Property Law Developments—Joseph William Singer

A federal court has ordered cancellation of the R-skins trademark registration on the grounds that it “may disparage a substantial composite of Native Americans and bring them into contempt or disrepute” in violation of §2(a) of the Lanham Act, 15 U.S.C. §1052(1), at the time of their registrations. Pro-Football, Inc. v. Blackhorse (E.D. Va. 2015).

Judge Jed Rakoff of the Southern Districit in New York   held that legal publishers West and Lexis did not violate copyright law by publishing searchable versions of lawyers briefs. Their conduct was a protected “fair use” because it was transformative, changing the purpose and character of the works. White v. West Publ’g Corp., 2014 WL 3057885 (S.D. N.Y. 2014).

In another case in a long-running saga, the Patent and Trademark Office cancelled the federal registration for the “Washington Redskins” on the ground that the name is disparaging in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. §1052(a). Blackhorse v. Pro-Football, Inc., U.S. P.T.O. Canc. No. 92046185 (June 18, 2014).

A federal district court has upheld Google’s library book project as an authorized fair use under the federal Copyright Act, 17 U.S.C. §101 et esq., Authors Guild, Inc. v. Google, Inc., 2013 WL 6017130 (S.D.N.Y. 2013). The court upheld the power of Google to scan copyrighted books held by libraries and to give those libraries digital copies of those scans. It also upheld Google’s power to make the text of those books searchable so that researchers could view snippets of those books and could search the books for particular phrases, words or concepts. The court ruled both practices to constitute a fair use, 17 U.S.C. §107. In determining that the ability to search the digital copies and to view snippets was a fair use, the court found that the use was transformative, did not supplant or supersede the originals, and was not designed to make a profit.

The Trademark Trial and Appeal Board refused to register “the Slants” as the name of an Asian-American band, despite its attempt to turn the name from an ethnic slur into a mark of pride. In re Tam, No. 85472044, 9/26/13. The federal trademark law prohibits registration of any mark that “may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.” 15 U.S.C. §1052(a). Even though the band sought to “take back” the ethnic slur by appropriating it (as happened with the term “queer” for gay people), the board refused registration because the derogatory meaning of the name was clear in context. The mere fact that the ones using the term were themselves East Asians did not automatically convert the term into one that was not disparaging. Note that the decision merely prohibits federal registration of the mark; it does not prevent the band from continuing to use the name and attempting to change views about its meaning.

Judge Richard J. Sullivan of the Southern District of New York held that owners of digital music have no right to sell that music to others. Capitol Records, LLC v. ReDigi Inc., 2013 WL 1286134 (S.D.N.Y. 2013). The case involved a company named ReDigi that created a software program that allowed legally-owned digital music files to be transferred by sale from one owner to a buyer in a manner that insured that the file was not retained on the original computer. The service also only allowed this to happen one file or album at a time so that it would not become a general means of selling the same song to multiple buyers. The service was limited to files purchased on iTunes or from another ReDigi user. The goal was to create a market for used digital music files.

The court found that the service resulted in a reproduction of the original file and that this was an unlawful copy within the meaning of the copyright act, as well as a violation of the copyright owners distribution rights and that the use was not a “fair use.” ReDigi had claimed that it was taking advantage of the “first sale” doctrine that allows those who buy a book or CD or DVD to resell it on the secondary market. The court disagreed because the sale of a CD does not involve a copy or a reproduction as is the case with digital files. Whether or not it would be a good idea to allow a secondary market in digital files, the court said, was an issue for Congress that might warrant amendment or modernization of the Copyright Act.

In Bilski v. Kappos, 130 S.Ct. 3218 (2010), the Supreme Court reaffirmed that the federal patent law allows patenting of some business processes.

A recent case replays the conflict in the famous case of INS v. AP (International News Service v. Associated Press), 248 U.S. 215 (1918), which held that a news organization could stop a rival from selling news it had gathered for a short period when the news was still hot. In effect, the doctrine created a property right against a competitor’s use of the information for commercial purposes during the initial sales period. The Second Circuit reaffirmed that doctrine in the case of Barclays Capital Inc. v. Theflyonthewall.com, 2011 WL 2437554 (2d Cir. 2011), while simultaneously clarifying that noncompetitors were perfectly free to transmit the information without limit once it had been made public. The court held that investment banks could not stop a financial Web site from publishing on the Internet the research conclusions of the banks’s analysts once they were released to the public. At the same time, the banks could stop competitors from copying and reselling the information at least for a while. In effect, the hot news doctrine creates a property right against competitors but not against noncompetitors. Although noncompetitors can report the conclusions and reasoning of hte analysts, copyright law prohibits them from simply reprinting the actual language of the reports. The decision reversed the lower court’s ruling which had required defendant website to wait until 10 am to publish news about the financial reports that had been made public before 9:30 am, Read article.