Manuel Noriega and Lindsay Lohan have No Doubt about their Right of Publicity

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What do Manuel Noriega, Lindsay Lohan and the rock group No Doubt have in common? All of them have sued videogame makers for infringement of their rights of publicity. On July 15, 2014, Manuel Noriega sued videogame maker Activision Blizzard in Los Angeles Superior Court when his name and animated likeness were included in the videogame Call of Duty: Black Ops II. Less than two weeks earlier, Lindsay Lohan filed a Complaint alleging that her likeness was used, under a pseudonym of “Lacey Jonas,” in the Rockstar Games videogame Grand Theft Auto V. No Doubt alleged that Activision exceeded the consent it gave for use of band members’ likenesses as avatars in the videogame Band Hero. These claims seem to be emblematic of a recent upswing in claims of violations of the “right of publicity”.

California and most other states recognize that a person has a right to protect his or her name, likeness, signature, voice and other identifying aspects of personae from commercial exploitation without consent. The right of publicity protects not just photographs but all forms of likenesses, including animated versions of people in videogames. The right of publicity is a type of intellectual property – in some ways analogous to (but not the same as) a trademark. An important point to understand is that the right of publicity is not ordinarily precluded simply by ownership or license of the copyright in the image – even if you took a photo of Lindsay Lohan yourself and you own the copyright in that photograph, that in itself generally does not mean you can use it in an advertisement to sell a product without Lindsay Lohan’s consent.

The right of publicity is distinct from rights protecting against slander or defamation – there is no requirement that a person’s reputation has been harmed in any way, or that he or she ever had a positive reputation. Manuel Noriega is probably best known as a former leader of Panama who was deposed, tried and convicted of drug trafficking, racketeering and money laundering. Nonetheless, Manuel Noriega has the same right to prevent others from commercially exploiting his name and likeness as anyone.

An important and often overlooked aspect of the right of publicity is that it is a right held by everyone – not just celebrities. While celebrities could command more money for the commercial use of their identities, everyone has the same right to protect his or her name from commercial exploitation without consent, regardless of previous anonymity.

This is a particularly important lesson for businesses that might be inclined to scour the Internet and copy a photograph of some unknown model and use it in advertising or packaging. In addition to the risk that unauthorized copying and use might violate a copyright in the photo, such unauthorized use for commercial promotion run a strong risk of violating the model’s right of publicity and giving rise to a claim for damages. Even a business that has ordered a photo of a professional model specifically for use in advertising or packaging would do well to check whether the model signed a release that covers the particular use, because model releases can differ in scope and effect.

Conkle, Kremer & Engel has been involved on both sides of the right of publicity – defending actions by models against companies who thought they had sufficient releases of the models’ rights of publicity, and asserting models’ rights to be compensated for the commercial value of their likenesses. CK&E attorneys stay current on the developing law of the right of publicity, which is a quickly expanding area of law affecting everyone from manufacturers and marketers to models, celebrities and ordinary people.

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Can Containers be Copyrighted?

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There are some containers that have achieved trademark status. Among the most famous are the Coca-Cola bottle and the OPI nail lacquer bottle. Ownership of a trademark in container design requires a solid showing of secondary meaning, which generally takes considerable time, sales volume, and promotional efforts. Ownership of a copyright in a new creative work, on the other hand, is automatic. Copyright registration is usually quick and inexpensive.

So why not protect a container design through copyright? Because a container design that is functional is not copyrightable.

According to the Ninth Circuit Court of Appeals in its recent decision of Inhale, Inc. v. Starbuzz Tobacco, Inc., a case about a copyright claim on a hookah water pipe, copyright protection is not available for functional features of a useful article like a bottle or a chair. As a “useful article,” the shape of a container (including a hookah pipe) is copyrightable “only if, and only to the extent that, [it] incorporates . . . sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the container.” 17 U.S.C. § 101.

Courts have said that the non-functional, sculptural features must be “conceptually” or “physically” separable from the container in order to be protected by copyright. “Physically separable” is an easy concept – a printed label or a fancy emblem that is applied to the container can usually be protected by copyright, because it can exist separately from the container. “Conceptually separate” is more esoteric. The Ninth Circuit held that “the shape of a container is not independent of the container’s utilitarian function – to hold the contents within its shape – because the shape accomplishes the function.” In other words, as long as the shape of the container merely holds the container’s contents, the shape is not subject to copyright.

The Ninth Circuit left unanswered whether a “ring shape” that is molded into the bottle but does not conform to the interior container might be copyrightable as “conceptually separate” from the functional container. In any event, the Court’s lesson seems to be that, for copyright protection for a container, the copyrighted feature should serve no purpose in holding the contents. Conkle, Kremer & Engel attorneys regularly work with clients to most effectively secure and protect their valuable intellectual property, regardless of whether it’s a traditional trademark, artwork, a fragrance or a container.

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The Conkle Firm Teaches International Entrepreneurs in BIMA Program

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Conkle, Kremer & Engel attorneys Mark Kremer and Amy Burke have been honored to participate in and contribute to the revolutionary Beauty Industry Market Access (BIMA) program through the Center for International Trade Development (CITD).  The BIMA program was developed and is led by beauty industry guru Patty Schmucker and international trade expert Cesar Arellanes, the Director of CITD in Long Beach.   BIMA is a five week intensive international trade and business education program taught by leading health and beauty industry experts. BIMA participants focus on key program principles distinct to conducting business overseas, receive bi-monthly objectives for assessing their business, and ultimately produce an export growth plan exclusive to their business. Participants also have access to upcoming trade missions to the world’s largest emerging market beauty trade shows – effective venues for executing learned principles and business plans.

Amy and Mark contribute to the BIMA educational program by teaching modules on domestic and foreign intellectual property protection, domestic regulatory compliance, and international distribution agreements.   Participants are particularly interested in cost-effective methods of protecting their intellectual property internationally, such as international trademark registrations through the Madrid System.  The Madrid System offers a centralized application process for trademark registration in over 90 countries based on a brand owner’s domestic application or registration.  Participants are also interested in CK&E’s practical approach to domestic regulatory compliance, including California’s evolving green chemistry initiative, Safe Cosmetics Act and Proposition 65.  Participants have also benefited from CK&E’s tips for forging fruitful business relationships with distributors, based on decades of experience representing clients in the personal care products industry.

Amy will accompany Patty Schmucker and several graduates of the BIMA educational program to Cosmoprof Worldwide in Bologna in April 2014.  Amy and Mark look forward to the next BIMA session, which begins on June 26, 2014.  Click for further information about joining the BIMA program: BIMA_Summer-Fall_2014

 

 

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Spain Enjoins ISP from Allowing User to Infringe Copyrights

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The Barcelona Court of Appeal recently issued a judgment holding an Internet Service Provider (ISP) subject to injunction due to copyright infringement by one of its users.  This ruling is consistent with the EU’s Copyright Directive, Recital 59, which provides:

In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. Therefore, without prejudice to any other sanctions and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary who carries a third party’s infringement of a protected work or other subject-matter in a network.

Spain authorized injunctions against intermediaries in article 8(3) of its Copyright Act.

In the Barcelona case Promusicae, an association of Spanish music producers, learned that someone was using the Direct Connect P2P network to make available in a shared folder 5,000 music files including copyrighted music.  In Spain, ISPs are not obligated to identify their users for purposes of civil lawsuits, so the only identification of the user available to the claimants was a nickname and IP address.

Without identifying the primary infringer, the copyright holders sued the ISP, R Cable y Telecomunicaciones Galicia.  The appellate court found that there was infringement and that the copyright holders were entitled to an injunction against the ISP that was providing internet access to the infringer, enabling the infringement.  The injunction required the ISP to permanently stop providing internet access to the infringing user, stopping the infringement.

This was the first ruling of its kind in Spain, but analogous rights against intermediaries are available in the U.S. and EU countries.  Conkle, Kremer & Engel assists its clients to protect and enforce their IP rights in copyrights, trademarks and patents worldwide.

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Kirtsaeng Holds Copyright First Sale Doctrine Trumps Importation Rights

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The Copyright Act gives a copyright owner the exclusive right to sell copies of the copyrighted work. But once a genuine copy is sold, a lawful owner of that particular copy can resell or transfer what he bought without infringing the copyright – the copyright owner can no longer use the copyright to control the resale of that particular copy.  This copyright limitation has become known as the “First Sale Doctrine.”

A quirk in copyright law arose because the Copyright Act has a provision that prevents importation of a copyrighted work into the U.S. without the copyright owner’s permission.  (17 U.S.C. 602(a)(1)).  This ability of the copyright owner to prohibit importation seemed to conflict with the First Sale Doctrine when a copy is first sold outside of the United States.

In the 1998 decision Quality King Distributors, Inc. v. L’Anza Research, Int’l, Inc., the Supreme Court held that a copyrighted product manufactured in the U.S., but first sold in a foreign country, was subject to the First Sale Doctrine.  The result was that the copyright owner could not prohibit importation of the copyrighted product into the U.S.  But the question remained whether the First Sale Doctrine also applied to copyrighted works that were both manufactured and first sold outside the U.S.

In March 2013 the Supreme Court answered the question by applying the First Sale Doctrine regardless of where the copyrighted work is manufactured or first sold.  In Kirtsaeng dba Bluechristine99 v. John Wiley & Sons, Inc., the products involved were textbooks manufactured and first sold in Thailand by the copyright owner, then later imported into the U.S. for resale without the copyright owner’s permission.   In a split decision, the Supreme Court held that the Copyright Act requires that the First Sale Doctrine applies to authentic, unaltered products that were lawfully manufactured and first sold by the copyright owner in a foreign country as well as in the U.S.

The Kirtsaeng decision provides no protection for sale of modified, adulterated, pirated or counterfeit copies, regardless of where they were made or sold.  Nor does it insulate parties from participation in fraud, breach of contract, unfair competition or other wrongful acts that are independent of copyright protections.  Conkle, Kremer & Engel has long recommended that its clients take a multi-faceted approach to preventing and remedying product diversion and counterfeiting, so they are able to effectively address the problem no matter where and how the misconduct occurs.

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Deal done? Maybe Not, if it’s a Copyright Sale

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Copyright ownership sales are generally controlled by ordinary state contract laws, but there are some limits when dealing with an agent of the copyright owner. In the recent case of MVP Entertainment v. Frost, a film producer offered to purchase the movie rights to author Mark Frost’s book, “The Match: The Day the Game of Golf Changed Forever.” The purchaser dealt with the attorney for the owner. In response to an email by the purchaser offering purchase terms, the attorney replied by email, “done . . . thanks!” Under many state laws that might have been enough to transfer ownership, but not so under copyright law.

The Copyright Act (17 U.S.C. § 204(a)) says that “transfer of copyright ownership . . . is not valid unless . . . a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” An attorney is an agent, so the attorney’s email saying the deal is “done” should be enough, shouldn’t it? Not quite, said the California Court of Appeal in MVP, because the owner disputed that his attorney had the owner’s actual authority to sell the copyright. In other words, the attorney was not the “owner’s duly authorized agent” for that purpose.

But the purchaser claimed it was led to believe that the attorney had authority, which is a theory known as “ostensible agency.” Under California law, a property owner can be bound by the acts of another person (the “ostensible agent”) whom the owner “intentionally or by want of ordinary care, causes or allows” another (the purchaser) to believe had the owner’s authority. Contracts can be created by “ostensible agents” in many circumstances. But the MVP decision held that copyright transfers cannot be done by “ostensible agents.” Copyright law requires that the purchaser deal directly with the owner, or with an agent expressly and “duly authorized” to act on behalf of the owner, with the goal that copyright interests are not inadvertently given and there is no uncertainty about what rights were transferred.

The takeaway from MVP is, when buying copyrights it’s wise to get the owner’s signature.  CK&E lawyers routinely guide clients through transfers and licensing of intellectual property including copyrights, trademarks and patent rights. As well, when a client’s rights in intellectual property are threatened, CK&E lawyers respond with effective enforcement.

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