Monthly Archives: March 2009

Judging a DVD By It’s Cover

In an earlier post (Why Do Some DVD’s Only Cost a Dollar?), we discussed how certain movies made prior to the early 60’s can now be copied freely without having to pay a royalty and without running the risk of being sued for copyright infringement.

With the advent of inexpensively reproduced DVD’s, a whole new industry has emerged: distributors of low-cost vintage films. Because these works are in the public domain, no one distributor has exclusive rights to them. As a result, distributors may rely on creating distinctive packaging to distinguish their DVD of a particular film from their competitors’ DVD of the same film.

If the cover of a DVD includes still photographs from a motion picture in the public domain, doesn’t that mean the cover is public domain too? Not necessarily. If multiple elements of a work in the public domain are compiled in a sufficiently creative manner, the compilation of photos, but not the photos themselves, may be considered a separate copyrightable work. It was under this legal concept that DVD distributor Alpha Video recently sued The Classic Theater(one of its competitors) for copyright infringement.

Alpha Video sells vintage DVD’s, among them a series of films featuring the fictional detective Mr. Wong. Since these films are also reproduced by other distributors (among them The Classic Theater), Alpha Video created its own unique covers, using stills from the movies combined with original artwork, to differentiate its product from that of its competitors. Even though copyright exists from the moment the work is created, Alpha Video took the precaution of registering these covers with the United States Copyright Office.

Copyright registration affords the registrant certain additional rights, such as the right to file an infringement action in court and collect statutory damages and attorney’s fees from the infringer, as well as the presumption that the registrant is the actual owner of the work. Since the filing fee for copyright registration is relatively inexpensive, it’s a good practice to seek this additional protection. In its lawsuit, Alpha Video has alleged that The Classic Theater committed copyright infringement by using the original artwork from seven of Alpha Video’s DVD covers on its own DVD releases, thereby commercially exploiting what Alpha Video claims is rightfully theirs.

In addition, Alpha Video has demanded that The Classic Theater immediately stop infringing on its works, pay damages to Alpha Video, and allow its infringing products to be impounded. Regardless of the outcome of this suit, it’s important to remember that just because the copyright in a creative work has expired, rearranging material in the public domain or combining it with new material can sometimes create a work that has a copyright life of its own.

Spam, the Dull Cyber-Headache

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Sometimes studies confirm what we already know. Electronic junk email, or spam, is annoying. According to a recent study by Barracuda Networks, Inc., a provider of firewall products, the majority of business professionals (57%) consider spam email to be the worst form of junk advertising.

Spam email topped postal junk mail (31%) and telemarketing (21%) for this dubious distinction. The sheer volume of spam is mind-boggling. The estimates are 60 billion to 150 billion messages a day.

The Barracuda Networks study reports that spam email accounted for 90 to 95 percent of all email in 2007. In 2006, the numbers were only slightly lower: 85 to 90 percent. We must candidly admit that anti-spam laws have been largely ignored.

Most people probably don”t know that Texas has an anti-spam statute. The federal government has one too. Some spammers have been caught, but the sheer volume of spam has increased despite these laws. Have you noticed any decrease in the amount of junk email in your in-box since the federal government enacted its anti-spam law in 2004? Me neither. Aren”t we developing more sophisticated spam detection software? Yes, but spammers are a moving target. Spammers employed multiple techniques to hide their identity in 2007.

The Federal Trade Commission has noted the increased use of malicious bots, a type of malware designed to infest a host computer and connect back to a central server. These bots allow the spammer to send large volumes of spam anonymously and remotely from the host computer. In most instances, the victims are not aware that their computer has been hijacked. The Federal Trade Commission estimates that bots are responsible for 95% of all spam.

We are learning to live with spam-now accepting it as an online fact-of-life. According to a study by the Pew Internet and American Life Project in May 2007, “American internet users seem somewhat less bothered by spam than before.” Only 18% of internet users described spam as a “big problem.” The majority, 51%, said spam is “annoying, but not a big problem.” Spam filters, while not perfect, seem to help.

The Pew Internet study reported that 71% of email users use filters, up from 65% two years ago. Users have become more reluctant to reveal their email address. 44% of email users have taken steps to make it more difficult for others to find their email address.

More people are omitting their email address from their business cards. Plenty of websites list tips for reducing the amount of your junk e-mail. Notably, few people are boycotting the internet, or their email account, because of spam email. Instead, users tend to see spam as part of the price they pay for being on the Internet.

Spam is like a dull cyber-headache that, although unpleasant, isn”t painful enough to keep us in bed.

Contributed by Chris Stewart.

Who Owns the Name Led Zeppelin?

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It was recently announced that the legendary British rock band Led Zeppelin may begin recording and touring again for the first time in decades. The original group, consisting of singer Robert Plant, guitarist Jimmy Page, bassist John Paul Jones and percussionist John Bonham, began performing in the late 1960’s.

After the untimely death of Bonham in 1980, Led Zeppelin broke up and didn’t perform together again until a benefit concert in December 2007, when Jason Bonham replaced his late father on drums. However, it’s unlikely that one of the original members of the group will be performing with the other three. Robert Plant, a successful solo artist in his own right, has announced that he will not be touring or recording with Led Zeppelin.

Since Plant’s vocals were a unique part of the Led Zeppelin sound, some have wondered whether the new group can still call itself Led Zeppelin. This raises the legal question: Who owns the name Led Zeppelin? Under U.S. trademark law, the name of a performing group can serve as both a trademark identifying tangible goods (namely, sound and/or visual recordings), and a service mark identifying intangible services (namely, live entertainment).

Registration of the trademark LED ZEPPELIN wasn’t obtained in the United States until late 1998, nearly two decades after the death of John Bonham. According to U.S. Patent and Trademark Office (USPTO) records, the registrants of this mark are Robert A. Plant, James P. Page, John Baldwin and Joan Hudson. Who, you might ask, are John Baldwin and Joan Hudson? The USPTO lists John Baldwin as also being known as John Paul Jones (the group’s bass player) and Joan Hudson as the trustee of the estate of John H. Bonham (Led Zeppelin’s original drummer).

As far as live performances are concerned, no federal registration for the service mark LED ZEPPELIN was sought in 1998, since at that time the group hadn’t provided those services for nearly two decades. Does a band have to be as famous as LED ZEPPELIN in order to get federal trademark or service mark registration? Not necessarily, but there are a few criteria that need to be met before registration can issue. First of all, the group has to be involved in interstate commerce. Any group that has never performed outside its own state probably cannot get federal service mark registration of its name. Likewise, a band that has only sold recordings inside its own state probably cannot receive federal trademark registration of its name for those recordings. Once the interstate commerce hurdle has been crossed, service mark registration of the name of a group (i.e. in association in live entertainment) can be obtained if it can be shown that the group’s name identifies and distinguishes the services, and not merely the group itself.

Obtaining federal registration of a group’s name as a trademark (i.e. in association with recordings) is a little more difficult; “one hit wonders” (groups that only make one recording) need not apply. Evidence must be submitted that the group’s name appears on at least two different works.

In addition, the applicant must prove that the name is a “source identifier.” This can be done by submitting proof of either: 1) promotion or recognition of the name by others; or 2) control by the applicant over the nature and quality of the goods (i.e. the recordings).

Getting back to the original question (Who owns the name LED ZEPPELIN?), the band members may have entered into other contractual agreements regarding the name of the group, but as far as U.S. trademark law is concerned, the owners of the name LED ZEPPELIN, at least for recordings, are the registrants listed in the records of the Patent and Trademark Office.

When is a Domain Name a Trademark … and When is it Not?

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Domain names are valuable assets to any business, but can they serve the function of trademarks or service marks? Sometimes yes, sometimes no, according to a recent decision of the Trademark Trial and Appeal Board (TTAB). In the decision In Re Vicki Roberts , the TTAB upheld the decision of the examining attorney to deny registration of the service mark application for irestmycase. The applicant, Los Angeles attorney Vicki Roberts, represents several Hollywood stars and has been a guest on nationally syndicated and cable television shows.

Ms. Roberts is also the registrant of at least two domain names: www.restmycase.com andwww.irestmycase.com. When Ms. Roberts applied for federal registration of the service mark irestmycase, she used a press release as a specimen of the mark. (A specimen is an example of how a mark is used in commerce.)

The press release contained the following information: VICKI ROBERTS, ESQ. P.O. Box 642326 Los Angeles, CA 90064——————–Phone: (310) 475-8549 Fax: (310) 478-6365www.restmycase.com The examining attorney initially refused registration because (among other reasons) the specimen didn’t agree with the mark for which registration was being sought.

In response to this refusal, Ms. Roberts (through her trademark attorney) submitted two substitute specimens: a printout from an Internet message board showing her profile page with the user name “restmycase,” and a copy of her letterhead, the latter of which reads: VICKI ROBERTS, ESQ. P.O. Box 642326 Los Angeles, CA 90064——————–Phone: (310) 475-8549 Fax: (310) 478-6365 www.irestmycase.com After a final refusal was issued, additional specimens were submitted, leading to a “second” final refusal. Undaunted, the attorney of record filed an appeal with the TTAB.

Aside from the fact that “restmycase” and “irestmycase” are two separate and distinct terms, the TTAB upheld the examiner’s decision that Ms. Roberts failed to show that irestmycase was being used as a service mark. Citing a decision from nearly a decade prior ( In re Eilberg , 49 USPQ2d 1955 (TTAB 1999)), the Board concluded that the use of irestmycase, embedded in the domain name www.irestmycase.com in the letterhead, merely serves as a means by which Ms. Roberts can be reached, not unlike her P.O. box or her telephone and fax numbers. Does this mean a domain name can never serve as a service mark? Not at all.

Also citing the In re Eilberg decision, the Board noted that if the name of the law firm was irestmycase, or if the term irestmycase was presented prominently on letterhead or business cards, it could be registered as a service mark. But the specimens submitted did neither. The lesson to be learned from this decision is that no matter how well known a domain name is, if it doesn’t function as a mark, i.e., if it doesn’t identify the applicant’s services and indicate their source, it can’t receive federal registration as such.

Carl Mueller, CLAS is a Certified Paralegal with Advanced Paralegal Certification in Intellectual Property with the Law Office of Chris Stewart, P.C. He can be reached atcarl@chrisstewartlaw.com