Category Archives: Copyright

PROTECT IP Act Introduced to Combat Online Piracy and Counterfeiting

by Christina Frangiosa


This is the first in a series, discussing the two new Bills proposed in Congress to deal with online pirates and counterfeiters.

On May 12, 2011, Senator Leahy introduced the PROTECT IP Act (S. 968 as reported), aimed at creating additional tools to combat rampant online infringement and counterfeiting. With some amendments, this Bill rocketed through the Senate Judiciary Committee, achieving unanimous bipartisan approval on May 26. The Bill was immediately placed on “hold” by Senator Wyden. It is unclear when or under what conditions the hold may be lifted, but this Bill still garners strong bipartisan support.

The Bill followed several public hearings this year alone (one in the Senate and two in the House), each focused on the problems created by unfettered counterfeiting and piracy, including by foreign web sites, of U.S. rights holders’ marks and copyrighted works and aimed at crafting mechanisms to combat that significant loss in U.S. income. It does not purport to fix all of the problems in this area and instead only addresses only the “worst of the worst” offenders.

The PROTECT IP Act provides for injunctions against any continued activities by an owner of a domain name used by an Internet site “dedicated to infringing activities” (or its registrant or operator). This order can be served upon the owner, operator or registrant of the site, but also upon certain Internet intermediaries requiring them to stop doing business with these sites.

ATTORNEY GENERAL’S ACTION (Section 3)

The U.S. Attorney General may only obtain injunctions against “nondomestic” domain names, but may serve the resulting orders on information location tools (i.e., search engines), operators (i.e., domain name registrars), financial transaction providers (i.e., MasterCard, Visa or PayPal), and Internet advertising services (i.e., Google or Yahoo!) requiring that they omit these sites from search results, block access to the site, refuse to accept payment from users of the site, or decline to distribute advertising to U.S.-based Internet users.

PRIVATE RIGHT OF ACTION (Section 4)

Private rightsholders can obtain injunctions against either domestic or nondomestic domain names, but may only serve the resulting court orders on financial payment processors and Internet advertisers as well as the owner, operator or registrant of the domain name.

Some safe harbors are provided to insulate these Internet intermediaries from liability for certain voluntary enforcement efforts. Monetary damages against either the intermediary or the web site owner/operator/registrant are not available, and monetary sanctions are not available if an intermediary ignores the initial court order and continues doing business with the site named in the court order.

SENATE HEARING PRIOR TO INTRODUCTION OF BILL 

The Senate Judiciary Committee held a public hearing entitled, “Targeting Websites Dedicated to Stealing American IP” on February 16, 2011. The witnesses were (hyperlinks lead to prepared statements submitted in support of the hearing, as available from the Senate Judiciary Committee):

Representatives for both Google and Yahoo were invited to attend, but declined to appear. At the end of the hearing, Senator Leahy announced that a new version of what had been introduced in the prior term as the Combating Online Infringement and Counterfeits Act (S. 3804) (“COICA”) would be reintroduced during the current Congressional term.

A webcast of the hearing is available on the Senate Judiciary Committee’s site.

SENATE JUDICIARY COMMITTEE ISSUED REPORT
After Sen. Wyden placed his hold on the Bill (by announcing that he would oppose any attempt to move the Bill to a floor vote under a unanimous consent), Sen. Leahy issued a committee report explaining the Bill and its purpose. S. Rep. 112-39 (issued July 22, 2011).

No further action has yet been taken on this Bill, but because a companion Bill (the Stop Online Piracy Act, H.R. 3261) has been introduced in the House, we may see some activity on the Senate’s version shortly.

New Bill Introduced in the House to Combat Online Piracy

by Christina Frangiosa


Today, a bipartisan group within the House of Representatives introduced a bill entitled, Stop Online Piracy Act (H.R. 3261) to combat online piracy. This Bill apparently acts as a counterpart to the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (“PROTECT IP Act,” S. 968) introduced in May 2011 in the Senate (see current status here). Sponsors of the House Bill include House Judiciary Committee Chairman Lamar Smith (R-Texas), Ranking Member John Conyers (D-Mich.), IP Subcommittee Chairman Bob Goodlatte (R-Va.), Rep. Howard Berman (D-Calif.), Rep. Marsha Blackburn (R-Tenn.), Rep. Mary Bono-Mack (R-Calif.), Rep. Steve Chabot (R-Ohio), Rep. Ted Deutch (D-Fla.), Rep. Elton Gallegly (R-Calif.), Rep. Tim Griffin (R-Ark.), Rep. Dennis Ross (R-Fla.), and Rep. Lee Terry (R-Neb.).

The House issued a press release today to announce the Bill’s introduction. I haven’t had time to review the Bill in detail yet, but will post an update when available about the contents of the bill and differences from the Senate’s version.

My prior posts about the PROTECT IP Act, including hearings held by both the Senate and the House can be found here.

Common Questions: Can I Copyright My Idea?

by Christina Frangiosa

In a word, no.  Ideas are not copyrightable.  Instead, the way that such ideas are expressed can be subject to copyright protection, to registration in the Copyright Office, and to enforcement against infringers.

The Copyright Act provides that copyright protection exists “in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 102.

Qualifying Works

Now, what is an “original work of authorship” for practical purposes? There are several specifically defined options for this definition – including literary works, motion pictures, works of visual arts, sound recordings, and architectural works. For purely practical purposes, these means that books, screenplays, scripts, musical lyrics and arrangements, recordings of musical or dramatic performances, paintings, sculptures, photographs, and the like can be “works of authorship.”

If you have questions about a specific type of work, check out the Copyright Office’s Fact Sheets and Circulars – these provide quick answers to questions that are commonly asked. For instance, there’s a Circular for Ideas, Methods and Systems (Cir. 31) and for Names, Titles or Short Phrases (Cir. 34). The first are more properly addressed in the context of patent law, while the second are more properly considered in trademark law. Also see the Copyright Office’s FAQs – they cover a number of common questions, including “Can I copyright the name of my band?”

Fixed in a Tangible Medium of Expression

Another key hurdle in determining whether you have a copyrightable work is to ensure that it is “fixed in a tangible medium of expression.” While an original dance performance qualifies as “an original work of authorship,” if it’s not recorded in some tangible medium (DVD, CD, videotape, 16mm film, etc.) it can’t be protected under the Copyright Act. (Theoretically, perhaps it also can’t be copied exactly.) The Copyright Act explains that a work is “fixed” for these purposes “when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” 17 U.S.C. § 101.

Copyright exists at the moment of creation – unlike patents, registration of the right is not required in order to have the right exist. However, the Act requires that copyrights must be registered before the owner has standing to file suit against an infringer. 17 U.S.C. § 411(a) (“. . . no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”). Some courts have interpreted this requirement to permit suit after the application has been filed, while others require that the owner wait until a Certificate of Registration has been issued by the Copyright Office before filing suit. (The Copyright Office provides some additional reasons why you should register your copyrights with the Office.)

Other Considerations

Even if you overcome these two hurdles (“original work of authorship” and “fixed in a tangible medium of expression”), there are other requirements for obtaining and maintaining registration that are not covered in this brief note. If you have specific questions, you can find some answers on the Copyright Office’s site, but if not, you should consult with a practitioner in this area to review and discuss your circumstances.

Update – Unauthorized Sequel to Catcher in the Rye Permanently Enjoined, by Agreement

by Christina Frangiosa

In a prior series of posts (see “fictional characters” category), I wrote about a so-called unauthorized sequel to J.D. Salinger’s classic Catcher in the Rye that the trial court ordered enjoined from publication. The publisher took the case on appeal, and the appellate court overturned that decision, ruling that the injunction could remain in place for ten days after the entry of the remand order. Salinger v. Colting, No. 09-2878 (2d Cir. April 10, 2010) (copy available on FindLaw). Following stipulated extensions of the injunction, the case finally settled for undisclosed terms.

In a “Permanent Injunction and Final Order on Consent” filed on December 14, 2010, the Southern District of New York entered a permanent injunction against the manufacture, publication, distribution, shipment, advertisement, promotion, sale or other dissemination of the book – “or any portion thereof” – in the U.S. Salinger et al. v. Colting, writing under the name John David California, et al., Civil Action No. 09-5095, ECF No. 55 (Pacer access required). The parties also agreed to forego any appeals, thereby suggesting that unless one of the parties violates the settlement agreement, we will not be seeing this particular title on U.S. shores while the Agreement is in force. (A quick Internet search reveals that the book remains available in certain markets overseas.) The Order also requires the clerk of court to close this case.

This agreed-upon settlement means that despite defendants’ victory in the appellate court, there must have been some risk remaining that they might lose at trial. Because the terms of the settlement were undisclosed, one can only speculate that this risk must have been significant enough to balance the expense they already incurred in producing the book, including publicity and advertising, and not receiving sales revenues for it. Perhaps the risk of monetary damages (17 U.S.C. § 504) or fee shifting (awarding attorneys’ fees and costs to the prevailing party – 17 U.S.C. § 505) prompted the decision.

The reversal on appeal of the Court’s initial injunction has been covered in news articles and blogs (see, e.g., New York Times coverage of the case and the appeal), but I have not seen much about the settlement and agreed-to permanent injunction.

US Trade Representative Seeks Comments on 2011 Notorious Markets List

by Christina Frangiosa


The U.S. Trade Representative today released a request for public comment regarding its Special 301 Out-of-Cycle Review of Notorious Markets. 76 Fed. Reg. 184 (published Sept. 22, 2011). In its summary of the request, the USTR explained:

“In 2010 the Office of the United States Trade Representative (USTR) began publishing the notorious market list as an ‘Out of Cycle Review’ separately from the annual Special 301 report. This review of Notorious Markets (‘Notorious Markets List’) results in the publication of examples of Internet and physical markets that have been the subject of enforcement action or that may merit further investigation for possible intellectual property infringements. The Notorious Markets List does not represent a finding of violation of law, but rather is a summary of information that serves to highlight the problem of marketplaces that deal in infringing goods and which help sustain global piracy and counterfeiting. USTR is hereby requesting written submissions from the public identifying potential Internet and physical notorious markets that exist outside the United States and that may be included in the 2011 Notorious Markets List.
 

See summary (emphasis added).

The first Out-of-Cycle review of Notorious Markets was published in February 2011, following a similar request for public comments, and is available on the USTR site. The 2011 Annual Report (published in April 2011 with country reports and a watch list) is also available.

The deadline to respond with comments is October 26, 2011. Specifically, the USTR is looking for detailed information about potential markets “where counterfeit or pirated products are prevalent to such a degree that the market exemplifies the problem of marketplaces that deal in infringing goods and help sustain global piracy and counterfeiting.” Id. ¶ 2a. If possible, the USTR would like to see location of the market, principal owners/operators (if known), types of products sold, distributed or otherwise made available, volume of traffic of the website (such as the Alexa ranking), and any known enforcement activity against it (including any requests for takedown of infringing content and the site’s response). Id. ¶ 2b.

The USTR will maintain a docket of public comments received about these markets, which will be open for public inspection, except for certain confidential business information, pursuant to 15 C.F.R. § 2006.13. This docket should be available here. (My apologies in advance if this link doesn’t work – there were no comments posted when I tested it, but I think the link will be active soon. As an alternative, visit http://www.regulations.gov/, search for public submission and enter “USTR-2011-0012” in the Keyword or ID field.)