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In today’s podcast, we discuss copyright issues, specifically the distinctions – practical and legal – between “inline” or “hot” or “embedded” links and downloaded images.  This comes up usually in the context of using video, but the principles should apply to any uses of images on websites, blogs, twitter, Facebook and other social media.

I am joined today by my colleague Thomas Yarnell.

In a series of cases starting around 2002 (a case called Kelly v. ArribaSoft) and accelerating in 2007 (a series of cases involving Google and Amazon and a photography database called “Perfect 10”), web hosting companies, search engines and sites like Amazon were accused of copyright infringement when they used thumbnail images of copyrighted works for their search or catalog results.  So for example, Google Images routinely shows images from copyrighted works in search results.  Google (based on the Kelly case and subsequent caselaw) argued that the use of the images was a “fair use”, in that the search engine’s cataloguing of images was a “transformative” type of use that should be protected under copyright’s fair use doctrine.

In the more recent cases involving Perfect 10, Google (and Amazon) were initially successful in arguing that their use of copyrighted images wasn’t copyright infringement at all – making a fair use defense unnecessary.  Those cases were appealed and reversed, but only partially.  The big point that was upheld was that a search web user’s (Google, Amazon, or anybody else for that matter) embedding of inline links would not constitute direct copyright infringement.

Please click the audio player below for the podcast.

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Thanks to Andrew Mirsky for contributing research and feedback to this post.

Let’s say, like most of us, you run a Justin Bieber fan blog. You try to keep it up to date, especially with his latest songs and footage from recent concerts. This involves going on YouTube, finding the new single, and grabbing the embed code, to throw the video up on your site.

The question is… does embedding video (or photos, etc.) make you liable for copyright infringement?

In a word, the answer is yes, although recent major cases on the subject indicate that convincing a court of such infringement is an entirely different story. Continue reading

Podcast #2: January 6, 2011

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In today’s podcast, we cover trademark cases from both U.S. and European Union courts involving major search engines such as Google and Yahoo.  In particular, we look at whether and how search engines can be held responsible for trademark infringement when advertisers buy search result advertisements using the trademarked names of their competitors.

My guest is Howard Hogan, a partner in Gibson, Dunn, & Crutcher’s Washington, DC office.  Howard’s practice focuses on intellectual property litigation and counseling, including trademark, copyright, patent, false advertising, licensing, media and entertainment, and trade secret matters.

The trademark issue arises because in many countries, including the US, the search engines allow companies to advertise next to search results using their competitors’ trademarks.  We have seen a major shift in the last year.  Before 2010, it was clear that at least in France and Germany, it was not appropriate for search engines to sell marks, and Google’s policy reflected that.  In the US, there was a divide between the district courts of the Second Circuit and the rest of the country as to whether buying and selling trademarks for search engine advertising constituted a “use in commerce,” but there was very little law on whether that use was likely to cause confusion.

Now, in Europe, the law seems to have shifted against holding search engines liable, but leaving open the potential for trademark holders to go after the advertisers.  In the U.S. the “use in commerce” question has been resolved decisively against the search engines, and the debate has shifted to the “likelihood of confusion” question.  On one hand, we are starting to see more decisions finding that their sale of the marks are not confusing (Rosetta Stone, Boston Duck Tours, College Network) at the same time as other courts are finding that the use of marks by an advertiser are likely to cause confusion (Storus, Skydive Arizona).

Please press play on the audio player to hear the podcast.

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What are the differences between “special form” (stylized, design, logo) trademarks and “standard character” (word) trademarks?

The 2 basic trademark types are these: (1) “special form” trademarks and (2) “standard character” trademarks. A “special form” trademark that consists of stylized words, letters, numbers and/or a design element such as a logo. A “standard character” trademark consists only of words, letters, or numbers, with no stylization, color or design element.

The issue comes up this way: A company or an individual wants to trademark a brand or company name. So far so good. The first question is does this individual or company have a particular design or logo for its name? If not, then the only type of trademark registration available is a “character” or word mark. If a design or logo is in the mix, then the question is whether or not that design or logo has any value to the company. Obviously examples are the Nike “swoosh” and the Coca-Cola script logo. These are good examples of designs or logos that – separate from the names of the companies themselves – have distinct trademark value for their owners. Continue reading

I was recently asked about “fair use” standards for use of copyrighted video or audio in mashups.

What’s a Mashup?

First: What are mashups?  From WiseGeek:

A mash-up is a combination of tools or data from multiple sources. Mash-ups typically collect data from multiple web pages and bring their information into one simplified web application.

Mashups are common in the application development world, but also common in music and videos, and examples are legion (and some notorious).  In particular, a music mashup is (according to Squidoo) …

when the vocals from one song are laid over the music of a second song to create a mashed up version that’s both but neither.  If a good job is done, it enhances the original music.

Actually, the last part of that definition is most critical to a fair use analysis.  I recently wrote about fair use in the context of the republishing of copyrighted photographs or artworks in a magazine, book or electronic publications.   Continue reading

Question: Under what circumstances can “fair use” support the editorial republishing of copyrighted photographs or other artworks in a magazine, book or electronic publication?

Short answer: When the previously copyrighted works are the subject of the republishing.

Fuller answer: An “editorial” republishing, almost by definition but with important caveats, satisfies the “fair use” test under the Copyright Act in 17 U.S.C. § 107, in particular by meeting the Act’s four-factor (nonexclusive) criteria: Continue reading

(Thomas Yarnell contributed research and writing to this blog post.)

Copyright law preempts certain state law personal rights, including misappropriation of someone’s likeness or identity.  For example, the right of an individual to prevent a third party from exploiting that person’s image or voice is trumped when that third party purchased the rights to the sound recordings (i.e. the copyright) of that person’s voice.

Similarly, someone like celebrity blogger Perez Hilton might argue (and did argue in a recent lawsuit, somewhat successfully) that he had protection under copyright law (as “fair use”) to copy someone else’s copyrighted photographs.  And Hilton might further argue (and did argue in that same lawsuit, although not as successfully as his fair use argument) that his copyright claim preempts any attempt by that aggrieved copyright holder to pursue other legal arguments against Hilton.

And THAT, in beautiful incoherent summary, is how Perez Hilton might make some very good law and teaching on federal copyright law!  Like OMG! Continue reading

[Thomas Yarnell contributed to research and drafting on this post.]

Google’s popular and dominant advertising service, AdWords, allows companies to place auction-style bids on search keywords.  If a company bids the highest amount on a keyword, that company’s ad comes up first when someone searches the keyword.  The company then pays Google on a pay-per-click basis.  In many countries, including the United States, Google lets companies advertise next to search results from use of their competitors’ trademarks.

Let’s say you want to buy a Louis Vuitton bag.  You know it’s expensive, so you might not want to buy it directly from the company’s website.  Instead, you might search “Louis Vuitton bags” on Google and assess other options.  As you can see in a search of “Louis Vuitton bags”, you may find some “Sponsored links” to the right of your search.  Sponsored links such as the “Louis V. Bags Handbags” come from the AdWords service. Continue reading

An automobile brokerage operating online under the web domains “buy-a-lexus.com” and “buyorleaselexus.com” got sued by Toyota Motor Sales for trademark infringement, first losing in trial court on a trademark “fair use” argument, then winning on appeal.  The case opinion can be found here.

The domain name question in trademark is whether and how one can use established trademarks in domain names, in other words using the “LEXUS” trademark in your website URL when the use is anything but incidental but rather intentionally drawing on the value of the valuable brand.

Toyota, owner of the Lexus car brand, had sued to stop the auto brokerage from using the “LEXUS” trademark in the brokerage’s websites listed under “buy-a-lexus.com” and “buyorleaselexus.com”.  The brokerage defended its actions by arguing that the use of “LEXUS” was permitted (that is, non-infringing) as a fair use of the trademark.  Or as Judge Alex Kozinski explained in his appeals court opinion, the trademark was used to “refer to the trademarked good itself”.

This is the “nominative fair use” doctrine of trademark law.  In (hopefully) plain English, the defendant makes no argument to counter a trademark owner’s typical claims of trademark infringement such as likelihood of confusion or dilution of trademark and so forth.  Instead, the use of the trademark is permitted as a fair use since the use simply (and only) identifies the trademark.  Toyota did not dispute the legality of the brokerage’s business nor its authority to broker and sell Lexus vehicles.  The Lexus auto brokerage could therefore successfully argue that use of the “Lexus” was necessary to identify the product being sold.

Continue reading

I recently wrote about the dust-up following the awarding of a Pulitzer for political commentary to online cartoonist Mark Fiore, when it was revealed that Apple had rejected Fiore’s proposed iPhone App several months before Fiore’s Pulitzer fame.  As had been widely reported, Apple subsequently invited Fiore to re-apply, which Fiore promptly did and now, evidently, Fiore’s cartoon app is available for download through the store.

Commentary on the episode leaned heavily to the view of “what gall!” of Apple to presume rights to regulate content.  So, for example, Rob Pegoraro wrote in the Washington Post last week:

If this conduct seems arbitrary, that’s because Apple gives itself that liberty.  The Cupertino, Calif., company’s iPhone developer agreement, as published by the Electronic Frontier Foundation, says Apple can reject an application “at any time” if it thinks rejection would be “prudent or necessary.” Continue reading