poster and often displayed on the walls of tattoo parlors to give customers design ideas for the tattooist to copy.” Tattoo Art had registered the copyright for the books. TAT was licensed for “the creation and sale of Stencils for the application of airbrush body art” and to “distribute graphic representations (including photographs and/or posters)” of the tattoo flash designs only if it did so “in connection with the sale of Stencils. No other use . . . is granted by this License.” There was a guaranteed minimum royalty of $6,000 annually; TAT only ever paid a few hundred dollars. TAT also changed the coloring of Tattoo Art’s designs and displayed the re-colored images on its website to promote its stencils, removed the copyright notice from the re-colored images, and referred to the re-colored images collectively as its “Original Collection.”

    Neither the law nor its application are particularly interesting, which is why the case is unpublished. But the result–the damages–is a lesson for small businesses. The lower court awarded $18,105.48 for breach of contract–ok, manageable–but a whopping $480,000 for copyright infringement, which were both affirmed on appeal.

    The two awards were not duplicative; the breach of contract was the unpaid royalties and the copyright infringement was the re-coloring of the displayed images as well as post-termination use of the works:

    TAT was given license to use the copyrighted tattoo flash artwork to create stencils and to use copies of the artwork to promote the stencils. The Agreement did not license TAT to edit, modify or alter the copyrighted works it was licensed to display for marketing purposes, and therefore such use constituted copyright infringement. In the post-termination context, TAT’s continued display of the copyrighted works constituted infringement for the additional reason that TAT was contractually required to “immediately cease all sales” of the stencils in light of Tattoo Art’s notice of termination for breach.

    The plaintiff elected statutory damages for the 24 copyrights infringed. Although the infringement wasn’t willful enough for enhanced damages, it was willful enough for the court to award damages on the high end of the statutory range, at $20,000 per infringed work. A challenge to the amount under State Farm Mut. Auto. Ins. Co. v. Campbell and BMW of N. Am., Inc. v. Gore went nowhere:

    Those cases, however, involve proportionality review of punitive damages awards, not statutory damages awards where Congress has limited the district court’s discretion by establishing a statutory range. TAT is essentially arguing that these awards within the statutory range were constitutionally excessive. This is an unavailing argument. 

    (I wonder if Jammie Thomas-Rasset would agree?)

    Tattoo Art Inc. v. TAT Int’l LLC, No. 11-2014 (4th Cir. Dec. 10, 2012) (unpublished).

    Discussion of Christopher Escobedo v. THQ Inc., 2:12-cv- 02470-JAT, (D. Ariz.) here and here.

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  • The Cold War and the Copyright Act

    There’s a fascinating bit of cold war history in the Copyright Act – who knew?

    The story is told in Hendricks & Lewis, PLLC v. George Clinton. George Clinton, of Parliament and Funkadelic fame, owes the law firm Hendricks & Lewis a lot of money. The firm obtained two judgments against Clinton and sought appointment of a receiver to take control of four of Clinton’s copyrighted works.

    But it turns out that the Copyright Act limits transfers of copyright by a governmental body except in the case of bankruptcy:

    When an individual author’s ownership of a copyright, or of any of the exclusive rights under a copyright, has not previously been transferred voluntarily by that individual author, no action by any governmental body or other official or organization purporting to seize, expropriate, transfer, or exercise rights of ownership with respect to the copyright, or any of the exclusive rights under a copyright, shall be given effect under this title, except as provided under title 11.

    17 U.S.C. § 201(e). The Hendricks & Lewis court tells us that the provision was added to the Copyright Act in 1973 to keep the Soviet Union from seizing ownership of works produced by dissident authors.

    But the language is not limited to acts by foreign governments. In In re Peregrine Entertainment, Inc. the court avoided the problem by construing the language to mean actions initiated by governmental bodies. The Hendricks & Lewis court disagreed with this interpretation, though:

    The language of the statute does not support this conclusion, however. There is no indication that only acts initiated by the government are precluded. The statute bars not only the seizure, expropriation, or exercise of the rights of ownership by any governmental entity, but also the forced transfer of rights by those entities. If the statute were construed to allow the government to transfer copyrights as long as a private party initiates the action, the evil Congress intended to avoid could be accomplished simply by generating a money judgment against the author.

    Nevertheless, Clinton couldn’t satisfy the conditions precedent for the statute to apply: the works were not created by an individual or, alternatively, the copyrights had previously been transferred voluntarily. The four works that were to be put into receivership were created as works made for hire for Warner Bros., thus they were not works of an individual author. (Warner Bros. transferred the copyright back to Clinton in a 1993 settlement.) And even if Clinton had been the individual author, Clinton assigned the copyright to Warner Bros., thus the works had been previously voluntarily transferred.  The court therefore assigned a receiver for the works.

    Hendricks & Lewis, PLLC v. Clinton, No. C12-0841RSL (W.D. Wash. Nov. 27, 2012).

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  • Wrist-Rocket Factors Applied

    Haggar International Corp. v. United Company for Food Industry Corp. is a fairly classic manufacturer-distributor dispute. The conflict started over twenty years ago and the suit has been pending for nine years, which explains why the parties have widely differing recollection of relevant events. Hat’s off to the court for sorting out the mess.

    The mark in dispute was MONTANA for frozen and dried vegetables imported from Egypt. Plaintiff Haggar was the U.S. seller of product originally manufactured and packaged by United, although Haggar later marked goods manufactured by a different company with the MONTANA brand.

    Both parties made several attempts to register the MONTANA mark. Haggar was the first to the PTO, in 1987. It failed with its first attempt

    because the specimen identified United on it. The examining attorney asked for clarification of the relationship between Haggar and United and Haggar thereafter abandoned the application. It then successfully registered the MONTANA mark in 1990, after it ceased its relationship with United. It also recorded its trademark with Customs, successfully excluding some United goods.
     
    Twelve years later, in 2002, United filed a petition to cancel Haggar’s MONTANA registration. Haggar defaulted, which allowed United to obtain its own registration. But Haggar’s registration was reinstated, so both parties ended up with registrations. Somewhere in the mess a federal lawsuit was filed.

    The court adopted the factors described in Tecnimed SRL v. Kidz-Med, Inc., 763 F. Supp. 2d 395 (S.D.N.Y. 2011) (blogged here) as the framework for deciding who the rightful owner of the mark is. While the court considered United the manufacturer and Haggar the distributor, it noted that it doesn’t really matter which is which: “the factors used in determining the question of ownership of the MONTANA mark are the same whether or not Haggar is given the title of ‘distributor.’” The court considered:

    1) which party invented and first affixed the mark onto the product; 2) which party’s name appeared with the trademark;
    3) which party maintained the quality and uniformity of the product;
    4) with which party the public identified the product and to whom purchasers made complaints;
    5) which party paid for advertising and promotion of the trademarked product; and
    6) which party possesses the goodwill associated with the product, or which party the public believes stands behind the product.

    I leave you to the 70 pages of detailed discussion of the law and the facts, including a dicta frolic through Person’s Co., Ltd. v. Christman. At the end of the day, this is the rare case where the distributor defeats the presumption that the manufacturer owns the mark. I think the case is most notable for highlighting that defining a relationship as manufacturer-distributor is really is a legal conclusion, not a predicate fact. (See, for example, here and here for similar problems.)

    Therefore Haggar’s registrations were not fraudulent (the only basis available for cancellation, since the registrations were so old they were incontestable). United tried claiming that it could continue its use of the mark under Section 15(b)(5) of the Lanham Act as a senior user, but it didn’t have continuous use. The court decided in favor of Haggar that United was infringing the Haggar trademark and ordered an accounting of damages owed Haggar as well as cancellation of the United trademark registration.

    Haggar International Corp. v. United Company for Food Industry Corp., No. 03 CV 5789 (CLP) (E.D.N.Y. Nov. 28, 2012).

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  • Read This Before Assigning an Unregistered Trademark in the UK

    IP Finance has an important post for those who do international transactional work. It seems that under UK law, an unregistered trademark, unlike a registered trademark, may NOT be assigned without the the business to which it is attached. In Iliffe News and Media Ltd & Ors v Revenue & Customs [2012] UKFTT 696 (TC) the assignment was for tax purposes, which therefore necessarily fell apart. Read the full post here.

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  • Copyright and Foreign Works

    A quick primer, courtesy of the Northern District of Illinois, on ownership and infringement of foreign copyrighted works. In Games Workshop Ltd. v. Chapterhouse Studios, LLC, the disputed works were miniature figurines to be used for a tabletop war game about a dystopian science-fantasy world called Warhammer 40,000. The owner of the Warhammer 40,000 universe (books, computer games, a movie, an annual convention, and the game) is an English company. The defendant created, without permission, pieces to be used with the game.

    First, on the law of ownership of the copyright for the various pieces that were allegedly infringed:

    The parties agree that because [the plaintiff’s] products were created in England, its ownership of copyrights with respect to those products is governed by that country’s law.

    UK law is not too different from US law: in general, initial ownership of a work vests in the author, but an employer will own the copyright of a work created by an employee in the course of his or her employment. Whether a person is an employee (one with a “contract of service”) or an independent contractor (one with a “contract for services”) depends not on the title, but on the underlying facts of the relationship:

    [T]he courts tend to focus first on whether there is the so-called “irreducible minimum” necessary to give rise to an employment relationship: namely “mutuality of obligation” and “control.” There is sufficient “mutuality” only where the employer is bound to provide work and pay, and the employee to provide his labor. Moreover, for the employment relationship to exist, one party (the employer) must be able to exercise control over the other (the employee). In those professions where a worker has a considerable amount of freedom, the control requirement is met if there is a “sufficient framework of control.” . . . However, these factors are not of themselves conclusive. The court will examine all other relevant aspects and provisions to establish whether they are consistent with a contract of service. The courts pay considerable attention to whether typical attributes of employment are present: whether regular sums are paid as wages or salary; whether income tax deductions are made on the “pay-as-you-earn” basis used for employees; whether there is a joint contribution to a pension scheme; and whether nnational insurance contributions are paid by both parties as for an employee.

    Lionel Bently & William R. Cornish, 1 UK International Copyright Law and Practice, at UK § 4(1)(b)(i) (Geller, Paul E., ed., Matthew Bender 2009) (internal citations omitted).

    Here, the plaintiff supplied an affidavit describing the relationship between the creators and the company that was adequate to defeat the defendant’s challenge that the individuals were not employees.

    Next we have copyrights owned by the plaintiff by way of assignment from the English designers. In this situation

    The law is unclear regarding what country’s law governs consideration of such assignments. Saregama India [Ltd. v. Mosley], 635 F.3d [1284,] 1292 [(11th Cir. 2011)] (“[T]here is no guiding case law regarding which country’s law governs the issue of copyright transfer.” (emphasis in original)); see also Itar-Tass [Russian News Agency v. Russian Kurier, Inc.], 153 F.3d [82,] 91 n.11 [(2d Cir. 1998)] (“In deciding that the law of the country of origin determines the ownership of copyright, we consider only initial ownership, and have no occasion to consider choice of law issues concerning assignment of rights.”).

    But, no harm; in both countries a signed writing will do the job, so the plaintiff owned these copyrights also.

    What about infringement? The works in question were miniature figurines. Under UK law, the defendant alleges, the works are ineligible for protection by copyright and therefore could not be infringed. But

    Chapterhouse’s argument begins with an incorrect premise. Although disputes over copyright ownership must be resolved under the laws of a work’s country of origin, other issues regarding a claim of copyright infringement, including the question of copyrightability, are determined by the law of the country where the alleged infringement occurred.

    However, there was no summary judgment on the ultimate legal question, copyright infringement. Way too many defenses in the air for that.

    Games Workshop Ltd. v. Chapterhouse Studios, LLC, No. 10 C 8103 (N.D. Ill. Nov. 27, 2012).

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  • Co-ownership Is Not Privity

    A co-owner of a copyrighted work sues for infringement of the work. The court holds that the defendant had been granted a license by another co-owner, not a party, and therefore there was no infringement. The non-party co-owner then sues for copyright infringement in a new suit. Collateral estoppel or not?

    “Not,” according to the District Court for the Central District of California. To distill it down a bit, the “Crump plaintiffs” and Dwayne Michael Carter, Jr. (Lil Wayne) were the co-owners of the copyrights in the songs in dispute, which had been used in a documentary film about Carter. Carter was not a party to the first suit (the New York suit) but later brought his own suit for copyright infringement against various parties including Joshua Krause, who worked on the film but was also not a party in the first suit. Krause claimed that the decision in the Crump case precluded the infringement claim in the second suit.

    First a review of collateral estoppel:

    Collateral estoppel precludes the retrying of an issue previously determined by a “valid and final judgment.” The doctrine of collateral estoppel both “protect[s] litigants from the burden of relitigating an identical issue with the same party or his privy and promot[es] judicial economy.”When applying collateral estoppel to cases arising under California or federal law, courts must find that (1) the issue decided in the previous proceeding is identical to the current issue; (2) there was final judgment on the merits in the first proceeding; and (3) the party seeking to relitigate the issue was a party or privy to the first proceeding.

    The question was whether Carter was privy to the New York suit. The court described six circumstances by which a non-party might be bound by a prior decision:

    (1) a nonparty agrees to be bound by the determination of issues in another proceeding; (2) a substantive legal relationship exists, binding the parties (traditional privity); (3) adequate representation by a party to the suit holding the same interests as a nonparty; (4) a nonparty assumes control of the litigation in which that judgment was rendered; (5) a nonparty to previous litigation brings suit as “the designated representative” of a party to the prior action; or (6) a special statutory scheme “expressly foreclos[es] successive litigation by nonlitigants.”

    Here, Krause argued that the co-ownership created traditional privity between Carter and the Crump plaintiffs, but the court disagreed. It was a question of first impression, so the court looked to Davis v. Blige for guidance. Davis v. Blige is a Second Circuit case which held that a settling co-owner could not retroactively grant a license and extinguish claims by non-settling co-owners. Similarly here, the court held that applying collateral estoppel would “effectively allow one co-owner to rob another co-owner’s own right to sue for an accrued cause of action by being the first to the courthouse steps.” Krause’s claim under circumstance (3) above also failed.

    While some disagree* with Davis v. Blige, the concept seems right in application in this case. Who better to litigate whether a license was granted that the supposed grantor?

    Young Money Enter., LLC v. Digerati Holdings, LLC, No. 2:12-cv-07663-ODW(JCx) (C.D. Cal. Nov. 15, 2012).

    *See also Melvin B. Nimmer & David Nimmer, Nimmer on Copyright § 6.10[A][3][c]-[d] (2009).

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  • What is an “E-Signature”?

    I just blogged about a case where an email was inadequate to transfer ownership of copyright. It wasn’t because it was email, though; an email exchange can do the trick, as was the case in Vergara Hermosilla v. The Coca-Cola Company (blogged here). There is a federal statute that allows for electronic signature of documents, the Electronic Signatures in Global and National Commerce Act (“E-Sign”), 15 U.S.C. §§ 7001 et seq., as well as state statutes. In Vergara-Hermosilla, the court acknowledged in passing, apparently without dispute, than an email can constitute a signed writing.

    But how far away from an actual signature can it go? According to the District Court for the District of Maryland in Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., pretty far.

     Metropolitan Regional Information Systems, Inc. (“MRIS”) is a multiple listing service for real estate. It was unhappy that its site was being scraped by defendant American Home Realty Network, Inc. (“AHRN”) and sued for copyright infringement. MRIS alleged infringement of the database, but the preliminary injunction was granted based only on infringement of the photographs in the database.

    AHRN argued that MRIS didn’t own the copyright in the photographs, which were uploaded by subscribers to the MRIS network. MRIS claimed ownership based on a document entitled “Terms of Use” (“TOU”) which purported to assign copyright in the photos to MRIS:

    Original document at end of declaration here.

    The court noted that “The term ‘electronic signature’ means an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record,” as defined in § 7006(5) of the E-Sign act. The court also described how the assignment was “signed” here:

    The MRIS TOU constitutes credible evidence that MRIS’s users intended to assign their copyrights to MRIS through the electronic submissions of photographs, which would satisfy the relevant provisions of ESIGN.

    (Emphasis added.)  Really? Uploading a photograph = writing one’s name on the dotted line?

    I have a couple of problems with this conclusion. First, there was no discussion in the decision about how the subscriber encountered the TOU by which he or she was purportedly assigning copyright. The underlying MRIS declaration that the court relied on was opaque, stating only

    If you can’t see the image, the declaration states that “MRIS protects the MRIS Database contractually by requiring that third parties accessing and using the MRIS Database are subject to licensed use restrictions. In exchange for these rights and commitments (as detailed in the applicable MRIS Subscription and Terms of Use Agreements) and upon payment of a subscription fee, each subscriber is given access to the entire MRIS Database …”

    So, first note that there are two agreements, the Subscription agreement and the Terms of Use. Presumably the Subscription agreement is the main document controlling the relationship, of which the Terms of Use with the critical assignment language is not a part. So we don’t really know, at least from the decision, if the subscriber ever even saw the Terms of Use.

    Second, I also question whether uploading a photo is really within the definition of a signature – “an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.” When the subscriber uploads a photo, is it manifestation of an intent to sign the agreement or instead just to upload a photograph to a database?  I think the latter, and I suggest that allowing a “process” to act as a signature was meant to facilitate something like an “I agree” button, not any action whatsoever that is somehow related to a document, particularly one of which a person might not even be aware.

    There’s also the question of subjective intent. I often wonder whether transfers like this are knowing. Websites occasionally try to grab enough ownership interest to claim copyright infringement, like Craigslist did for a brief time (revision of terms here).  But do people really understand the significance of assigning the copyright? Do they realize they can’t use the work elsewhere themselves? Do those real estate agents truly not use the beauty shots of the properties elsewhere after uploading them to the listing service website? Perhaps it isn’t relevant as a matter of contract formation law, but it sure would affect whether someone signs or not.

    Here’s hoping for an appeal.

    Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., No. 12-cv-00954-AW (D. Md. Aug. 27, 2012).

    Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., No. 12-cv-00954-AW (D. Md. Nov. 13, 2012) (reconsideration).

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  • All Types of Agency Are Not Equal

    Defendant Mark Frost wrote a book called “The Match: The Day the Game of Golf Changed Forever.” Plaintiff MVP Entertainment wanted to make a movie out of it. The parties’ attorneys corresponded about an assignment of the copyright, culminating with this exchange:

    Attorney for MVP: “Let me know if this is okay and we’ll send paperwork …”
    Attorney for Frost: “done … thanks!”

    And of course it wasn’t “done”; the deal fell through and MVP sued.

    The Copyright Act states that an assignment of a copyright “is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” 17 U.S.C. § 204. It was undisputed that Frost had not authorized his lawyer to assign the copyright in the book. Instead, MVP argued that, according to industry custom and practice, it was common for transactional attorneys to enter into agreements on behalf of their clients and therefore Frost’s lawyer had ostensible (or apparent) authority to act on behalf of Frost.

    Perhaps so, but no matter. In the Copyright Act, the signature requirement for an assignment is to force the parties to determine what rights are being transferred and the document serves as a memorandum of that agreement. A claim of ostensible authority is instead an estoppel argument, which means that allowing ostensible authority to substitute would defeat the purpose for the writing requirement in the Copyright Act. The email was therefore not an assignment of the copyright.

    MVP Enter., Inc. v. Frost    , B235100 (Ca. Ct. App. Nov. 7, 2012).

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