It Should Be In the Public Domain

Artist Frank Gaylord created the bronze figures that are part of the Korean War Veterans Memorial.  He sued the U.S. Postal Service when a photo of the sculptures was used on a stamp. In take one, the Court of Claims split the baby, deciding that the photo was a fair use of the sculpture, but also found that the government was not joint owner of the sculptures.  Now on take two, the Court of Appeals for the Federal Circuit gives Gaylord the full win - it affirmed on the ownership issue, reversed on the fair use defense, and sent the case back to the Court of Claims for a determination of damages.  The unanswered question is how it can be that the copyright in a war memorial isn't in the public domain.

As a refresher, Cooper-Lecky Architects, P.C. was selected to create, build and install the Korean War Veterans Memorial.  The Memorial includes 19 statues of soldiers, a mural, granite plates at the soldiers' feet representing the reflection of rice paddies, and landscaping.  Cooper-Lecky sponsored a competition to select the sculptor for the human figures and plaintiff Gaylord won the competition.

Photo by clkohan.

A photographer, Alli, then took a photo of the statues in the snow.  The U.S. Postal Service later used the photo, with Alli's permission, on a stamp.

Gaylord sued the US Postal Service in the U.S. Court of Claims.

On fair use, the Court of Claims had bootstrapped a questionable analysis on the first fair use factor into a successful fair use defense overall, but the Federal Circuit was not so gullible (a reversal that isn't so popular, but I leave it to others to argue what "fair use" really means).

The Government's argument that it was joint owner of the work was still futile. The Court of Appeals agreed with the Court of Claims that the government's contributions to the statues - changes in ethnicity, altering soldiers so they were clean-shaven, adding buckled chin-straps, putting ponchos on the soldiers, reducing the wind in the ponchos, removing wrinkles on the solders' faces, changing the position of the lead soldier from squatting to standing, and staggering the placement of the statues in formation - were just "suggestion and criticism," not joint ownership. But even if these suggestions had risen to the level of copyrightable contribution, joint ownership requires an intent to create a joint work.  Gaylord and Cooper-Lecky had disagreed about ownership long before the statues were completed, so clearly Gaylord did not intend that anyone have joint ownership in the copyright.

But the real meat of the case is in the dissent.  As some have recognized, how can it be that a private person owns the copyright in a public monument?  Judge Newman points out in dissent that the majority's holding "is contrary to the contract provisions, contrary to statute for works done in the service of the United States, contrary to copyright law, and contrary to national policy governing access to public monuments."

The dissent and commenters are right to be outraged; Cooper-Lecky's contract said that "the Government shall have unlimited rights, in all drawings, designs, specifications, notes and other works developed in the performance of this contract, including the right to use same on any other Government design or construction without additional compensation to the Contractor.  The contractor hereby grants to the Government a paid-up license throughout the world to all such works to which he may assert or establish any claim under design patent or copyright laws . . . ."  Here is a 2000 letter to Cooper-Lecky from a government contracting officer stating in no uncertain terms that, in the government's opinion, it owns all copyrights in the work and demanding the assignment to the government:

and

The letter shows that Cooper-Lecky repeatedly claimed that it was the owner of the copyright in the work and required permission for others to reproduce it.  The government threatened to take action if there was no assignment, but must not have done so.

The majority disposes of the dissent by pointing out that the issue wasn't raised by either party but only by the dissent sua sponte, and, further, Gaylord was not a party to the contract.  Indeed, the contract language arguably doesn't require Cooper-Lecky to assign any copyright but only give a license to its own, not those of subcontractors, with a grant only to the government, not to third parties.  But perhaps now the government will see fit to enforce the contract against Cooper-Lecky and put the ownership of the work where it belongs, with the government, and then the government can dedicate it to the public domain.

Gaylord v. U.S., No. 2009-5044 (Fed. Cir. Feb. 25, 2010).

Court of Claims decision here.


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The Real MG Stands Up

The IP Finance blog has risen to the occasion, updating us on the dispute over ownership of the "MG" trademark. It has been resolved, for the moment, in favor of Nanjing Automobile Corporation.  Nanjing has worldwide rights to the MG mark and the English company that claimed to own it was ordered to change its company name to one without the letters "MG" and to transfer any "MG" domain names to Nanjing.  IP Finance story here.


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The Cloud Picks What Brand You Are Selling

Stanford Law School's Center for Internet and Society is not where I usually get content for my blog. But Larry Downs has written an interesting story about an experience with buying what could easily be characterized as a counterfeit camera battery on Amazon.com. The twist is that the vendor claims he didn't brand the battery, it was another seller facilitated by Amazon.com itself. Here's the explanation from an Amazon.com web page, as reported in the story:

The information displayed on an Amazon single detail page, called “reconciled” data, is drawn from multiple seller contributions. When a seller contributes product information to an existing item in our catalog, a decision is made about whether or not to display any changes to the product details on the single detail page. This decision is processed automatically according to business logic known as “Detail Page Control.” Detail Page Control determines which of the available product descriptions, features, titles, and additional details are displayed on the single detail page.

The selection is made based on which contributing seller has greater Detail Page Control as determined by our automated system. This could be Amazon or any seller offering the item. Detail Page Control rankings are not modified manually, but are regularly reviewed and updated automatically by our system. Some factors that affect Detail Page Control are a seller’s sales volume, refund rate, buyer feedback, and A-to-z Guarantee claims.

The original seller says he properly listed his battery as OEM, but that the above system changed it to a listing for an authentic battery.

Although the seller's story seems sympathetic, Amazon hasn't told its side yet. But it leads to interesting questions about liability, referential use by others, and overall control over your trademark and your brand in an automated world. It's highly recommended reading for anyone who has goods sold in the electronic market.

Full story here.

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There's Always Your First Name

From the caption you can guess the story in MacKenzie-Childs, Ltd. v. Victoria and Richard MacKenzie-Childs: Victoria and Richard MacKenzie-Childs started a business, didn't have the business anymore, and then there was a dispute over who owned the name.

The MacKenzie-Childs story is a little different from Joseph Abboud but still comes out the same. You remember Joseph Abboud, who sold his name as part of his business for $65 million plus, then, after his non-compete ended, tried to introduce a new line called "jaz: A New Composition by Joseph Abboud." Ultimately, the court held that Mr. Abboud cannot use his name except nominally in a sentence. I have a hard time finding any sympathy for Joseph Abboud; he was very well compensated for his name. The MacKenzie-Childs have a more sympathetic story, but at the end of the day the result is the same, individuals may no longer use their own name.

The story, as told by the MacKenzie-Childs, is that they started a business in 1983 making ceramic goods. The business started as "Victoria and Richard MacKenzie-Childs, Ltd." and the business registered a design mark for it in 1989.

In 1995 they dropped "Victoria and Richard" and allowed the registration to lapse. In 1997 the company filed two applications to register this logo:
But the company ran into difficulty in 2000, which is where the sad story starts. It was several million of dollars in debt, so the bank installed a new president, MacDonell Roehm, Jr. He then approached third-party defendant Pleasant Rowland to solicit her investment in the company. Thereafter the bank sold the MacKenzie-Childs debt to Ms. Rowland and she called the loan. The company had to file for bankruptcy, Rowland offered to purchase the MacKenzie-Childs business, and the offer was accepted by Roehm on behalf of the company. Roehm then went to work at the new company.

Rowland offered the defendants $10 million not to compete with their old business, which they rejected. Rowland then called in the MacKenzie-Childs' personal debt, putting them into bankruptcy, which allowed her to acquire many of the couple's personal assets also. Ultimately the MacKenzie-Childs started a new business using the mark "Victoria and Richard"; the new MacKenzie-Childs company sued.

A sad story, but that didn't help the MacKenzie-Childs' trademark claim. The asset purchase agreement transferred "Intellectual Property," defined this way:

all intellectual property, including, without limitation, . . . all trademarks, service marks, trade dress, logos, trade names, brand names and corporate names (including, without limitation, the name “MacKenzie-Childs”, and all derivatives thereof), together with all translations, adaptations, derivations, and combinations thereof and including all good will associated therewith, and all applications, registrations, and renewals in connection therewith . . . .

The only struggle for the court was what exactly the transferred marks were. The court previously denied summary judgment in 2008 largely because discovery had not even begun, but in 2010 it was easy going. There was no argument that the two newer marks as shown in the registrations were transferred. Although the court denied summary judgment on the ownership of "Victoria and Richard MacKenzie-Childs" in 2008 for lack of evidence, by 2010 plaintiffs dropped their claim of infringement against defendants' use of "Victoria and Richard." The unregistered mark "MacKenzie-Childs" was also in dispute, with defendants claiming there was no such mark despite the APA's specific mention of it. In 2008 summary judgment was denied pending more discovery; by 2010 there was evidence that "MacKenzie-Childs" was a mark and consequently it was owned by plaintiff. A garbage can filled up with the remaining claims.

You can't help but think that there is more to the story about how the MacKenzie-Childs lost their company and how culpable they might also have been. But at the end of the day it didn't matter how it happened, the company was gone and the marks with it.

MacKenzie-Childs, Ltd. v. Victoria MacKenzie-Childs, Richard MacKenzie-Childs and V& R Emprise, LLC, No. 06-6107T (W.D.N.Y. Jan. 9, 2008).
MacKenzie-Childs, Ltd. v. Victoria MacKenzie-Childs, Richard MacKenzie-Childs and V& R Emprise, LLC, No. 06-6107T (W.D.N.Y. Feb. 1, 2010).


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Guide to Due Diligence

Neil Wilkof at the IP Finance blog has a great post on due diligence on IP ownership. The post walks through the various ways that IP rights can be acquired and transferred, as well as modalities of default rules in different countries. Definitely something to keep in the file drawer, if not stuck on the bulletin board.


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Off-Topic

It's off-topic, but I encourage everyone to go take a look at
opensource.com, a web site launched today by my employer, Red Hat. It's a place to talk about open source and the power of working openly and collaboratively. Come join the conversation.

Can NBC Own the Intangibles?

Law.com is reporting that Conan O'Brien will have to give up the intellectual property rights in the characters and recurring skits that he developed during his NBC career. It's not all entirely clear who owns what and who's giving up what. The New York Times reports NBC claims to be co-owner of Triumph the Insult Comic Dog with former writer Robert Smigel; The Hollywood Reporter says Smigel's reps aren't talking. The Smoking Gun reports that some of the music is "safe" because drummer Max Weinberg and guitarist Jimmy Vivino registered the copyright in it, but that's not at all apparent from the database records - all that they show is that there is some document on record at the Copyright Office between NBC (and others) and EMI that involves 4993 titles, including four musical pieces for the Masturbating Bear and three for Pimpbot.

(click to enlarge)

Because television a collaborative business it's a messy problem. But even once it gets straightened out, what will NBC really own? Everyone seems to be in agreement that the goal is to prevent Conan O'Brien from using the bits elsewhere, not that NBC is going to exploit them itself. It couldn't; the characters and skits would be only an unfunny imitation without Conan. Everyone is also in agreement that it's trivially easy for Conan O'Brien to take the same comedic concepts and apply them in a context different enough to avoid infringement. They won't have the same titles and character names, but they will nevertheless be similar because they come from Conan's unique sense of humor. Humor is one intangible property that can't be assigned.

More here and here.


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