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.

PSB&N Trademark Practice Group Launches New Web Site and Blog

by Christina Frangiosa


The PSB&N Trademark and Copyright group has just launched its new website and blog, with an eye toward providing an information source on recent developments in the trademark, copyright and unfair competition fields. Of particular note are the primers describing the trademark application process in the U.S. and in foreign markets. Bios for the group and the site contributors are available. The group’s blog, Beyond Confusion, can be separately accessed and you can subscribe directly to receive updates as they become available.

And, yes, this is my firm and my department, so I’m personally quite pleased about the new site. We hope you’ll visit.

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.

Facebook Sued for Trademark Infringement of “TIMELINES” Mark

by Christina Frangiosa


Timelines, Inc., has filed suit in the Northern District of Illinois against Facebook, seeking to enjoin the launch of its new product, which it has marketed under the name “Timeline.” Plaintiff Timelines owns three federally registered trademarks on which it bases its suit: “TIMELINES” (Reg. No. 3,684,074); “TIMELINES.COM” (Reg. No. 3,764,134) and a graphic depiction of the word TIMELINES (Reg. No. 3,784,720). Each of these trademarks has been registered in Class 42 for: “Providing a web site that gives users the ability to create customized web pages featuring user-defined information about historical, current and upcoming events; and application service provider, namely, managing web sites of others in the fields of historical, current and upcoming events.” (Emphasis added).

In its Complaint, Plaintiff Timelines alleges that around September 23, 2011, it learned that Facebook was planning to launch a service called Timeline – and make it available as early as October 1 – which is described at https://www.facebook.com/about/timeline. (ECF No. 1, Complaint, ¶ 8; Pacer access required to access this document). (The link to Facebook’s explanation of its new Timeline product was active when I checked it this afternoon, but perhaps it will disappear (or be “inaccessible”) during the pendency of the lawsuit – particularly if a temporary restraining order (TRO) is issued.) Plaintiff Timelines alleges that “this service is identical or nearly identical to what Timeline offers” (id.), that Facebook knew it was causing confusion (id. ¶ 9) and that Facebook has now disabled access to Plaintiff Timelines’ own Facebook page (id. ¶ 10).

For context, Plaintiff Timelines explains that its own website has averaged approximately 97,000 visitors per month in 2011 and that it has “invested several million dollars into its business and has taken swift action to protect its Marks.” (Id. ¶¶ 24, 27).

Plaintiff Timelines alleges trademark infringement (§ 1114) based on likelihood of confusion deriving from a false implication of sponsorship or affiliation, and willful infringement, all resulting in claimed immediate and irreparable harm, leaving Timelines without an adequate remedy at law. (Id. ¶¶ 33-39). It also alleges false designation of origin (§ 1125), which it claims will improperly suggest a relationship between Timelines and Facebook and “destroy the source-identifying function and goodwill that Timelines has cultivated in its TIMELINES marks.” (Id. ¶ 43). Again, Timelines makes a claim of willful infringement on this second count. Timelines also seeks relief under state consumer fraud laws and the uniform deceptive trade practices act. (Id. ¶¶ 48-59).

Plaintiff Timelines seeks temporary, preliminary and permanent injunctive relief to prevent Facebook from using TIMELINE or TIMELINES or anything confusingly similar as well as money damages and “any other relief the Court deems just.” (Id. ¶ 12). It seeks attorneys’ fees, court costs, compensatory damages, exemplary damages, Facebook’s profits, treble damages based on the willful infringement claim, and punitive damages pursuant to the consumer fraud claims. (Id. Prayer for Relief). It also seeks publication of corrective advertising and a written accounting by Facebook within thirty days of the entry of the order detailing the “manner and form” in which Facebook complied with the order.

There may be a typo in the Complaint – in the Prayer for Relief, Timelines requests “That Facebook recover its costs of court” – which makes no sense, so they must have meant to request “That Timelines recover its costs of court.” (Id. at page 11).

Plaintiff Timelines also filed its motion for TRO today, along with a memo of law in support. ECF Nos. 7 & 8, Civil Action No. 11-6867 (N.D. Ill.) (Pacer access required to access these documents). In its motion for TRO, it specifically requests that Facebook be prevented from using these trademarks, from launching the service using these trademarks, and be required to distribute corrective advertising to dispel the “false and misleading impression” caused by Facebook’s promotional materials to date. ECF No. 7. (In other words, it only seeks a TRO to prevent further damage caused by Facebook’s alleged actions – any monetary damage claims will be handled at a later point in this case.)

Counsel for Plaintiff Timelines are Douglas Alan Albritton and James Terrence Hultquist, of Reed Smith LLP, in Chicago. The case has been assigned to the Honorable John W. Darrah and Magistrate Judge the Honorable Nan R. Nolan. No appearance has yet been entered on Facebook’s behalf.

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.