Duran Duran and reversion of copyright

BBC News reports that the popular music combination Duran Duran have lost a claim in the High Court in which their music publishers sought to prevent them from serving notice to recover their U.S. copyright. Gloucester Place Music Ltd v Le Bon & Ors [2016] EWHC 3091 (Ch) (02 December 2016) is a relatively short (45 paragraph) judgment of Mr Justice Arnold, in his own words 'not without hesitation'. But there was little that he could do: the contract seems pretty clear. The various copyrights (and I don't like using the plural, though it seems appropriate here) were assigned for their full term, and to try to use section 203 of the U.S. Copyright Act to reclaim the rights after the statutory 35 years was contrary to the terms of the contract and amounted to a derogation from grant (reminding me again of BL v Armstrong, which I have been making my students in Nottingham read recently - it's good for the soul).

But surely (I hear you say) the statute overrides the contract? The right to a reversion of the copyright can't be contracted out of, can it? It seems that it can't - at least, on my reading of the provision, and perhaps a friend in the States will comment on this - but the parties went off to court under Part 8 on the basis that there was no dispute about the facts of the case, and the effect of the foreign law is a question of fact: and accordingly the defendants did not seek to adduce evidence evidence about U.S. law. Arnold J was asked only to interpret the contract, and that didn't create much difficulty for him.

It seems from the judgment that the defendants also failed to raise in the proper way a public policy point - although the learned judge indicated that he wasn't receptive to it anyway. There seems some merit in saying that an English-law contract, in which the parties agreed that the English courts should have jurisdiction, should not be allowed to interfere with the operation of a foreign statute.

Finally, the band members, quoted by the BBC, were miffed that they were suffering under a contract signed when they were young and innocent - a common complaint in the entertainment business, so much so that by 1980, when they signed up with the publisher, lawyers would take great care to make the contracts bulletproof. Their argument loses a lot of force, though, when you read the opening paragraphs of the judgment and learn that the 1980 contract had been terminated in 1983 and replaced with contracts with the band members' service companies. They might have been young still in 1983, but they were less innocent and presumably well-advised.

That Redskins decision: guest post from Chad Smith

In a precedential decision on June 18, 2014, the United States Trademark Trial and Appeal Board (TTAB) granted a petition for cancellation of six registrations for marks comprising or containing the word REDSKINS, for entertainment services, as used by the Washington Redskins professional football team. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185.  The Board found that the registered marks disparaged Native Americans in accordance with Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement by a preponderance of the evidence.

 

The determination of a disparagement claim under Section 2(a) involves a two-part inquiry: 1) What is the meaning of the term in question, as it appears in the mark and as the mark is used in connection with the identified goods and services identified in the registrations?; 2) Is the meaning of the marks one that may disparage Native Americans?

 

As to the first question, the Board concluded that “the evidence overwhelmingly supports a determination that the term REDSKINS as it appears in the marks retains the meaning Native American.” As to the second question, the petitioner needed to show that the term REDSKINS was disparaging at the time each mark was registered between 1967 and 1990.  The Board concluded that  "a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent's services during the relevant time frame of 1967-1990.”

 

Having concluded that the six registrations must be cancelled as required by Section 2(a) of the Trademark Act, the Board next turned to the laches defense which was successfully raised by respondent in an earlier related case in 1999. In the first case, Harjo v. Pro Football, Inc., the federal courts overturned the TTAB’s decision to cancel the marks and ultimately ruled that the claims of the Native American petitioners were barred by laches. (Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009)).  Here, the D.C. Circuit Court of Appeals found that because the first of the Redskin’s trademarks had been registered back in 1967, the petitioner was time-barred from bringing suit finding that the delay was "unusually long by any standard" and "unreasonable in light of the undisputed facts in this case.” The court therefore granted Pro-Football’s renewed summary judgment motion to dismiss the case based on its laches defense.

 

After a brief summary of the previous case and a general discussion of laches, The Board noted that in the current case, each of the petitioners had recently reached the age of majority, the age from which, according to the D.C. Circuit Court of Appeals, laches began to run.  After stating that the petitioner’s “were entitled to assess the situation and determine whether it was in their best interest to file the petition for cancellation and then act in accordance with that assessment,” the Board held that “respondent has shown nothing more than a minimal delay in seeking cancellation” and such a minimal delay was insufficient to support a defense of laches.

 

The decision quickly gained notoriety and much was written about the continued validity and control over the Washington Redskins name.  However, soon after the Board’s decision, the United State Patent and Trademark Office issued a Media Fact Sheet outlining, among other things, 1) the Board does not have the jurisdiction to stop a business from using a mark that has been cancelled; 2) the Board’s decisions are subject to review in federal court, and no canceled trademark is removed from the register until after such a review is complete. Attorneys for The Washington Redskins have already stated that they plan to appeal the Board’s decision so a final ruling on the fate of the six registrations is still many years away.

 

Until then, the Washington Redskins will certainly continue to claim common law protection over the marks and enforce their rights to the exclusive use and ownership over the Redskins name.  However, public opinion is clearly turning against the continued use of the name.  A majority of the United States Senate is already on record opposing the name, as is the President, Minority Leader of the House of Representatives, both co-chairs of the Congressional Native American Caucus, Civil rights and religious leaders, media figures and NFL reporters, as well as high-profile current and former players.

This post was contributed by Chad M. Smith  of Ironmark Law Group PLLC, Seattle, a fellow-member of the international IP-PG network.

'Internal' distribution does not mean GPL is not invoked

Chicago software licensing attorney Evan Brown  notes an interesting case, XimpleWare Corp. v. Versata Software, Inc., 2014 WL 490940 (N.D.Cal. February 4, 2014), one of very few which address the workings of the General Public Licence (in suit, GPLv2) - a document which becomes more and more important every day.
The plaintiff (as they still call them over there - how quaint! Oh, sorry, I forgot that British irony would be completely lost on any American readers) wrote an XML parser and made it available under GPL v2. The defendant acquired software from another vendor that included the code, and allegedly distributed that software to parties outside the organization. The plaintiff argued that the defendant did not comply with the conditions of the GPL (no attribution, no copyright notice, no reference to the plaintiff's source code, no offer to 'convey' as the GPL puts it the source code), and sued for copyright infringement.
The defendant's argument was that its 'distribution' of the software was merely internal, mainly to its own financial advisers, so the GPL's requirements were not triggered. The court rejected defendant’s argument, looking to the allegations in the complaint that defendant distributed the software to vendors in India, as well as providing it to 'thousands of non-employee financial advisers.'

Patent Erosion 2013: What Would the Founding Fathers Think? - IPWatchdog.com | Patents & Patent Law

Here  is an interesting review of developments in patent law in the US over the past year, by Gene Quinn. I am pleased to be reminded of some of those quotes, and introduced to others that I haven't seen before. Gene's posting reads on its face like a plea for stronger patent rights, but on deeper reflection it's more a call for a better balance, which is what the entire intellectual property universe could do with. His observations about the relative roles of large and small businesses in innovation are thought-provoking (or perhaps they just show that I haven't really thought enough about this?): if innovation comes mostly from small businesses, universities, and the like, and large corporations merely pick up the fruits of others' labour, what constitutes a troll is a subtle matter - although the key element in the definition of a troll is the 'non-practising' part.

What is clear, from Gene's comments and those of many other people, is that the intellectual property systems (and I use the plural deliberately) need to be adapted to the needs of smaller businesses, yet everywhere I look the trend seems to favour big IP owners. To reverse that trend is a huge challenge, but as long as the balance is tipped in favour of big business there will be calls for revolutionary changes in intellectual property protection. Is radical reform the way to stave off revolution? I am sure that legislators everywhere need to think carefully about their presumptions, which too often come down to the simple proposition that intellectual property is a Good Thing and therefore more of it is even better.

Thanks, Gene, for an valuable piece. I would have added that you ought to review and rewrite and correct before pressing 'publish', but the beam in my eye prevents me from drawing attention to the mote in yours (Matthew 7: 3-5).

US patent reform: or the universal story of intellectual property?

 Dennis Crouch's always-interesting Patently-O blog gives us this today, from Senator Maria Cantwell. In fact, all Dennis gives us is the quote, so I am cheekily reposting the whole thing, but as it was a quote in the first place there can't be any doubt that it is fair use (US) and fair dealing for reporting current events (UK). The Senator was talking - obviously - about the reform of patent law in the US:

This is not a patent reform bill. This is a big corporation patent give away that tramples on the rights of small inventors.

I don't propose to get into the controversy about this piece of legislation, other than to observe that it does smack of protectionism - but I am going to remember that turn of phrase, which seems to describe so much that goes on in the world[s] of intellectual property. I'm thinking of the move to a totally opposition-based trade mark system in the UK, and the increase in the term of protection for sound recordings, for two things.

Ford Sync patent action

From the company that broke the Selden patent: an interesting addition to the motor industry IP casebook in the making. Ford is being sued by Eagle Harbor Holdings, a small Washington State-based technology company, that claims the Ford Sync system infringes (infringes on, as they say in the States) its patents. The system enables users to control functions of the car using voice commands - how scary is that? - and has been fitted in millions of Ford cars in the US since 2007. The parties were in discussion as long ago as 2002, but seem now to have hit a brick wall.

Here is the story from Automotive News. Despite the "Holdings" part of the name, the company is a genuine practising entity, which is confirmed by the fact that it has issued proceedings in Federal Court in Tacoma, Wa, not the eastern district of Texas. You can read their press release about the matter here.

I hope they fare better than Selden did. He was eventually found to have obtained a patent over an improved version of the Otto engine, and his patent was declared invalid, Ford being the lead claimant in the action to get rid of the patent. I make no comment on the novelty of the Eagle Harbor patents, of course - and I will also forbear to comment on the social utility of inventions that might dilute the already limited connection between the driver and the vehicle. Not, of course, that this invention necessarily does so: but Federal regulators are already concerned about "driver distraction" and Ford Sync, and the complexity of the new improved "My Ford Touch" (a trade mark disaster in the making, perhaps) has caused Ford to drop down the J.D. Power Initial Quality Study, according to the AM story.

Can trade mark law be used to control criminal gangs?

It sounds like a silly question: trade mark law exists, almost, in a different universe from criminal laws against organised crime. Of course, there's a huge overlap especially in the area of counterfeiting, but the bright idea of the US law enforcement authorities to forfeit a trade mark used by a motorcycle gang called The Mongols and then sue members for infringement if they had the temerity to display it in public (reported on the Intellectual Property Brief blog) seems doomed to failure. Indeed, it might even be said that it deserves to fail. Trade marks (as IPB points out) are all about preventing confusion in the marketplace, so how can preventing someone using a distinctive sign help that? And anyone who is prepared to announce his membership of a gang (which is not as far as I can see an illegal organisation anyway) by wearing the insignia is unlikely to be worried about infringing a trade mark.

Another instance, perhaps, of someone ascribing magical powers to intellectual property - and an example of state-sponsored absolutism.