Before You Sue for Copyright Infringement You Must Register Your Copyright

By Debby Winters

In 2019 the Supreme Court held that a copyright infringement action may only be brought after the copyright is registered. Fourth Estate v.

The Copyright Act states that “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made[.]” 17 U.S.C. § 411. Despite this straightforward language, federal courts were divided on the interpretation of “registration.”

The Fifth and Ninth Circuits had adopted an “application approach,” holding that a copyright owner needed only to file an application, deposit the work and pay the fees to the US Copyright Office before initiating an infringement suit. Meanwhile, the Tenth and Eleventh Circuits had adopted a “registration approach,” holding that a copyright owner may only bring an infringement suit after the US Copyright Office had registered the copyright.

The issue presented to the Supreme Court was whether “registration . . . has been made” when the copyright owner delivers the required application, deposit and fee to the US Copyright Office, or only once the US Copyright Office registers the copyright. Reviewing the language of Section 411, Justice Ginsburg explained that while an author has rights in their work immediately upon creation and may recover for infringements occurring both before and after registration, the copyright owner must register the work before filing an infringement action.

Since this decision was issued, lower courts have grappled with an issue not squarely addressed by the Supreme Court’s opinion: whether a copyright owner may amend its complaint to include works registered after the filing of the complaint. Courts in California and New York have held that Fourth Estate bars the addition of infringement claims relating to copyrighted material registered after the commencement of the lawsuit. See Izmo, Inc. v. Roadster, Inc., No. 18-CV-06092-NC (N.D. Cal. June 4, 2019); Malibu Media, LLC v. Doe, No. 18-cv-10956-JMF (S.D.N.Y. Apr. 2, 2019). Given the registration requirement and the refusal by courts to allow amendment of infringement claims based on subsequent registration, it is imperative that copyright owners timely seek registration of their works to ensure protection.

Are copyright laws alive and well?

By Debby Winters

I’ve recently come across two interesting articles discussing copyright laws that I thought I would share.

The Washington Post published an article entitled “David Bowie was wrong about copyright — thankfully” in which the writer explains how the recently deceased musical genius declared that “I’m fully confident that copyright, for instance, will no longer exist in 10 years.” The author of the article, Robert Gebelhoff, writes that we “can be thankful that his prophecy did not come true, as copyright laws continue to play an essential role in our creative economy —and have done so for centuries.”  He goes on to explain why he thinks copyright law is still strong and states that “despite the rise in Internet streaming — and all those people who think they’re clever by downloading MP3 files straight from YouTube — artists still own their music and can make good money off of it.”

This bring me to the second interesting article about YouTube and how it polices what is posted on its site. In “What Beyoncé And Justin Biever Taught Me About Fair Use,” Emily Hong explains her story about making a mashup that superimposed Beyoncé’s “Grown Woman” audio and the Bieber video from “Sorry.” She then uploaded the video onto YouTube, or at least she attempted to. She was served copyright claims in both video and audio components, her video was blocked, and she lost some of her channel privileges  Also, her video was immediately flagged by YouTube! YouTube has made many changes in recent years to prevent being implicated in copyright disputes. If you think they won’t flag your infringing material, think again!

I, for one, am glad to see someone out there policing things for the rightful copyright owners! AND that copyright laws are alive and well!


Trademark and Wine/Beer end of the year update

By Debby Winters

I reported on a blog post in December 2014 by the folks at “Trademark & Copyright Law” in which they discussed the year in terms of two important things: Trademarks and Adult Beverages. Their 2015 Buyer’s Guide is now out.

Notable among the cases mentioned is the one about NUT SACK DOUBLE BROWN ALE. If you recall, I blogged about this case in my November 15, 2015 blog entitled “What does it mean to be immoral or scandalous? Is that name immoral? or scandalous? Did you weigh in with your opinion?

A quick glance down this extensive list of beverages shows there are cases about name confusion like the case of KNOTTY BRUNETTE & NUTTY BREWNETTE Beer, as well as cases of what’s termed  trademark counterfeiting, such as KAHLUA & KAHFUA. There are also cases where the names are not similar but the logos are, such as GREAT WHITE & MAD BEACH Beer. These few examples don’t even begin to touch the surface of what you’ll find on this list.

Take a look at the list and see if you recognize anything. Let me know if you find these names confusing or infringing! At least, after looking at the list, you will have some talking points for your next holiday party, as I bet most of your friends are not as savvy when it comes to Trademarks and Adult Beverages as you’ll be after going through this list!

Here’s to Trademarks and Adult Beverages!

Happy Holidays!

Coffee vs. beer- Another David and Goliath story?

Starbucks and the $6 check

By Debby Winters

What do coffee drinks and beer have in common? Would you confuse one for the other? No, this is not going to be about the health benefits of coffee vs. beer. It is going to be about the Goliath, Starbucks, and the Davids of the world…as least as far as trademark infringement goes.

Recently, Starbucks, one of the largest companies in the US sent a “cease and desist” letter to a brewery in Missouri. In this letter, Starbucks claimed that the brewery, who was serving a beer called “Frappicino,” was confusing customers with Frappucino, Starbucks’ signature coffee drink.

The pub, Exit Six Pub and Brewery in Cottleville, Missouri, not only wrote a mocking letter to Starbucks and its lawyers, but also sent a check for $6 for damages Starbucks may have suffered due to the debacle that Exit Six Pub inadvertently created. In addition, the Brewery renamed its beer from Frappicino to “the F word.” The story has gone viral.

While the entire incident was pretty humorous, it calls attention to the way large corporations go after small businesses for what seems pretty silly “similarly confusing” products when what they should be doing is going after foreign companies for real trademark infringement.

The recent Chick fil-A trademark incident is another example. Are today’s customers so confused that they think walking into a bar and orderina beer is the same as ordering a coffee drink at a big nation chain like Starbucks? It is true that Starbucks is on every corner, and it is also true that many businesses have “merged” together in the same working space but I think we need to give today’s customers more credit than that.

The excuse that the Goliath large corporations use is that one must be vigilant about keeping others from using its mark, if one wants to retain rights to the mark itself, but customer confusion must be taken into account. If two products with a similar name would not confuse the customer, then there is no confusion and thus no trademark infringement. What the Goliaths are doing is forgetting about customer confusion and going after anyone using a similar mark for any product. In reality these alleged infringers, the Davids of the world, may even be able to register their mark considering they would do so in a different class from the marks of the large corporations.

Starbucks is no stranger to trademark infringement. In 2001 Starbucks alleged Black Bear Micro Roastery was using the name “Charbucks” and that infringed, blurred, and tarnished its famous trademarks. Charbucks, introduced in 1997, is Black Bear’s darkest roast coffee. The court found minimal similarity and weak evidence of actual association between the two brands. This court said no to trademark infringement of a name that sounds similar with the same product, coffee. The silliness of going after a beer as being confusing in light of the court ruling in the coffee case shows that Starbucks never had a chance to showing infringement. The point for Starbucks is to scare small companies into giving up the use of a “similar” name, hoping to never get into court where they have to prove their case.

It isn’t like Starbucks hasn’t won in one of these cases because they have. Starbucks has won trademark infringement lawsuit against a Chinese company that used a similar name and logo. A Shanghai court ordered Shanghai Xingbake Coffee Shop to pay Starbucks 500,000 yuan ($61,956) in damages, which is believed to be one of the largest awards against a Chinese company for trademark infringement. The court also said that Shanghai Xingbake must stop using the name and logo, which translates to Starbucks in English, the company said. This was the second favorable ruling for the company in an international trademark case, a Starbucks spokeswoman, Lara Wyss, said. Starbucks, which is based in Seattle, won trademark protection in Russia in November after an individual there tried to register the Starbucks name and logo.  This is where Starbucks should concentrate, on folks that are actually using its name and logo.

Starbucks and other large Goliaths, like Chick-fil-A, should stop bothering the small businesses Davids that are selling products that would not confuse customers anyway, and concentrate its resources on overseas companies that are actually infringing.


Is Imitation Always Plagiarism?

by Debby Winters

“I’ve been imitated so well I’ve heard people copy my mistakes.” ― Jimi Hendrix

So, what’s the big deal about plagiarism? Everyone does it. Right? Well, not everyone, but a lot of people do. A recent example is Sen. Rand Paul. When questioned about it, he said he was being held to an unfair standard. Wonder why he thinks the standard he is being held to is any different from the one every student, every politician, and everybody is held to? He went on to say that he was going to start putting footnotes on his speeches and anyone who requested a copy with the footnotes would be given one. Nice try, Sen. Paul

One of the problems with plagiarism is the subject of Jimi Hendrix’s quote, that if one person makes a mistake, that mistake is perpetuated by just copying the work of another. I recently had this happen in a class that I teach. One student did the work, with mistakes, and other students merely copied the answer, with the mistake-which made it more than obvious what had happened. Whether Sen. Paul has perpetuated the mistakes of others has not come to light but in one speech he used word-for-word Wikipedia entries. And while Wikipedia entries have references cited, since most of the content is voluntary, the accuracy of the information is not always checked so Sen. Paul may indeed end up perpetuating mistakes with his word-for-word Wikipedia speeches.

Additionally, Sen. Paul took the language for some written op-ed articles directly from articles written by another person. Not only is this a blatant example of plagiarism, but it is a blatant violation of copyright. Copyright infringement cases are filed every day. One huge copyright case that was just decided was against the search-engine giant, Google, Inc. This suit was brought challenging Google’s right to digitally copy millions of books for online searches using its Google Books. The courts decided that Google Books provides a public benefit and therefore fits into the fair use exception to copyright infringement. Maybe Sen. Paul needs to think about this as his next line of defense. I’m not sure how he would swing that but we all know the Sen. Paul is creative, well, as long as someone has already said it before him.

Copyright Confusion

By Debby Winters

I recently read an article in my local newspaper about copyright on tattoos. Earlier that week I received a question in a class that I teach about copyright and how it relates to teaching. Maybe it is time for a review of copyright law and how it affects our everyday lives.

The truth of the matter is that copyright law is the most straightforward of all the Intellectual Property laws. It protects any original expression that exists in a tangible form. What it does not protect is general ideas or procedures. While it is not required to have a copyright registration with the U.S. Copyright Office, taking this additional step beyond creation, where copyright arises, ensures that these legal rights can be enforced should someone infringe upon your work.

The basic thought behind copyright is that you always need permission to use another person’s work unless an exception applies. The most common exception is what is termed fair use. The determination of whether a use of a copyrighted work is within fair use depends upon making a reasoned and balanced application of the four fair use factors set forth in Section 107 of the U.S. Copyright Act. Those factors are

  • the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  • the nature of the copyrighted work;
  • the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • the effect of the use upon the potential market for or value of the copyrighted work.

While fair use is intended to apply to teaching, research, and other such activities, an educational purpose alone does not make a use fair. Based on the fair use provision, using another’s work in teaching is not an infringement of copyright. While that is true, it is always a good idea to acknowledge the person who created the work.

Let’s move on to the tattoo situation. The article discussed the very distinctive tattoo that Mike Tyson has on his face. Warner Bros. recreated a very s
imilar tattoo for Ed Helms’ character in The Hangover Part II. The tattoo artist that created Mike Tyson’s tattoo sued Warner Bros. This was not the first time a case like this has come about. Last year a tattoo artist sued video game maker Electronic Arts and former Miami Dolphin running back Rickey Williams over a tattoo. This case was settled before going to court but has been controversial in the football world due to the large number of NFL players who sport distinctive tattoos. The case over The Hangover tattoo also settled out of court. Since these cases have settled, we have no court decisions on this issue yet.

One question that arises, among others, is whether one person can own an integral part of another person’s body.  Another question is whether the human body constitutes a tangible medium, something that is required for even common law copyright to arise. Since a tangible medium is usually taken to mean that it just has to be written down in some way and to persist for more than a transitory duration, even the human body would meet the standard. But what rights attach to this form of copyright remains unclear.  As more and more people in our society get tattoos, this will be an interesting area to in the future. Which way will the courts go with this one?

Are Video Games That Use Athletes Names Violating Trademark or Copyright Laws?

By Debby Winters

Not too long ago I overheard two men discussing football video games. They were using the names of actual NFL football players and that made me wonder what the law is on using things that were subject to trademarked or copyright infringement.

Trademark law protects any word, device, symbol or the like that functions to identify source or sponsorship or affiliation of a good or service. That can be a name, such as Madden for video games. It can be the design of a logo, such as an eagle’s head on a football helmet, or the colors on a uniform. The owner of the trademark is the entity that controls the nature and extent of the use of the mark. Copyright law protects works of expression. This can include code for a game, the art or other representations of objects seen in screen shots, and the artistic renderings of various characters depicted on emblems. The right of publicity, a creation of state law, precludes the unauthorized use of a celebrity’s name or likeness or other identifying indicia for commercial purposes.

So what does all of this mean? Each of these rights is subject to a fair-use defense that essentially exempts from liability certain uses of a celebrity’s name or likeness or identifying characteristics, whether as a trademark or in a manner analogous to trademark use for purposes of identification that are fair and not misleading, such as in a biographical piece or as a title of unrelated work.

There are aspects of video games that make the traditional fair-use defense more difficult, but not entirely untenable. This is so even if the game, as it is played, presents no actual game but the figures represent actual, identified players.  There have been numerous cases covering these areas, but there is no clear direction that these cases lead us to. So for now, I leave it for you to ponder whether these games pose a violation of copyright or trademark law or if the right to use the likeness should depend fair-use as long as it is not misleading. However, the courts come down on these cases, clearly we will hear more about this as the number of cases filed on these topics increases every year.