Copyright Law

Tips on How to Obtain and Protect Your Intellectual Property

When you are building a business, it is important to establish an extensive intellectual property portfolio consisting of your registered trademarks, copyrights, and patents. Why? Because these are valuable assets that protect your products and branding from competitors. In addition, they represent your brand and often generate goodwill with consumers by developing your company’s reputation. Considering the value of your IP, you need to take affirmative steps to protect your IP. Here is some sound advice on how to effectively protect your IP rights.

1. Clear and Register Your Trademark with the USPTO

It is extremely important to select a strong trademark. This means you need to find a business name, unique logo, and catchphrase that is not immediately descriptive or generic for the goods and/or services that you offer under the trademark.

This strategic choice is most advantageous in that it can decrease the likelihood that another company may coincidentally use the same mark for similar products or service offerings. If you are not sure where to begin when selecting a strong trademark, it is in your best interest consult with an experienced and knowledgeable trademark lawyer to discuss your options. Retaining the services of a trademark attorney can also help expedite the process since it is their expertise to conduct clearance searches to determine which of your possible trademarks will have the greatest chance of successfully obtaining a registration.

2. Be Patient and Diligent

Once you select a strong trademark and submit the application, the timeline to achieve registration is generally between 8-10 months. Yes, you read that correctly. It can take close to a year to successfully register a trademark. Hence, why it is so important to be patient and diligent in your pursuit of valuable IP.  Patience and persistence are also important because there is a chance that the United States Patent and Trademark Office will deny your application. You could even encounter opposition from a third party.

When your application is filed, it will take around three months for the initial review to be conducted by an examining attorney. From there, if your application is not denied or challenged, it will be forwarded for a publication period. During this period, which is usually thirty days, other parties have the opportunity to oppose your application should they have grounds to believe a registration may infringe on their trademark.

Following publication, your application returns to the examining attorney for a final review. Depending on the initial filing basis of your application, you will need to prove use of your mark for the registration certificate to be officially issued.

As you can see, getting a trademark registered is a fairly detailed and arduous process.

3. Be Prepared for a Similarly Complex Process to Obtain a Copyright

In addition to registering your trademark, it is important to obtain a copyright for your unique goods, services, and/or works. When you have a copyright, it protects creative works, including:

• Writing
• Photography
• Audio
• Video
• Other forms of art or original expression.

However, it is important to understand that a copyright is somewhat limited. It does not protect an overarching idea within a work. Instead, a copyright is effective in safeguarding the expression of your idea in a particular medium. In addition, your copyright registration can help prevent unauthorized copying of an author or an artist’s creative works. Furthermore, it entitles the owner of the copyright to compensatory damages if an infringement occurs after your copyright is registered.

Federal copyright applications are filed with the US Copyright Office and, much like the trademark registration process, can be time-consuming and is fairly complex. That is why it is in your best interest to consult with an experienced and knowledgeable copyright lawyer.

Have Questions? Contact Omni Legal Group Today

For further information or to schedule a consultation with a leading IP lawyer in Los Angeles, please contact the highly reputable Omni Legal Group at 310.276.6664 or visit www.OmniLegalGroup.com to learn more. We possess the knowledge, resources, and experience to assist you in your efforts to secure and protect your IP.

Can libraries be held liable for e-book lending?

            At the beginning of June, four publishing companies filed a lawsuit in the United States District Court for the Southern District of New York against the Internet Archive alleging direct and secondary copyright infringement. Specifically, the four publishing companies, including HarperCollins, Hachette Book Group, John Wiley & Sons, and Penguin Random House, allege Internet Archive’s “Open Library” and/or “National Emergency Library” infringes their respective copyrights.

            Plaintiffs are four of the world’s preeminent publishing houses and collectively, they publish some of the most successful and leading authors in the world. Indeed, many of these authors are winners of the Pulitzer Prize, National Book Award, Newbery Medal, Man Booker Prize, Caldecott Medal and Nobel Prize. Plaintiffs are the copyright owners of each of the works upon which the lawsuit is based.

            Founded in 1996, the Internet Archive is a non-profit digital library offering free universal access to books, movies, and music. Via its “Open Library,” Internet Archive distributes digitally scanned copies of over one million titles. Any Internet-connected user has the ability to access complete digital copies of copyrighted books in this manner. Moreover, Internet Archive has openly pledged to do the same for millions more. In March, at the outset of the global pandemic, Internet Archive created the “National Emergency Library” with a goal to render all scanned books immediately accessible to anyone with an account.

            The plaintiff publishing companies allege the Internet Archive has engaged in willful copyright infringement by scanning print books, uploading these “illegally scanned books” to its servers, and distributing whole digital copies of the books to the public. Plaintiffs further allege the defendant has done so without any license or payment to the publishing companies or authors. Because these e-books are scanned from physical copies rather than purchased in their digital form, the project circumvents the typical licensing restrictions used by conventional libraries. As a result, plaintiffs argue the Internet Archive is conflating print books and e-books.

            Under the United States Copyright Act, copyright owners have six exclusive rights, including reproduction, preparation of derivative works, distribution, public performance, public display, and digital public performance of sound recordings. The right to distribute copies of copyrighted works to the public includes offering copies for sale, lease, or auction. Direct copyright infringement occurs when a person, without authorization, reproduces, distributes, displays, or performs a copyrighted work, or prepares a derivative work based on a copyrighted work. On the other hand, secondary copyright infringement occurs when a third party enables or supports infringement, as Internet Archive has allegedly done in this matter.

            The first sale doctrine provides a defense to copyright infringement. Under the first sale doctrine, this distribution right is extinguished when a copyright owner transfers ownership of a particular legal copy of a work to another person. To succeed on this defense, the accused party must prove that he lawfully owned the copy that was later distributed. This doctrine is premised on the user’s right to dispose of his or her particular copy of a copyrighted work but does not necessarily extend to a situation in which the user has made another copy or otherwise converted the work to another form.

            To avoid problems related to unauthorized reproduction of electronic books, many publishers use Digital Rights Management (DRM), which broadly refers to any technological measure that limits the use of copyrighted electronic media. One basic example of DRM is copy protection, which limits a user’s ability to copy, transfer, or otherwise duplicate protected data files. As another example, DRM may restrict copies of a particular electronic file to reside on a limited number of devices simultaneously. However, DRM can be used to enforce virtually any limitation a copyright owner desires. Of course, circumvention of DRM is prohibited under United States copyright law, and the Digital Millennium Copyright Act (DMCA), in particular.

            In this case, DRM is not at issue because the libraries never held digital rights to the copyrighted works. Instead, the libraries rightfully owned physical copies of the books at issue and scanned their copies to create a digital form. Indeed, in response to this lawsuit, the Internet Archive claims that it is merely acquiring books and lending them as libraries have always done. The Internet Archive further rationalizes that because schools and libraries remain temporarily closed, due to the ongoing pandemic, creating electronically accessible versions of these titles is the most reasonable option for continuing to lend books. However, Internet Archive has yet to formally respond to this lawsuit and has until the end of the month to do so.

Does livestreaming carry any copyright infringement risks?

            Due to the coronavirus pandemic, many states, including California, have implemented strict shelter in place orders, under which people are forced to perform their daily activities out of their homes. As a result, use of livestreaming platforms, such as Zoom, Google Hangouts, WebEx, as well as, Instagram Live, Facebook Live, and YouTube, has significantly increased. Businesses of all types have also started using livestreaming platforms to provide services that were previously delivered in person. These services range from religious services, educational services, and fitness classes to weddings, funerals, graduations, and other social events. Because many of these livestreams include unoriginal audio or audiovisual content, copyright concerns exist.

            As one example, legendary DJ D-Nice has been offering a daily “Homeschool at Club Quarantine” livestream series on Instagram Live in an attempt to bring a dance party into everyone’s homes. The now-viral stream started out as an attempt to change DJ D-Nice’s own feelings of isolation and now frequently features drop ins by famous celebrities, such as Drake, Jennifer Lopez, Michelle Obama, Dave Chappelle, Oprah Winfrey, and Mark Zuckerberg. According to DJ D-Nice’s representatives, Instagram arranged for broadcasting licensing for DJ D-Nice such that his use of copyrighted music does not constitute copyright infringement.

            Copyright protects original works of authorship, including literary, dramatic, musical, and artistic works. Under the United States Copyright Act, copyright owners possess various rights, including the right to perform the work publicly. Copyright infringement occurs when someone publicly performs the musical composition, broadcasts an audiovisual work, such as a motion picture or television program, without permission from the copyright owner.

            For musical works, there are two separate copyrights that are frequently held by different parties. The songwriting copyright is possessed by the songwriter while the sound recording copyright is often held by the record label. Performing rights organizations license, collect, and distribute public performance royalties for songwriters and publishers. Through these contracts, songwriters and publishers are entitled to collect a royalty each time their song is played on the radio, at a restaurant, retail establishment, fitness studio, park district facility, or online. In return, the performance rights organization provides a “blanket” license allowing the facility or service to broadcast the songs in the organization’s catalog. Livestreaming platforms typically do not have blanket licenses covering a user’s use or performance of a musical work over the platform. However, as mentioned previously, DJ D-Nice’s “Homeschool” livestream appears to be under such a license.

            While a popular service, Instagram’s policies regarding copyright and the chance of being muted or interrupted in the middle of a livestream remain uncertain at best. Instagram’s computers detect each and every note that is played in a video that is posted, livestream or otherwise. When Instagram detects copyrighted material in a livestream video, the stream is cut off, and the streamer and the audience are both kicked out to the home page. This forces the streamer to start its stream over, undoubtedly losing audience members in the process.

            For instance, various gyms and fitness studios have begun livestreaming classes which, almost invariably include, music. Instructors must be careful in selecting their tunes so as to avoid triggering Instagram’s copyright infringement algorithm. Kicking the instructor and the class members out of the feed kills the vibe and disengages the audience. As one solution, some instructors have decided to use only remixes or lesser-known music.

            As another example, DJs that are lesser known than DJ D-Nice (and therefore are less likely to have a separate agreement with Instagram) constantly suffer the risk of any song clip they play triggering the algorithm. Some DJs have noticed that the takedowns are triggered by the duration of copyrighted content. These DJs have therefore avoided Instagram by quickly switching between songs and, also, playing less popular music. Notably, such “solutions” may still constitute copyright infringement but are less likely to cause an interruption in the livestream.

            Penalties for copyright infringement can be expensive. In addition to actual damages for infringement, if the copyright is registered, the copyright owner may be entitled to recover statutory damages. Statutory damages range from $750 to $30,000 per work and even up to $150,000 if the infringement was willful. While this country follows the American rule that each party is responsible for paying its own attorneys’ fees, per statute, the copyright owner can also collect attorneys’ fees and court costs. Thus, if pursued to the fullest extent of the law, livestreamers could be subject to a number of severe consequences for copyright infringement.

Is a photographer owed a licensing fee in addition to compensation for time and labor for commissioned photographs to be used in the launch of a premium tequila brand?

            Los Angeles-based photographer Anais Ganouna and her company, Frank & Anais, filed a lawsuit against The Colors You Like (TCYL) and Cincoro Spirits Group (doing business as Cincoro) for copyright infringement, fraud, civil conspiracy to commit fraud, and unfair competition. Ganouna claims the defendants knowingly and unlawfully exploited her creative work in connection with Cincoro’s highly anticipated launch of its premium tequila brand in 2019. Cincoro is owned by Michael Jordan and four other NBA owners.

            Ganouna is a professional photographer and was commissioned to do a photoshoot for the defendants of the agave fields and plants in Mexico, the tequila production process, and the tequila bottles and barrels, as well as other instrumentalities, used for Cincoro’s tequila. Prior to contacting Ganouna, TCYL had used a staff photographer for the project but was dissatisfied with the quality of the images produced. According to Ganouna, her photoshoot was a “major success” and the defendants expressed their excitement at the prospect of using the images in their advertising campaign.

            For her time, Ganouna was paid a discounted day rate of $1,000 with the understanding that licensing/usage rights would be negotiated at a later point. Indeed, Ganouna claims that such rights are typically negotiated separately from a photographer’s day rate, which merely serves to compensate the photographer for its time. When Ganouna later reached out to discuss usage of her photographs, a representative for TCYL responded that it had not been made clear that licensing the photographs would cost additional money. This same representative also represented that TCYL would be hiring another photographer to do reshoots and that none of Ganouna’s photographs would be used. However, Ganouna alleges defendants never engaged another photographer for this purpose and that no reshoots ever took place.

            In September 2019, Cincoro officially launched. At this point, despite defendants’ representations, Ganouna discovered that Cincoro had indeed used a number of her images on its website, social media accounts, including Instagram, Facebook, and Twitter, as well as in paid advertising (i.e., sponsored advertisements) and by third-party vendors. As such, Ganouna, through counsel, sent a letter to defendants demanding compensation for their purported use of her photographs and requesting they cease using the same until after a resolution had been reached.

            In response to Ganouna’s letter, defendants claimed that TCYL had meta data proving that every photograph used was pulled from a video shot by TCYL and not from Ganouna’s photographs. Nonetheless, Ganouna argues that even if this is the case, the photographs selected from the videos taken concurrently with her photoshoot appear to be identical to her photographs or “extremely close derivatives thereof.” Indeed, Ganouna claims to have dressed the sets, staged the shots, and placed or directed the subjects of the shots. Moreover, Ganouna claims that video was not shot to accompany every scene Ganouna shot. To date, Ganouna’s alleged photographs remain on Cincoro’s website and social media pages.

            Ganouna’ first claim for relief, copyright infringement under 17 U.S.C. § 101 et seq., requires the use of works protected by copyright law without permission for such usage, thereby infringing the copyright holder’s exclusive rights. Under copyright law, authors of original works of authorship that are fixed in a tangible medium possess numerous rights, including reproduction, preparation of derivative works, distribution, public performance, and public display. For economic rights to a copyrighted work to be transferred, such as through a licensing agreement, the transfer must be in writing and signed by the copyright holder. Notably, such transfer does not require payment or any consideration in exchange for the granting of a license. That being said, copyright holders often do require payment or otherwise place restrictions or obligations on the licensee. Thus, in this case, the court will determine whether by accepting a $1,000 fee, Ganouna had licensed the rights to her photographs. In any event, though defendants have not responded to Ganouna’s lawsuit, defendants may maintain their position that none of Ganouna’s photographs was used, in which case no license would be required.

Can one copyright a graphic depiction of a mood?

            In an action to determine whether certain anthropomorphized characters representing human emotions qualify for copyright protection, the United States Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal of the action. The lawsuit was filed by Denise Daniels and The Moodster Company, who created “The Moodsters.” In their complaint, plaintiffs alleged that The Walt Disney company and Pixar infringed their copyrighted characters through the movie “Inside Out.” The Ninth Circuit also affirmed the district court’s denial of plaintiffs’ claim for breach of an implied-in-fact contract under California law based on plaintiffs’ alleged disclosure of information about The Moodsters to various employees of Disney and its affiliates.

            Plaintiff Daniels is an expert on children’s emotional intelligence and development and designs and promotes initiatives that help children cope with their emotions. As a commercial application of this work, Daniels developed “The Moodsters” and hired a team under her company, The Moodsters Company. The Moodsters are lightly sketched anthropomorphized characters representing human emotions. The Moodsters include five characters that are color-coded anthropomorphic emotions, each representing a different emotion: pink for love, yellow for happiness, blue for sadness, red for anger, and green for fear.

            In 2007, Daniels and her team created a 30-minute pilot episode for a television series featuring The Moodsters, titled “The Amoodsment Mixup,” which was later available on YouTube. Between 2012 to 2013, plaintiffs developed a line of Moodster products, including toys and books that were sold at Target and other retailers beginning in 2015. Moreover, plaintiff claims to have pitched The Moodsters to numerous media and entertainment companies. Notably, plaintiff alleges that the Walt Disney Company and Pixar were recurring targets, although no deal was ever reached.

            Meanwhile, Disney began development of “Inside Out” in 2010 and the film was released in 2015. “Inside Out” centers on five anthropomorphized emotions that live inside the mind of an 11-year-old girl. Slightly different than The Moodsters, these emotions are joy, fear, sadness, disgust, and anger. In addition, in Disney’s telling, yellow is for joy, blue is for sadness, red is for anger, green is for disgust, and purple is for fear.

            In 2017, plaintiffs filed their lawsuit for copyright infringement of The Moodster characters and breach of an implied-in-fact contract. According to plaintiffs, the contract arose from Disney using plaintiffs’ characters to develop “Inside Out” and the breach occurred when Disney failed to compensate plaintiffs for the material. As to copyright infringement, plaintiffs alleged infringement of the individual Moodster characters and the entire ensemble of characters. Disney responded to the lawsuit by filing a motion to dismiss, alleging that plaintiff failed to meet the standard for copyright protection and that plaintiff’s publication of the characters doomed plaintiff’s breach of contract claim. The district court granted Disney’s motion to dismiss and plaintiff appealed to the Court of Appeals for the Ninth Circuit.

            At primary issue in this case is whether The Moodsters constitute copyrightable material. While characters are not an enumerated copyrightable subject matter, courts have often extended such protection to graphically depicted characters. A character is entitled to copyright protection only if (1) the character has physical as well as conceptual qualities, (2) the character is sufficiently delineated to be recognizable as the same character whenever it appears and displays consistent, identifiable character traits and attributes, and (3) the character is especially distinctive and contains some unique elements of expression.

            Disney conceded that The Moodsters certainly have physical as well as conceptual qualities. However, the court determined that these characters do not qualify for copyright protection because they lacked consistent, identifiable character traits and attributes and were not especially distinctive. In particular, the notion of using a color to represent a mood or emotion is an idea that does not fall within the realm of copyright protection. The court noted the vast number of works featuring the idea of color psychology. The court further noted that colors themselves are generally not copyrightable. Moreover, The Moodsters changed significantly over time and therefore, lacked consistent, identifiable character traits. For example, the characters’ names changed throughout the various iterations. Indeed, other than the notion of color and emotions, there are few other identifiable character traits and attributes that have remained consistent across the various versions of The Moodsters.

            Further, The Moodsters did not qualify for copyright protection under the alternative “story being told” test. Under this test, a character can be subject to copyright protection if it constitutes the story being told. In other words, to be eligible for protection, the character must be central to the story. On the other hand, if the character is “a mere chessman in the game of storytelling,” no protection subsists. Here, the court found that the depictions of The Moodsters failed to include any substantial character development or character study. Therefore, the court held that that characters each serve as a means by which particular emotions are introduced and explored.