Architects and Engineers: Look to Copyright for Protection

Sadly, it’s a recurring nightmare for architects, designers, developers, builders and others working in or servicing the construction industry.  You work hard and prepare a great set of plans and then, surprise, you are told that the project is canceled.  Sometimes the project is canceled before the plans are even finished. 

But then, months later, you discover that the project is on again except you never got the call.  And the client is using your plans anyway.  Or perhaps the client moved on to a new project and used your plans there.  You might not even find out until the project is built.

Of course in none of these cases did you give permission.  In fact, your contract may have expressly said that the client cannot use your plans for the original project, or any other, without your participation.  Do you have any real options?

The usual suggestion, file a breach of contract suit, may not be the way to go.  You have no leverage and a long wait to get to trial. And, your recovery may be limited to the value of the plans which may be less than your attorneys’ fees.

The better option may be a copyright infringement suit.  Your plans are copyrighted as soon as they are prepared. It is automatic.  Plus, under the Architectural Works Copyright Protection Act, you can copyright completed buildings as well as drawings.

A suit for copyright infringement gives you tremendous leverage since one of the remedies is an injunction against use of the plans.  A second remedy is the profit that the infringer gains from the use of your plans.

You will need to register your copyright before filing suit.  If you register before the infringement begins, or within three months after the first publication of your plans, you may be able to recover statutory damages of up to $150,000 for willful infringement, plus attorney fees. You might even consider making it a regular practice to register your plans on a quarterly basis to protect yourself.

But wait, there’s more.  In some cases infringers have been known to remove title blocks from plans to cover up their infringement. That gives you another option, even if you haven’t registered your copyright, which is a claim under the Digital Millennium Copyright Act (DMCA) that protects against removal of copyright information from copyright protected works.  And the DCMA provides the option of statutory damages up to $25,000 plus attorney fees to the copyright owner.

So, next time that project falls through, all may not be lost.  Copyright law may be there to protect you.

Also, check out this post at ArtLawJournal.comCopyright for Architectural Designs

About 

Jerold I. Schneider has been actively involved in over 200 intellectual property lawsuits and has obtained over 1000 patents and trademarks for his clients. He is Board Certified in Intellectual Property Law by The Florida Bar and “AV” rated by Martindale-Hubble. You can reach Jerry directly at 561.404.4339 or by email to jerold.schneider at sriplaw.com.

Calling all Realtors: Learn Copyright and Fear Not the Cease and Desist Letter!

Misinformation abounds on the internet.  There is nothing new about that.  But it is especially true when it comes to copyright law.

The real estate industry has gone to great lengths to educate its members on copyright to help them avoid infringement.  The National Association of Realtors has been actively warning agents for years.  NAR counsels its members against violating others copyrights in many different forums.

For example, this article entitled Law & Policy: Do You Understand Online Copyright Law? does a fine job explaining the issues.  How about Online Oversight: Adopting and enforcing clear digital use policies reduces your brokerage’s potential liability?  Maybe you saw a blog post about Google’s algorithm punishing infringers that began “Do you reuse articles or blog posts on your Web site or blogs to generate extra real estate content?”  Or, even more to the point: Is Your Blog Legal? Interconnectivity can breed infringement.

So, with all the attention paid to copyright among real estate professionals, why are we still seeing articles like IDX Copyrighted Photo Trouble?  The blogger/agent claims he settled with Getty Images after receiving an email from an attorney for Getty claiming that the agent displayed an infringing image in his website’s IDX feed, an image he claims was placed in the listing by an unrelated agent.

Someone does an image search and everyone that shows up displaying that copyrighted image gets the “email“. In this case, the Broker was listing a new complex with a pool. There are no pool shots in New England in March (check back in late June) so they grabbed one from the net and published it. (If you are interested, it was someone floating around in a pool on raft)

The original Broker was left untouched, as their website could not be found. I settled for a lesser amount than that shown below. Note if I missed the date, it would have been 5x the indicated amount.

The amount “shown below” was $1,400.

Can this really be true? I have my doubts. There is no question that Getty has been aggressive about pursuing infringers.  However, Getty’s lawyers understand copyright too. They know that your local MLS is a service provider entitled to DMCA safe harbor under Section 512 of the Copyright Act.  As a result, websites that display MLS listings using an IDX feed are also entitled to DMCA safe harbor.

If this blogger was the listing agent, well, that’s a different story.  But if the facts are really as represented then this agent has parted with his money for no good reason.  He should have taken the letter from Getty’s lawyers, gone straight to the MLS that supplied his IDX feed, and advised them to take down the infringing image.  If Getty persisted, the IDX feed user should have demanded to be indemnified by the MLS since the MLS provided the feed with the infringing photo in the first place.

Perhaps asking the local MLS to come to this guy’s rescue is asking too much.  Especially when MLS organizations perpetuate misinformation by publishing ridiculous articles entitled “Take Your Own Photos and Avoid Legal Action.”

The article starts off in a menacing tone describing Getty’s business as “stockpiling images” and then linking out to a law firm that represents Getty in infringement claims.  The article continues by perpetuating fear among agents by claiming that “in many of these current cases, Getty is going after the end user. . . they have sent letters to some agents who offer IDX solutions on their websites, even though the offending image was loaded by another agent whose listings and listing photos are simply sent out to them in IDX data feeds.”

But this is my favorite part:

While copyrights and the laws that surround them can be confusing, it basically comes down to one premise; unless you have received express written permission from the copyright “owner”, you are infringing the copyright. And that sentiment is taken a step further in the Photography and Copyright law:

“…the person who displays the photos or artwork on their own website is the only one liable”.

That quote in italics appears menacing, right?  In fact the whole passage quoted above is scary.  But guess what?  It’s wrong.

Who is this “Photography and Copyright law” being quoted anyway?  I couldn’t figure it out.  I searched the direct quote and could not find this mysterious sage.  Which is all well and good since he or she is sorely mistaken.

Proof, once again, that you should not believe everything you read.  Especially on the internet.

 

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

VHT wins blockbuster $8M+ verdict against Zillow for copyright infringement of real estate photos

VHT, the real estate photo giant, filed suit for copyright infringement against Zillow Group in July 2015 alleging that Zillow had been stealing tens of thousands of VHT’s photos and illegally using them for its own profit and gain on the Zillow Digs website.

At the end of the two week trial the Seattle jury found that Zillow failed to prove it could use VHT’s photos either under license or fair use and that Zillow therefore infringed the copyrights in 28,125 of VHT’s real estate photos.

The jury also awarded VHT $79,875 in actual damages, for a total award of $8.3 million for copyright infringement.

Zillow launched the “Digs” section of its website on February 5, 2013, calling it “a compilation of photos taken from the company’s vast images database.”  Zillow touted to investors a “terrific uptake in engagement and user generated content, with more than 76,000 photos added by our community of users, and 80,000 content boards created.”

Zillow Digs was flagged by real estate photographers early on as a haven for infringement.  Many real estate photographers instantly recognized photos on Digs as ones they had licensed for use only in connection with the sale of a specific real estate listing.

Zillow believed it was licensed to use the images, or that it was entitled to DMCA safe harbor.  Neither defense was successful at the trial.

 

What’s next?  Zillow says it plans to appeal.  However, the battle will be uphill for Zillow.  We congratulate VHT for an important, hard fought win.

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

SRIPLAW Covers the United States

The attorneys of Schneider Rothman are admitted to federal courts across the nation.  There is hardly a corner of our country that our lawyers cannot cover for our clients.  Where we do not have regular admission, we have co-counsel standing ready to assist us.

We have regular admission to federal courts or can be regularly admitted in the following states (shown in green):

Florida
New York
Michigan
District of Columbia
Maryland
Virginia
Illinois
Texas
Colorado
Nebraska
Indiana
Arkansas
Tennessee
Oklahoma

We have co-counsel relationships in the following states (shown in orange):

California
Maine
New Hampshire
Massachusetts
Connecticut
Rhode Island
New Jersey
Pennsylvania
Mississippi
Wisconsin
Nevada
Arizona
Utah
Washington

We are always looking for new relationships with good IP lawyers in other states.  Feel free to contact us!

 

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

Real Estate Photography

Photography: It could be worth millions

If you find it on the internet than it must be free.  How wrong is that! It’s about time that photographers get the respect they deserve and their photographs receive the value that they deserve.

Copyright infringement plaintiffs are entitled to recover actual damages or statutory damages.  Here are some ways those damages are computed.

Actual Damages

Actual damages in copyright infringement cases are based on the amount the photographer would have charged for the infringing use, plus the defendant’s profits from the infringement.  The jury’s determination of actual damages will be guided by expert witness testimony.

The case of Leonard v. Stemtech is a great example. The plaintiff, Andrew Leonard, is an accomplished photographer who creates his images using an electron microscope.  Leonard is a highly skilled and experienced creator of microscopic photography.  In Leonard’s case, the jury considered the expert testimony of Jeff Sedlik.

Leonard’s images are highly desirable, particularly in the medical, pharmaceutical, and biological research industries. Leonard is one of only a very few photographers who are capable of producing quality images of cells.  Few if any photographers besides Leonard have successfully captured a quality image of a cancer cell or bone marrow stem cell.

After considering Mr. Sedlik’s testimony, the jury awarded Mr. Leonard $1.6 Million for infringement of two electron microscope images. On appeal, the Third Circuit Court of Appeals in Philadelphia affirmed.  The Court found that Leonard’s images are in high demand, unique and scarce, and these factors increased the amount that Leonard was entitled to as a reasonable licensing fee for his images.

Factors such as scarcity, the infringing use, the type of use, and that the work is the result of a unique, difficult, or expensive process, such as the electron microscope image in question, are all factored into the determination by a jury when pricing a license.

Profits from the Infringement

Section 504 of the Copyright Act allows the plaintiff to recover “additional profits of the infringer that are attributable to the infringement.” Often, a cause and effect relationship can be shown between the plaintiff’s photograph and interest in the defendant’s goods or services.

It has been demonstrated many times that the addition of a photograph in the context of a brochure or website increases the reader’s attention to the material.  If any recipients of the brochures in question or any visitors to the defendant’s website can recall the plaintiff’s photograph then the photographer will be entitled to discover this and, if so, some amount of the defendant’s earnings from its services will be recoverable.  How much will depend upon several factors, and will also be based upon expert testimony.

Statutory Damages

If the image sued upon was registered prior to the infringements at issue then the photographer will be entitled to statutory damages in an amount up to $150,000 if the infringement is determined to have been willful.

 

 

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

Real Estate Photography

Do Real Estate and Architectural Photographers Need their own Association?

Our firm represents many real estate and architectural photographers. Our experience suggests that the unique challenges facing real estate photographers are not currently being addressed by the different photography associations.  Which raises the question, should real estate and architectural photographers unite and form their own association to represent their interests?

The Existing Photography Associations do not Cover RE and Architectural Photography

None of the existing photography associations address the day to day concerns of real estate photographers.  The American Society of Media Photographers (ASMP) serves the needs of independent photographers who freelance for written and on-line publications.  The American Photographic Artists (APA), of which I am a member, focuses heavily on written and on-line advertising photography.  The Professional Photographers of America (PPA) focuses on wedding, portrait and studio photography.  While all these groups do wonderful things for their members, the have to date failed to address the unique challenges that real estate and architectural photographers face in the current marketplace.

Another great organization is PAPA, the Professional Aerial Photographers Association.  To the extent that real estate and architectural photographers are flying drones, balloons or taking pics from the air, this is a great group. But its only focus is aerial photography and it does not cater to the needs of real estate and architectural photographers.

The Blogs and Clubs for Real Estate and Architectural Photographers Cannot Advocate for their Interests

I am a big supporter of the places where real estate and architectural photographers gather online.   Photography for Real Estate is an awesome blog and I am so thankful to Larry Lohrman for featuring me there so often.

The Real Estate Photographers of America & International and the Association of Independent Architectural Photographers, both run by Alan Blakely, are great organizations that promote the professional success of professional real estate and architectural photographers.  All members must pledge to follow the highest level of honesty and integrity, and be above reproach in all professional business practices.  Alan is a tremendous supporter of the interests of real estate and architectural photographers around the world, and I commend him for his work.

Unfortunately, as wonderful as Larry and Alan are, and they are wonderful, they are just two voices among many.  Furthermore, Larry and Alan are naturally focused on the resources they have created on the internet, rather than the needs of real estate and architectural photographers generally.

Why I think Real Estate and Architectural Photographers Need a Voice

The reasons are many.  This is not meant to be an exhaustive list.  But I think I have covered the important ones.

  • To Promote the Value of Great Images.  It has been proven over and over again that professional photos taken by professional real estate and architectural photographers sell homes faster and for more money.  But what happens when everyone who has an iPhone in their pocket thinks that they are a professional photographer?  Bad photos and depressed prices for photographers.
  • To Protect Great Images from Infringement and Free Riding.  Unscrupulous real estate agents, or even scrupulous ones who just don’t know any better, treat the internet, MLS and even social media as their free stock photo database.   The hard work of real estate and architectural photographers is already under valued.  When agents and brokers take what they want without asking the photographer loses.
  • To Educate Photographers, their Clients, and the Real Estate Industry. Ignorance is not bliss, ignorance hurts.  It hurts real estate photographers especially.  Agents, technology providers, and MLS’s all have representation.  Real estate agents, MLS’s and technology providers could not survive without great photography.  Yet real estate and architectural photographers have no representation.  No one is speaking to NARCMLS or Zillow on behalf of real estate or architectural photographers.

Why is this Important?  

Protecting great images protects the livelihood of every real estate photographer. Promoting the availability of great images, and the value they offer, promotes real estate and architectural photography generally.  Educating real estate agents and others who rely on professional real estate and architectural images to respect those images increases their value and the value of the photographer’s services.

What else increases value? Using a written or electronic licensing agreement increases value. Storing identifying information in EXIF metadata or watermarks increases value. Real estate agents and MLS’s respecting images increases value. And, most importantly, standing up for the rights of real estate photographers increases value. But who will stand up for photographers?

Case in Point: CoreLogic

I am one of the attorneys who represent members of a proposed class of real estate photographers in In re: Multiple Listing Service Real Estate Photo Litigation, Case No. 14CV1158 BAS (JLB) filed in federal court against CoreLogic, Inc. in the Southern District of California.  We brought this case to stop CoreLogic’s longstanding practice of stripping out copyright management information (“CMI”) metadata from real estate photographs in violation of the Copyright Act of 1976, as amended by the Digital Millennium Copyright Act (“DMCA”). I know from my work with real estate photographers that it is a common practice among photographers to add metadata in EXIF to their photographs as a protective measure.

On June 8, 2016, the Court held a hearing on several pending motions, including motions for summary judgment and a motion for class certification. Judge Cynthia Bashant presided over the hearing.  Her questions and observations were interesting and important for all real estate photographers concerned about their images. In particular, Judge Bashant wanted to know whether real estate photographers actually used metadata stored in EXIF to protect their images, and if they did what was the connection between stripping out that metadata and copyright infringement?

On behalf of the real estate photographers we represent and the class of photographers who are the plaintiffs we did our best to convince Judge Bashant that the pictures taken by real estate and architectural photographers, their livelihood, are deserving of respect. We urged Judge Bashant not to permit CoreLogic to continue to strip out information that identifies who took the pictures so that CoreLogic so that further disseminate them, and infringe on photographers’ copyrights, with impunity.

Is it time for an Association of Real Estate Photographers?

There was no one at the hearing whose sole purpose was to represent real estate and architectural photographers. I think real estate and architectural photographers need a voice to speak for them and raise their concerns at venues like the annual NAR Convention, the Council of Multiple Listing Services, at the Copyright Office, as well as with huge technology companies that misuse their photos like Zillow.

Do you agree?  Should real estate photographers establish a 501(c)(6) not-for-profit trade association that represents their interests?  Let me know what you think.  You can call me (561-404-4335) or email me (joel at sriplaw.com). I cannot wait to speak to you.

 

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

Iran Watson resolves copyright infringement case against Kappa Map Group

On February 5, 2014, Iran Watson brought a claim against Kappa Map Group, LLC in federal court for copyright infringement for the unlicensed use of one of Watson’s photographs on the cover of an Atlanta Street Atlas published by Kappa. Additionally, Watson brought a claim against Kappa for violation of Section 1202(a) of The Digital Millennium Copyright Act (“DMCA”) for the intentional removal of copyright management information (“CMI”), i.e., Watson’s watermark, from the photograph used by Kappa on the cover of the Atlanta Street Atlas.

Watson dismissed the claim for removal of CMI because the evidence clearly showed that Kappa did not remove Watson’s watermark, but rather the removal of the CMI was done by an anonymous third party who claimed to own the rights to Watson’s photograph on Flicker.com. Furthermore, the evidence demonstrated that Kappa’s use of the photograph on the cover of the Atlanta Street Atlas was done so under a good faith belief that such use was properly licensed under a Creative Commons license, which offered the public free commercial use of the photograph. The parties have agreed to an amicable settlement regarding Kappa’s innocent and unintentional use of Watson’s photograph on the cover of its Atlanta Street Atlas. Accordingly, the case was dismissed with prejudice on June 22, 2016.

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

MLS and Copyright

NAR Makes Changes to its MLS Policy that are Good for Real Estate Photographers

The National Association of Realtors has made some important revisions to its Handbook on Multiple Listing Policy.  These changes clarify NAR’s MLS policies to highlight the importance of licensing.

It is now imperative for every real estate broker to understand copyright licensing.  It is also critical that photographers understand what rights real estate brokers need, what rights they do not, and be able to speak intelligently with real estate brokers and agents so that the photographer’s clients are confident that they are receiving the right license for their needs.

The changes specify that:

  • Before submitting a listing to the MLS, the listing broker should own or have the authority to license all listing content to be published in the MLS.
  • Brokers cannot be required to transfer ownership rights, including intellectual property rights, in their listings or listing content to the MLS to participate in the MLS.
  • But MLSs may require brokers to grant the licenses necessary for storage, reproduction, compiling, and distribution of listings and listing information.

This is very reasonable and a welcome departure from the overreaching previously engaged in by NAR in this context.

Anything that gets agents, brokers and MLSs thinking and talking about licensing is a good thing.

It’s probably a good time to check your licensing agreements to make sure that you are granting the rights that your clients need, but not giving away too much in the process.  Our free real estate photography licensing agreement is always a good place to start.

Summary

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

A busy three years of SRIPLAW IP patent infringement cases

SRIPLAW opened for business in Boca Raton, Florida on January 1, 2013.  We started the firm in order to work with clients that we felt had strong claims but could not get quality representation elsewhere.  The vast majority of patent, trademark, copyright and trade secrets litigation firmst do not offer contingency representation.  We wanted to offer Intellectual Property owners representation on a contingent fee basis.

We have met and earned the trust of many clients these past three years.  Our clients are innovative and creative.  Our clients hold ground breaking patents, strong trademarks and valuable copyrights.  SRIPLAW brought numerous patent and copyright infringement cases on contingent fee for clients who could not otherwise afford to hire quality IP infringement litigation counsel.  We have created new and untapped sources of revenue for our clients and increased the value of their IP in the process.

In the three years, we instituted patent infringement actions for nine patents for our clients.  Five out of six cases have been resolved and resulted in a recovery for our clients.

Of course, past results are no guarantee of future success.  But we are proud of what we have accomplished for our patent clients to date.

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

Part I — Defending Computer Code Copyright Infringement Lawsuits

This is the first in a series of articles discussing the defense of computer code copyright infringement cases.  As I write this I am thinking about the many cases filed by serial plaintiff Live Face on Web, LLC also known as LFOW.  

LFOW has made many enemies by suing small businesses all over the U.S.  Numerous articles have appeared about these suits including even one against Howard Stern.   There are even Twitter feeds and a Google+ page devoted to LFOW’s lawsuits.

I will be reviewing various aspects of the defense of these cases in this series.  This first installment will discuss software copyright generally, and in particular what is and what is not protected by copyright.

Software is like a poem…or is it?

Copyright law protects software like a literary work: a novel, a short story, a screenplay, even a poem.  But, as anyone who has ever written both code and poetry knows, sometimes code is poetry and sometimes it isn’t.   Code does not have to be poetry to be protected, but it does have to be an original work of the author, and it has to be creative.

Software programs contain literal and non-literal elements.  Literal elements are the source code itself.  Non-literal elements are the structure, sequence, organization and displays inherent in the code.  (Note: this is different from literal and non-literal copying.  Very important not to confuse the two.)

Non-literal elements — elements dictated by function — are generally not copyrightable.  Literal elements are generally copyrightable.

Oracle v. Google

One interesting example of a case that addressed the copyrightability of software is the Oracle v. Google case decided in 2014 by the Federal Circuit which ruled that Google committed copyright infringement when it copied Java into the Android operating system.  To read the decision, click here.

Oracle claimed Google copied 7000 lines of “declaring source code,” the backbone of Java.  Oracle also claimed Google copied the structure, sequence and organization of Java.  The district court said that Java was not copyrightable. On appeal, the Federal Circuit considered the very low threshold of creativity required for copyright, and reversed.

The testimony at trial revealed that designing the Java API packages was a creative process and that the Sun/Oracle developers had a vast range of options for the structure and organization. In its copy- rightability decision, the district court specifically found that the API packages are both creative and original, and Google concedes on appeal that the originality require- ments are met. See Copyrightability Decision, 872 F. Supp. 2d at 976 (“The overall name tree, of course, has creative elements . . . .”); Id. at 999 (“Yes, it is creative. Yes, it is original.”); Appellee Br. 5 (“Google does not dispute” the district court’s finding that “the Java API clears the low originality threshold.”). The court found, however, that neither the declaring code nor the SSO was entitled to copyright protection under the Copyright Act.

The district court based its copyrightability decision on its conclusion that Oracle’s copyright in Java violated Section 102(b), the “idea-expression dichotomy.”  The Federal Circuit disagreed.

To the contrary, however, Congress emphasized that Section 102(b) “in no way enlarges or contracts the scope of copyright protection” and that its “purpose is to restate . . . that the basic dichotomy be- tween expression and idea remains unchanged.” Feist, 499 U.S. at 356 (quoting H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5670). “Section 102(b) does not extinguish the protection accorded a particular expression of an idea merely because that expression is embodied in a method of operation.” Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1372 (10th Cir. 1997). Section 102(a) and 102(b) are to be considered collectively so that certain expressions are subject to greater scrutiny. Id. In assessing copyrightability, the district court is required to ferret out apparent expressive aspects of a work and then separate protectable expression from “unprotectable ideas, facts, processes, and methods of operation.” See Atari, 975 F.2d at 839.

The district court also concluded that the non-literal elements of Java were not copyrightable either under 17 U.S.C. 102(b) because they performed a function.  The Federal Circuit determined that just because software code performs a function does not mean it is not expressive, and therefore copyrightable.

The Altai test for software.

The Federal Circuit’s decision was an endorsement of the “abstraction-filtration-comparison” test originally formulated by the Second Circuit in Computer Assocs. Int’l v. Altai, 982 F.2d 693, 704-05 (2d Cir. 1992) (“Altai”).  Altai has been adopted by the majority of the circuits.  When correctly applied, the Altai test helps courts make important decisions about what is protectable and what is not while preserving copyright in those elements that are truly results of the creative process.

To determine whether LFOW’s software is entitled to copyright protection will require the application of the Altai test.  The Court will need to determine, with the assistance of experts, whether the software that LFOW claims to own contains enough creative literal elements to entitle it to copyright protection.

 

 

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

Fighting Infringement on Alibaba.com is a Game of Whack-a-Mole!

Alibaba.com is the world’s largest online business to business (B2B) marketplace.  If you are a creator, designer, inventor, product marketer, brand builder, or anyone else interested in global commerce or trade in consumer goods, you have probably either purchased from sellers on Alibaba.com, or cursed at sellers on Alibaba.com.  Or maybe both.

Fakes and counterfeits run rampant on Alibaba.  From knock off branded products to copied textile designs to patent infringing devices, you can buy it all in bulk on Alibaba.

Alibaba has many small businesses baffled.  How can a marketplace built on ripping my products off exist?  Many small business owners who ask that question believe that there is nothing that can be done about the rampant copyright, trademark and patent infringement that seems to flourish unchecked on Alibaba.com.

Contrary to popular belief, effective strategies do exist for stopping the flow of infringing goods through Alibaba.com.  You need to know how to use your intellectual property rights to your advantage and make the confusing Alibaba.com IP rights (IPR) system work in your favor.

The Alibaba.com Intellectual Property Protection System, known as AliProtect, resides at legal.alibaba.com.  In 2014, Ni Liang, Senior Director of the Security Department for Alibaba Group, presented a paper on Alibaba.com’s IP protection practices at the Ninth meeting of the WIPO Advisory Committee on Enforcement in Geneva, Switzerland. According to Mr. Liang,

Alibaba has directed attention to IP protection since the first day of its foundation.  Through various experiments and measures, the Alibaba Group has gradually established an IP protection system consisting of diversified functions, such as complaint processing, proactive management, government collaboration, brands cooperation, and awareness-raising.  At present, the Group spends over 100 million yuan each year fighting inferior and counterfeit products.  It has established a 5,000-strong professional IP protection team consisting of staff from relevant departments and online volunteers.  In the past year, Alibaba removed more than 100 million hyperlinks to products suspected of IP infringement.

Reporting infringement through the AliProtect system is a multi-step process.  The steps are:

  1. Submit proof of your intellectual property rights, be they trademarks, copyrights, utility patents, or design patents.  For each IP right you must upload evidence of that right, such as the trademark registration certificate, copyright certificate, or the issued patent.  You must also provide evidence of your ownership of that right.  For example, if the IP right is owned by a corporation or limited liability company, you must upload the articles of incorporation or formation.  Finally, if an attorney or other representative is submitting the IP right on behalf of the owner of the right, a power of attorney is required.
  2. Once all the documents are submitted, they are reviewed by the AliProtect system group and either accepted or rejected.  If rejected, AliProtect will usually send an email that explains the reason for the rejection and provides information about what must be done to fix the problem.  Sometimes these emails are written in broken English which complicates the process.  Often several tries are needed to get IP rights accepted and recognized by Alibaba.com. Once AliProtect has “approved” an IP right, it can be found in the “Submitted IPR” section of the AliProtect Dashboard.
  3. The next step is to submit complaints. Complaints can be submitted either by searching keywords directly from the IPR Complaint section of AliProtect, or by pasting URL’s into the IPR Complaint interface.  A coherent and legally valid reason must be given for each Complaint.  That reason should match the IP right on which the Complaint is based.  For example, if the IP right is a trademark, the reason for the Complaint should have something to do with the merchant’s unauthorized use of the trademark in the listing.
  4. Once a Complaint is submitted, as with DMCA takedowns, Counter-Notices are possible.  However, in our experience these are rare.  If a Counter-Notice is given, the AliProtect Dashboard provides a place for a response.
  5. Following the review of Complaints, AliProtect will mark them as either “In Progress,” “Unable to Process,” or “Listing Removed.”  AliProtect will send an email if a Complaint is unable to be processed and provide a reason (often, once again, in broken English).  However, no notice is given when listings are removed.  For those you have to check back with AliProtect to see the outcome.

While it seems simple, there are bumps along the way.  Also, the unfortunate reality is that the problem is rarely solved with the submission of a single Complaint.  Think about the game called “Whack-a-Mole” and you will come to understand the problem fairly quickly.

Happy hunting!

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

Losing Control of your Copyrights on Social Media

It seems innocent enough.  Your interior designer client has posted one of your beautiful photographs of her latest installation to her Instagram account.  The photo highlights your client’s design of an expansive living room with vaulted ceiling and massive stone fireplace.

Occupying the lower right corner of the frame is a demure crimson loveseat by high-end furniture designer Donghia.  The viewer almost does not notice the loveseat, it is so unobtrusive.  But, in a nod to its source, your designer client has “tagged” her Instagram post with #donghia.

A few months pass and your receive an excited call from your client.  Her design has been chosen for an Architectural Digest feature!  Of course, that is great news for you too! Soon the phone rings and an assistant art director from A.D. agrees to pay you a generous fee in exchange for an exclusive license for your photographs.

Life is good, you think.  But wait, there’s more.

While you are waiting for your big check to arrive you receive a follow-up call from that assistant art director asking why your photos — the ones you agreed to license exclusively to A.D. — are plastered all over the homepage of Donghia’s website advertising their new loveseat designs?

Huh?  You rush to the computer, type in Donghia.com and sure enough, there it is.  Your photo.  Infringement, right?  Not so fast.

This scenario plays out every day over and over.  Why?  That little #donghia hashtag, the Instagram terms of service, and new internet content aggregators like Olapic.

Olapic?  Yes, Olapic.  The start-up company’s business is identifying brand-related social media content, copying it, and then republishing it on the brand’s website.  If it sounds like copyright infringement, think again.

A recent New York Times article quotes a spokeswoman for Olapic as saying, “brands do not always need to ask for permission to use a photo on their websites because users can give implied consent by tagging a company in their posts.”

But how did this happen?

Your interior designer client has an Instagram account.  As a result, your interior design client agreed to the terms of service for Instagram that say that Instagram automatically has a royalty free perpetual license to any content your interior design client posts on Instagram for any purpose whatsoever.

Instagram, for its part, makes its content available to other companies, including Olapic.  Olapic’s terms of service say:

By uploading User Content and posting User Content that you have tagged with Brand hashtags to social media platforms, you grant to the Brand, its third-party service providers who provide content management services including Olapic, and its retail partners (collectively, the “Licensed Parties”) the worldwide, perpetual, irrevocable, royalty-free, fully-paid, non-exclusive, transferable right to use your uploaded or Brand-tagged User Content in any manner to be determined in the Licensed Parties’ sole discretion, including but not limited to on its webpages, social media pages operated by the Licensed Parties, promotional e-mails and advertisements, and in other marketing, promotional and advertising initiatives, in any media now or hereafter known.

In other words, according to Olapic, when your design client tagged your photo #donghia she gave Donghia a free license to use your photo for advertising without paying you a penny!

Plus, on top of all that, since both the Olapic and Instagram terms of service have indemnification provisions, if you tried to sue either one, they might bring your designer client into the lawsuit and demand that she indemnify them from your claims!  Now that’s a kick in the pants!

One possible response is for photographers to include language in their license agreements prohibiting their clients from posting licensed photographs on social media.  Whether that will work in practice is another story.

We may see the limits of the implied license tested in cases soon. This is still an emerging problem.  Check back for further developments.

 

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

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