Seeing Red: Professor Susan Scafidi's Insights on the Louboutin v. YSL decision; and Other Highlights of the 10th Annual IP Law Conference at GGU

Fordham Law Professor Susan Scafidi, founder and director of the nonprofit Fashion Law Institute, spoke to an SRO crowd on Friday at the 10th Annual Conference on Recent Developments in IP Law and Policy, presented by the IP Law Center of Golden Gate University. Her topic - the controversial decision by USDC Judge Victor Marrero denying injunctive relief sought by famous shoe designer Christian Louboutin against Yves Saint Laurent America, Inc. for the latter's alleged infringement of Louboutin's signature trademark red soles on its designer shoes. YSL's defense challenged the validity of Louboutin's registered mark. According to Prof. Scafidi, the decision in Louboutin v. YSL, 11 Civ. 2381 (VM) (USDC. SDNY, 8/10/11), is already in the process of being appealed to the Second Circuit.

Judge Marrero's decision is another judicial foray into the dangerous and ill-defined waters of aesthetic functionality, an area of trademark law that confounds many courts and legal scholars. Here, he finds that "in the fashion industry color serves ornamental and aesthetic functions vital to robust competition", leading to his conclusion that the Louboutin trademark, even if the red sole has acquired secondary meaning, should not have been registered, and had this been a motion for summary adjudication, he would have cancelled the registration.

Prof. Scafidi was critical of several key aspects of the decision: she opined that it overlooks and fails to follow key elements of the Supreme Court's decision in Qualitex v. Jacobson, 514 U.S.159 (1995); that it unduly downplays the significance of the acquired distinctiveness and secondary meaning doctrines; that it discouraged trade dress protection across industries; and that it takes the U.S. another step away from harmonization with Europe on this issue.

The question of whether, and in what circumstances, a single color may serve as a valid trademark for goods and services has bedeviled many courts and trademark scholars for years.
It remains to be seen whether, through the appellate process, the dispute of these high end shoe designers will finally provide the platform (an admittedly bad pun) for a court to offer a definitive answer to this question.

Other noteworthy presentations at this years' Conference included Prof. Cynthia Ho (Loyola University Chicago School of Law), who offered fascinating insights into the difficult problems facing diverse stakeholders in the intersection between patent holders and the needs of public health in the global economy. She was candid in her acknowledgment that answers to these issues are hard to find, and offered attendees a cogent analysis of the competing interests. The similarly difficult set of issues involving rights of privacy in personal identity data were the focus of an engrossing presentation by in-house counsel for McKesson (Sharon Anolik) and TrustE (John Tomaszewski). The fast paced world of online gaming was also explored in presentations by Neil Smith (Ropers Majeski), Sharon Zezima (Electronic Arts), Shawn Faust (formerly with Booyah), and Jennifer Lam (Zynga). The Conference kicked off with a timely review of the key features of the America Invents Act, presented by veteran patent attorneys Robert Morrill and Justin Beck.

Planning begins Monday on next year's Conference. Don't miss it! For updates, see www.gguiplc.com.

GGU IPLC's 10th Annual IP Conference 9/30/11

Golden Gate University's IP Law Center hosts the 10th Annual Conference on Recent Developments in IP Law and Policy on Friday, September 30th from 9-5:15 in Room 2201 on the Mission Street campus in San Francisco. Six hours of MCLE credit for $75 for attorneys, only $35 for alumni, and $14 for students. Sign up at www.gguiplc.com. Featured speakers and panels include Fordham Law Prof. Susan Scafidi, Director of the nation's only Fashion Law Institute; a panel of online game company counsel, including in-house counsel from Zynga and other leading companies; two panels on patent law reform; and a panel on privacy and medical records. Don't miss this great event!

Of Trolls and Underground Comix

A series of recent articles in legal news and the popular press have focused on a very unfortunate new way for generating income from copyright ownership - the concept of copyright "trolls". The most recent source of this concept appears to be based on the well known tactic in the patent field, whose perpetrators became known as "patent trolls" - a term referring to companies or individuals who acquire rights to patents for the sole purpose of waiting for some unsuspecting person (and in some instances perhaps not so unsuspecting) to make use of the patent, which leads the troll to threaten a lawsuit, followed quickly by a relatively low-cost, nuisance value settlement proposal. I suppose the "troll" reference comes from fantasy literature - the troll as a creature who waits under or on a bridge, exacting tribute in exchange for the right to pass.

In the copyright context, the troll owns, either as a result of their own creation, or by acquisition, rights to a copyright protected work, usually a song, movie, book or piece of software. If their work is the subject of widespread unauthorized downloads, the trolls send out hundreds of demand letters, threatening suit for intentional copyright infringement and citing the maximum statutory recovery sum of $150,000, followed by a low-dollar settlement demand. This activity seems to be imitative of the infamous effort of the Recording Industry Association of American's to put a halt to illegal downloads by threatening costly copyright infringement suits, and offering to settle for $3500. In one article I saw, an elderly woman received such a threatening letter, apparently based on her having an unsecured wireless access point in her home, that someone else was using to download unauthorized content. Paying the settlement demand is often the path of least resistance, since hiring counsel to defend a case is usually more expensive than the amount demanded.

In addition to the obvious unfairness of this practice in those cases where the accused is ignorant of the use of their wireless portal, or even worse, is simply innocent, this practice has an even more pernicious impact. It is likely to have a negative impact in the hearts and minds battle to get people to stop violating copyright via unauthorized downloads and/or uploads. The content industries: music, movies and books face constant criticism that they are greedy and that their products are too high priced and deliver poor quality work - negative publicity about copyright troll abuses doesn't help.

And now for a shameless plug. My wife Kim Munson is a partner in a new company, Comic Art Productions and Exhibits, found at http://www.cape-comicart.com. The company, working with app developer Toura, LLC., has launched a great app for IPad (and soon to be released on Android and IPhone as well) that explores the world of underground comix. The app is called Comix Classics for iPad, you can find it at http://itunes.apple.com/app/comix-classics-underground/id448563049?mt=8; and it is described as:

"Experience —or re-live— the turbulent '60s and ‘70s with this brilliant collection of art from the era’s wild underground comix and graphic novel scene! Featuring: R. Crumb, Art Spiegelman, Will Eisner, Harvey Kurtzman and scores of others."

Now for the fun part - the ITunes store requires that you must be over 17 to buy the app, because it features the following: Infrequent/Mild Simulated Gambling; Frequent/Intense Sexual Content or Nudity; Frequent/Intense Mature/Suggestive Themes; Frequent/Intense Alcohol, Tobacco, or Drug Use or References; Frequent/Intense Cartoon or Fantasy Violence; Frequent/Intense Profanity or Crude Humor.

I can't imagine a better marketing campaign. Check it out - and if you're the first person to identify the speaker of the audio track narration, you'll win a prize!

Save the Children - Thoughts on the Impact of Media on Children

The Supreme Court's decision, announced yesterday, finding that California's legislative attempt to ban violence in video games violated the First Amendment rights of children to access creative works, regardless of the levels of violence or brutality found in those works, contains some strong language favoring freedom of expression. The Court held that while states can protect children from harm, they have no "free-floating power to restrict the ideas to which children may be exposed".

The Court rightly reasoned that imposing this kind of restriction on video games was the proverbial slippery slope - because violence exists in many forms of media, including classic stories like Snow White, and Saturday morning cartoons.

The Court also had to address the issue of why, since it had upheld laws restricting minors access to sexually explicit material, it should not extend that same logic to violent material. Justice Scalia, writing for the majority of five justices, rejected that argument, noting that unlike hard-core pornography, there is no "long-standing tradition in this country of specially restricting children's access to depictions of violence". He also rejected the argument that children viewing violence in media has any causal link to violent behavior. At best, that research simply shows that some children have more feelings of aggression after playing the games - but there is no direct correlation between those feelings and any action being taken by the players.

The Court's decision follows a long line of cases rejecting a causal connection between video games and other violent media and children's violent or aggressive behavior. Ten years ago I participated in a Silicon Spin television debate with an attorney who had filed a lawsuit against a series of videogame companies on the theory that watching violent video games caused the shooters in the Columbine massacre to become violent mercenaries. The suit was subsequently dismissed for lack of proof of a causal link.

In her excellent essay in the June 26th issue of the New York Times Magazine, entitled "The Ninny State', Emily Bazelon points out that this is the same debate that in 1954 led Congress, based on the alleged "scientific" evidence of Dr. Fredric Wertham, to investigate whether violent comic books were a primary cause of juvenile delinquency. Fifty-six years of comic book censorship, which ended just this year, had no effect on juvenile delinquency; however those who would rather find media the cause of violence, instead of the harder social issues to solve, like poverty, illiteracy, joblessness, under-supported schools and teachers, racial and other forms of discrimination, continue with laws like this California statute to scapegoat media - it's an easier target.

Bazelon notes that there is an overwrought level of fear that parents have about the effect on their children of what they see and participate with in social media. She points out that the overall rates of child sex crimes and of teen sex are down since the 1990s, as are juvenile crime, school violence and teen fighting. She quotes David Finkelhor, director of the Crimes Against Children Research Center at the University of New Hampshire, who calls the gap between parents anxiety and reality "juvenoia" , which he says reflects an "exaggerated fear about the influence of social change on children".

So while I agree with the Supreme Court's rejection of the California statute, I question the distinction Justice Scalia makes between media depictions of violence, and depictions of sexual activity. The social science claiming a causal link between depictions of sexual conduct in media, and behavior, by adults and children, is as equally fuzzy, vague and unsupported as the link between violent media and content. I am presently writing a law review article on this subject, and will share more of the results of my research in future blog posts and in the article, which I hope to publish either later this year, or in early 2012.

A New Case Worth Watching: The Puerto80/Rojadirecta Domain Seizure Dispute

Spanish web company Puerto80 filed suit recently in U.S. District Court in New York against the U.S. Government over the seizure, by the Department of Homeland Security and Immigration and Customs Enforcement (ICE), of its popular sports forums Rojadirecta.org and Rojadirecta.com, which were used to exchange links for live streams of U.S. sporting events. Presumably, the government action was based on the possibility that some of the linked sites were operating in violation of the sports leagues copyright ownership rights.

Puerto80 has successfully defended itself against similar claims made in home courts in Spain. In the U.S. lawsuit, filed by the Durie Tangri LLP law firm, which includes Stanford IP Law Professor Mark Lemley, Puerto80 denies any liability for any copyright infringement, both as to civil and/or criminal liability.

A significant issue in the case is the use by the Government of seizure law to shut down the URLs without any prior hearing. While this allows the government to act quickly on behalf of copyright owners, it arguably does deny due process rights to companies that may have a valid defense. Secondary liability cases are fraught with complexity (see last year's Viacom v. Google case for an example), and taking away the right to present a defense until after a seizure has occurred may result in significant financial losses (although Rojadirecta can still be found at Rojadirecta.es, the company claims to have lost 30% of its traffic as a result of the seizure of the URLs).

Setting aside the criminal law claims, I wonder why the civil law seizures don't require at least an ex-parte hearing procedure, with notice to the other side, and an opportunity to be heard, similar to injunction and claim and delivery proceedings in civil law. I'll be keeping an eye on this one, and will update this blog as the case develops.

Free Speech and Moral Conduct: Tears in the Fabric of Society

There has always been a connection between intellectual property and the right of free speech: sometimes the two are in conflict, usually in the context of copyright law versus free speech, and sometimes they work in tandem, as when intellectual property rights lend support to the right of free expression. This connection allows me to comment on free speech matters, despite the fact that the primary focus of this blog is on intellectual property rights.

Two recent controversies reflect how free speech rights are being invoked to protect conduct which strains the fabric of society and the need for citizens to consider the moral consequences of their actions.

In Alamogordo, New Mexico, Greg Fultz commissioned and put up a highway billboard ad showing him holding the outline of an infant. The text next to the picture reads. "This Would Have Been A Picture Of My 2-Month Old Baby If The Mother Had Decided To Not KILL Our Child". Nani Lawrence, the ex-girlfriend, has filed suit against Fultz for harassment and invasion of privacy. She also asserts that she did not have an abortion, and that the loss of her infant was the result of a miscarriage. Fultz' defense is that under the recent holding in the Westboro Baptist Church case, he has a right of free speech which allows him to post this admittedly unpopular and offensive billboard.

The ongoing debate over whether circumcision is a valid medical procedure has spawned an online comic featuring a handsome, muscular superhero called Foreskin Man, battling an evil Monster Mohel. The Monster is depicted as a dark, bearded Jew in Orthodox garb (a bearded man wearing a black hat, prayer shawl and a long black coat) looming over a naked child on a table. A mohel is a Jew trained to perform religious circumcision on babies. The author of the comic, Matthew Hess, acknowledges that he sees himself as Foreskin Man, noting that he and his character are both of German ancestry and have light-colored hair.

Hess and associates are the driving force behind a ballot measure in San Francisco's upcoming election which makes circumcision done within the city limits a misdemeanor subject to a $1000 fine, even if it is done for religious reasons. A previous cartoon, released last summer, that depicted an evil Doctor Mutilation, who circumcised boys for medical reasons drew far less attention than the Monster Mohel version.

Jewish leaders have responded to the new comic, branding it as anti-Semitic. Hess acknowledges that his purpose in creating the comic is to ruffle feathers; he claims that he is not an anti-Semite - he is just opposed to any person who circumcises children, regardless of the reason.

In an article about the controversy written by Will Kane and published in SFGate.com on June 7th, USF Professor Corey Cook offers his view of Hess' comic: "Whatever the intent, these images are certainly working to get attention...I do think these will start conversations (about circumcision), but I am not sure it is the conversations these people want us to be having."

In his famous 1978 graduation address at Harvard, author Alexander Solzhenitsyn decried the absence of morality in our legally oriented society. He noted:

"If one is right from a legal point of view, nothing more is required, nobody may mention that one could still not be entirely right, and urge self-restraint, a willingness to renounce such legal rights, sacrifice and selfless risk: it would sound simply absurd. One almost never sees voluntary self-restraint.

...

A society which is based on the letter of the law and never reaches any higher is taking very scarce advantage of the high level of human possibilities.

...

The defense of individual rights has reached such extremes as to make society as a whole defenseless against certain individuals. It is time, in the West, to defend not so much human rights as human obligations."

Solzhenitsyn makes a very important point. I can't say as a matter of law that what Fultz and Hess have done is not a valid exercise of their First Amendment rights, although I have my doubts on that score. What I can say with certainty is that they have acted without voluntary self-restraint, and in advocating their views, they further encourage the descent to a low level of human behavior, and further strain the fabric of a moral society.

More Problems with the DMCA - Fake DMCA Complaints!

Whew! Sorry about the long lag in posting to my blog - its' been a jam-packed semester in the law school...much of which I'll be back to blogging about in the next few weeks. But now for a current issue that caught my eye, and perhaps yours as well:

The troubled, and troublesome, Digital Millennium Copyright Act (aka the DMCA) is revealed as having yet another problem in a recent series of stories about Facebook. It seems that some nefariously minded third parties have been sending fake complaints and demands under the DMCA's "notice and takedown" policy, which resulted in Facebook taking down popular and well-trafficked sites.

Some of the sites involved include Redmond Pie, Ars Technica, and Neowin (a well-known Microsoft blog). After Facebook took these sites down, their owners received a generic explanation that the site had been taken down for alleged copyright infringement, without any identification of what content was alleged to be infringing. After much hassle and email interchanges, the pages have been restored. A Facebook spokesperson sent an apology, noting that the four pages have been restored. The apology noted that no system is perfect and that they are looking into refining their system.

The much-discussed Google v. Viacom case, which I blogged about last year, exposed serious flaws in the notice and takedown system in the context of mass, repeat uploads of user-generated, but not owned, content. This new problem presents yet another problem - it is too easy to make a false complaint, and thereby tie up and at least for a short time, take down, a valid site.

Many commentators have opined that the DMCA is in serious need of revision. Perhaps we can hope that once Congress finishes with its current patent law reform efforts, it can turn its attention to this ever-growing problem. With Spring comes hope, so stay tuned.

Sanitizing Huck Finn: A Modest Proposal

The news, reported last week by Publisher’s Weekly that NewSouth Books plans to release a version of Mark Twain’s great American novel, The Adventures of Huckleberry Finn, in which Twain’s use of the “n” word is excised and replaced with the word “slave”, and in which the word “injun” referring to Native Americans, will also be cut, has set the blogosphere on fire. This is, unfortunately, old news – it isn’t the first time, nor will it be the last, that classic works of literature have been revised for any number of reasons, including a concern that contemporary social or political views support such revisions.

What this debate does highlight is what may be deemed a problem in our intellectual property structure with respect to the protection of the integrity of an author’s work, after the copyright term in the work expires. The problem is that to the extent, admittedly limited, that U.S. law protects the integrity and authenticity of a work of expression, that protection evaporates when the term of copyright ends and the work goes into the public domain. Right of publicity laws don’t add any protection here, as most such rights expire before the copyright term ends.

Why is this a problem? NewSouth’s publication highlights the concern. This issue of Huckleberry Finn will not be published as a “revised version”. Readers of this version may never know the actual language Twain used, which as many commentators have noted, was not used because Twain was a racist, but rather because he was making a comment on the racism of his time. The same problem exists for other literary works: there is nothing to prevent revisionist publishers from publishing a version of works by the Bronte sisters in which their heroines exhibit more contemporary views about the roles of women; or of revised versions of Hemingway works that make his characters a bit less macho and more sensitive; or that give Kerouac’s characters jobs and a sense of social responsibility.

How do we address this issue? While I am tempted to recommend that we extend a form of moral rights indefinitely to prevent what I view as a distortion of the original writer’s intent, I also recognize the value of re-interpreting works to reflect a different perspective, as was the case in recent years by the re-interpretation of Gone With the Wind in the parody version entitled The Wind Done Gone, told from the slave’s perspective. So my recommendation instead is that we consider legislation amending the copyright law to require publishers of “revised” versions of works in the public domain to give prominent notice, on the covers of the works, that this is a “revised” version, and that in introductory notes, the publishers explain the nature and scope of the revisions, so readers can choose whether to read the revised or original version. What do you think?

Smart Phones, Privacy and the 4th Amendment: New Worries for a New Year

The California Supreme Court, in the majority's decision in the case of People v. Diaz, issued January 3rd, has given privacy advocates a new worry for the new year. The majority rejected a 4th Amendment challenge to the reasonableness of a warrantless search of a cell phone text message folder in a drug arrest case. The majority opinion, written by Justice Chin and joined by Justices Kennard, Baxter, Corrigan and Retired Chief Justice Ron George, citing the Supreme Court's decision in U.S. v. Robinson (1973) 414 u.s. 218, 224, held that the phone's database, found on the person of the defendant, could be searched without a warrant because the search was "incident ot a lawful arrest". The rationale for this exception to the 4th Amendment's bar against warrantless searches is that that evidence might be destroyed or concealed by the defendant if the property remains "within his immediate control". Because a cell phone can be carried in a person's pocket or purse, the majority distinguished this case from U.S. v. Chadwick (1977) 433 U.S. 1, wherein a warrantless search of a 200 lb. footlocker was thrown out as violative of 4th Amendment rights.

Justices Werdeger and Moreno strongly dissented, arguing that today's smart phones are essentially mini-computers that can store vast amounts of personal data, the search of which violates privacy rights. Interesting case - it means that if you are arrested for a DUI for example, police have the right to search the entire database of your cellphone without a warrant. Seems wrong, and I think the dissent is right. U.S. District Court Judge Ilston has ruled to the contrary in a federal case, and the Ohio Supreme Court has also rejected such searches. The U.S. Supreme Court may see this one - stay tuned.

New Year's Resolution: Blog more! Happy New Year to all readers, new and old!