Monthly Archives: January 2011

Pursuing Legal Action

One of the things I’ve realized is that I haven’t taken the opportunity here to really explain how a lawsuit begins. So having had a few cases under my belt now with some legal work, I’m feeling inspired to explain what can lead up to the well-known phrase: “or I will be forced to pursue legal action”.  So what happens?

1. The Issue Begins: 
Something happens that gives you the opportunity or necessity to seek recourse through the law. 

This can start in many ways: Maybe you want to hire someone with skill in order to do something that you cannot. Maybe a big corporation wants to buy the rights to your music or other media and distribute it nationally. Maybe at a party, a friend causes substantial damage to your XBox, backs into your car in your driveway, or some other sense of property damage. Maybe you stumble across your award winning piece of art being used by a corporate company or sold on merchandise without your consent.

So given these situations, what do you do? You think about talking to a lawyer…. but lawyers are expensive! So you’ll do it yourself.

2. Pro Se
Most people “represent themselves” and take steps to try and resolve the situation. 

So if you want to hire a contractor, you talk to them and set out the terms. How long it will take, what works is done, and get their estimate of how much it will cost. For a music label or media corporation, you get some forms from them that you’re being told to sign. At your party, said friend promises that they’ll pay for the damage. And as for that big company, you do everything you can to figure out how they got your piece and double check how similar the corporation’s piece is to your own.

3. The Other Shoe Drops
Unfortunately, then some people get the short end of the stick.

Your contract work is all oral agreements (without a signed contract with the terms you discussed) and they start deviating from the terms. (They take too long, use the wrong products, etc.) The record label ends up owning 100% of your works, and you have nothing to show for all your work because they wouldn’t listen to any of your requests. The friend vanishes and never pays up. And the corporation’s legal department is just too massive to fight by yourself.

Now, you’re stuck. You know you have rights, legal rights, but you’re not sure how to make the other person acknowledge that and do what you want. But you remember that your friend Nicole just opened her solo practice, or your dad gives you the number of his hockey buddy, or your friend’s bandmate gives you a business card for the person they worked with when they got signed.

All of them are lawyers, and all of them have spent an obscene amount of money and three years of their lives towards a legal education to help you out for just this reason!
4. You Get a Lawyer On Board
Now you have an advocate to educate you and send the initial letter telling the other party what they need to do “or you will be forced to pursue legal action”.

In situations like this, the lawyer acts either as your back up, giving you documents to take to the other party, or they can become the middle man, requiring the other party to talk to the lawyer before talking to  you. (This is especially true for cases where anything you say can be held against you.)

So for the situations above, these are a few of the things a lawyer could do.

– The Contractor: An attorney will look at the paper trail (emails are great for this) for what was agreed upon, and help explain to you how the law protects you in the situation. They can also help pick out what the courts would enforce as an agreed upon oral contract, and let your contracts know that as well. The hope is that this information gets the fire underneath them to make amends and complete the work. But if it doesn’t, then you can pursue other, more legal-heavy remedies like hiring another contractor and pursuing the first contractor in court for the extra money you had to pay to get the job done.

– The Music Label or Corporate Media people: An attorney will look over the documents that have been given to you and your band and help you to understand what you are selling / licensing to them. They can take you through the pieces of the Copyright law and let you make an informed decision about signing those documents. Depending on the situation, they can also step up and talk to the company directly and attempt to negotiate better terms for you.

– The Friend: (Because it wasn’t a commercial situation, this is a little harder.) An attorney can write a “nasty” letter that explains to your now frienemy what your specific legal recourses are given the situation, but this is largely an attempt to scare them into paying up. The problem is that the cost for pursuing legal action (damage to or conversion of personal property) may be more than the cost of the damage itself, and not financially responsible. If they know that, then unless you have the money to go after them, you’re kind of stuck – lawyer or not. But if they don’t know that, then they might get their act together.

– Corporate Copyright Infringer: This is my favorite, but then again I wouldn’t be an Entertainment lawyer if it wasn’t. For this and any other type of copyright infringement you can have a lawyer draw up a “Cease and Desist” Letter (while also registering your copyright, if you haven’t done so already). This is the same kind of nasty letter that they could send to the friend, except with the letter they are invoking your rights under the Copyright law.  If the work is of the appropriate media (say, posted on YouTube) they can also draft and send a “DMCA Takedown Letter” to get the material taken down. (DMCA letters are not just for Viacom and the MPAA – normal people can invoke the DMCA too.) If the case is strong for both access and substantial similarity, then this should get the corporate entity to either stop using it or pay licensing fees. (They’re likely going to try to wait you out and force you to go through the courts to actually get anything out of them, but if you have your copyright registration and it’s an award winning piece of art, you should have a solid case.)

Whatever the situation, you are hiring an attorney to educate you about your options and help you make an informed decision about how to act on your rights. They can make suggestions, but in the end, they are your counsel – not your boss. Fortunately, you can also have them do the first step of each of these remedies and write that “nasty letter” to the other party to let them know that you’ve lawyered up. If they’re smart, they’ll work with you and all you need to pay the lawyer for is that first letter. If they don’t, and you do want to pursue them, then they can help you out there, as well.

Hopefully this has answered a few questions about what lawyers do and how lawsuits begin to percolate – but also how things can and do settle long before anyone elver gets to trial. It’s easier to just get on the same page with someone and communicate about expectations than it is to fight with $150-2,500+/hr weapons.

Pax,
– Your Friend, Esq.

(c) Nicole L. M. Jurkowski 2011

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Letter to the Editor

Recently a friend of mine passed this article onto me, and it stuck very close to home.

“Is Law School a Losing Game?”

by David Segal

“In reality, and based on every other source of information, … a generation of J.D.’s face the grimmest job market in decades. Since 2008, some 15,000 attorney and legal-staff jobs at large firms have vanished… Associates have been laid off, partners nudged out the door and recruitment programs have been scaled back or eliminated.  …

But improbably enough, law schools have concluded that life for newly minted grads is getting sweeter, at least by one crucial measure. In 1997, when U.S. News first published a statistic called “graduates known to be employed nine months after graduation,” law schools reported an average employment rate of 84 percent. In the most recent U.S. News rankings, 93 percent of grads were working ― nearly a 10-point jump. …

[But] … a law grad, for instance, counts as “employed after nine months” even if he or she has a job that doesn’t require a law degree. Waiting tables at Applebee’s? You’re employed. Stocking aisles at Home Depot? You’re working, too.” ”


The article goes on, in great length, the way law schools have been manipulating the numbers because numbers effect rankings, and ranking effect enrollment, and enrollment effects the entire university. Twenty five new law students are worth $1,000,000 in tuition. But if each law student in turn ends up with $250,000 in debt, it’s no wonder the law professors in this article reporting feeling dirty and unethical.

For me, though, the article was important because it finally put a believable face on the fact that I am not the lone 2009 grad still looking for work and struggling to make ends meet, even if it feels that way. I am also not alone in the $175,000 of loans I took out, or the now $250,000 I owe because of a year and a half of deferment, sans work.

It does seem that I am, however, alone in believing that there is value in a legal education beyond the lure of $160,000 a year job. (Because, let’s be realistic, that kind of salary is rare.) So in case the Times doesn’t decide to publish my letter – here’s what I had to say:
[Edit to add: I was indeed published on 1/15/11, but in case you missed the Letter, here is my full submission.]

Misplaced Value

I wanted to shine another light on the article “Is Law School a Loosing game?” by David Segal. While the quoted grads are upset with false promises and “lost wages”, they are ignoring the true value of their J.D. To be a lawyer is to be a civil servant, helping those that cannot help themselves for lack of an education. Some make millions, while others make a real impact in peoples’ lives. I truly feel that I am a better person, and a better citizen, for investing $250k of my future in order to advocate for my friends, my family, and a budding group of clients. I thank my lenders for giving me the chance to do what I could not do on my own as I turn around and help so many others. The cost may have been high, but the value of my education is priceless.

Nicole L. M. Jurkowski, Esq.

2009 Grad, Solo Practitioner, and Waitress

 

(c) Nicole L. M. Jurkowski 2011

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The Fair Use Fairey

Oh, for the love of Hope in Copyright law… It seems that the Shepard Fairey debacle has finally reached a conclusion, and it’s not what many would have hoped for. From an artist’s perspective, they’re taking the easy way out. Not seeing this through to trial is cheaper, but now there is a lost opportunity to get some modern precedent from the courts about the fair use of digital media.  From a business perspective, though, I can see how they’re doing the smart thing, splitting the difference with collaboration.

So before I wax poetic about what they’ve concluded, this is the background to the story for those that haven’t been following along.

Associated Press files countersuit over Obama Poster
(March 11, 2009)

“The Associated Press has filed a countersuit against the artist Shepard Fairey , who created the famous “Hope” poster of Barack Obama, The A.P. said in a statement. Mr. Fairey, whose poster  is based on an A.P. photograph taken by Mannie Garcia in 2006, filed suit in February , seeking a declaratory judgment that would rule that the poster does not infringe on The A.P.’s copyrights, and enjoining The A.P. from asserting its copyrights against Mr. Fairey or his company, Obey Giant. In its counterclaim , filed Wednesday in the U.S. District Court for the Southern District of New York, The A.P. said that Mr. Fairey was “fully aware” that his poster was based on a copyrighted image, and that he “misappropriated The A.P.’s rights in that image”; The A.P. said that it made “every effort amicably to enter into a license and avoid litigation” with Mr. Fairey. In its countersuit, The A.P. seeks damages and injunctive relief on claims of copyright infringement.”

In the eventual lawsuit Ferry was seeking a “Fair Use” declaration to any issue of copyright infringement. Because he had so transformed the photograph into a new and independent work, this seemed like a no-brainer. The Associated Press, though, wanted Fairey to license the work so they could get the windfall of fame and money. Here’s a recap of the breakdown:

Fair Use Argument:
The AP Has No Case Against Sheppard Fairey
(Feb 8, 2009)
Johnathan Melbur explains the whole issue very well, so I won’t reinvent the wheel:

“The term “fair use” gets batted around a lot, often incorrectly, and so deserves some explanation. At the most general level, copyright law prohibits you from copying another person’s original creative work. That means you’re typically not allowed to create work using someone else’s original unless you pay that person. “Fair use” is an exception to this rule: it says that sometimes you don’t have to pay someone to use his or her original work. Whether you do–that is, whether your new work qualifies as “fair use”–depends on what, exactly, the original work is, how much of it you’re using, how you transform it, and whether your new work hurts the commercial market for the original. (Note that the issue has nothing to do with whether anyone thinks your use is “fair.”)

By far the most important factor is how you transform the original work–but, contrary to popular belief, the transformation that really matters is the conceptual one, not the physical one. ”

DMCA?
Of note, the Electronic Frontier Foundation also notes this claim, which seems to have fallen away by comparison to the fair use claim by Fairey. The idea is that the Means By Which that Fairey used to create poster was digital, therefore he violated the DMCA because there are digital protections. While this idea definitely has a bit of merit, it is a stretch.

AP invokes DMCA Against “Hope” Poster Artist
(March 3, 2009)

“The AP counter-sued  Fairey for violation of Section 1202 of the DMCA , which prohibits the removal of copyright management information (“CMI”) from copyrighted works or the distribution of works whose CMI has been removed. The DMCA question has received little attention compared to whether Fairey’s use of the photograph by AP photographer Manny Garcia is a fair use under copyright law  (or even whether Fairey took any creative expression  in the first place).

What’s the CMI that Fairey is accused of “stripping” from the original photo? Well, the AP complaint  is not entirely clear on this question. In one part of the complaint, AP alleges that all of its digital photos include digital metadata that Fairey allegedly “stripped” from the image. In another part of the complaint, AP seems to rely on Fairey failing to preserve the “copyright notice line” at the edge of the photo.”

But now the ABA is reporting this:

Copyright Dispute over AP Photo in Obama Poster Is Resolved with Deal to Collaborate

By Debra Cassens Weiss

“The artist who used an Associated Press photo of Barack Obama to create the hot-selling “Hope” poster will share rights to the image with the wire service.

Artist Shepard Fairey and AP announced today an agreement in principle to settle their litigation. The deal provides that Fairey and AP will share rights to make posters and merchandise with the Hope image, according to a press release  and an AP story . Fairey will also collaborate with AP on a new series of images that he will create based on wire service photos.”

They apparently have a “Deal to Collaborate”, which comes with undisclosed financial components that reeks of a settlement to my intuition. Funny thing about the small article, though, neither has given ground on their legal opinion. Nevertheless, Fairey will be working with the AP to produce a new series of photos (good for him), but says he won’t use any more AP works without obtaining a license…

So he fights a major battle for the right of Fair Use and then does a 180º?

If something is truly fair use, and you intend to fight for it, then that’s one thing. You get the support and admiration of a generation of creators who can be assured (with a legal ruling) that they have the freedom to transform popular culture into new mediums of personal expression. Not only that, but their won’t be a pay out for the many number of potential people who want in on a windfall.

Personally, I was hopping this could be another 2 Live Crew  moment which could give modern guidance to fair use.  (The Acuff-Rose case that involved 2 Live Crew is a classic demonstration of fair use by means of parody for music.) With Fairey, the issue would be an artistic transformation that so completely transforms the original picture that whoever owns said inspiration can’t come after you for a piece of your fame. That the transformation is so complete that it is its own piece, rather than a derivative work.
But logically, if you can’t afford to keep up in a lawsuit or it’s more profitable to just join forces with a corporate giant, then I guess you win in the end. You just don’t end up in the annals of (legal) history as  a hero of fair use. You’re just another (very profitable) sell-out, which seems to be the modern plague.
Pax,
Entertainer at Law

Dicta:
Now I say all this based on the facts that I have. If anyone knows more about the minute details of what happened here, especially dealing with the negotiations between the two, feel free to chime in. The sentiment is the same, though, for the present outcome. No lawsuit, no ruling, no clear protection for future creators.

(c) Nicole L. M. Jurkowski 2011

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Trademark: The Good, the Bad, and the Ugly

For those that have been following along, I’ve made the distinction between the significance of a Trademark and a Copyright. In shorthand, Trademarks protect the public’s “mental associations” with brands or brand recognition and Copyrights protect anything that can be formed, written, or recorded.

I’ve also briefly touched on the difference between a Good trademark and a Bad trademark. Good trademarks typically require a branding campaign to associate a random or fanciful word with its product (think “Google” in the early 1990s). A Bad trademark, by distinction, relies on a generic word to connect its services to its name: “Great Lawn Maintenance”. You can assume this company would do lawn work, and that they think it’s great, but they all think they’re great – so there’s no significance to the name and therefore no trademark protection. (They can’t stop everyone else from using that brand name in connection with law care.)

What I haven’t had the opportunity to talk about is the difference between a Good trademark lawsuit and the Bad trademark lawsuit. Fortunately, the Universe has aligned to provide me with an opportunity to demonstrate both! Thanks, Universe.

(And thanks to Techdirt  for the inspiration….
Tobacco Companies Using Trademark Claims To Try To Avoid Putting Warning Labels On Cigarettes & Cigars  from the your-health-is-less-important-than-someone’s-trademark dept)

First: The Good
Infringement lawsuits over trademarks are started because Company B is using a trademark that is confusingly similar (and thus would cause a “likeliness of confusion”) or even identical (“passing off”) to Company A’s trademark. As a bit of a background, Company A is has usually done a lot of work building a successful brand and has become nominally famous for what they do. This, then, makes it enticing for the people running Company B to try and bleed away some of that fame. They could either do this by working hard and competing, or by knocking off Company A’s logo so that consumers get confused when they see Company A and Company B side by side, and buy Company B’s product, thinking it is from Company A. So while we’d like for Company B to help stimulate the economy with some old fashioned competition, that wouldn’t make for a good trademark lawsuit example. Instead, we get the latter version of the story where Company A finds out about what Company B is doing, and they go through the Angry Letter (Cease and Desist) and Lawsuit (Infringement Lawsuit / Injunction) dance. Company B usually tries to prove it’s actually competing, and while in court the lawyers have to do market research (the only actual evidence of a consumer’s mental association) and it’s a whole, long song and dance. Welcome to good, old fashioned Trademark law.

I could also wax poetic about the new up-surgance in trademark law regarding pre-registration of other people’s domain names (or “cyber squatting”) so Company A has to pay you big money to get a website forwww.CompanyA.com – but the legal community at large knows about that stuff now. Even business people know that now, so much so that at the recent Firm Future conference I attended in Boston had seminar leaders mentioning that, even if you don’t have a web presence, you should buy www.YourName.comand register a Facebook, Twitter, and anything else your field uses.

So that’s old hat for bleeding edge Trademark law. Instead, what you want is International Trademark law that has global economy and treaties and foreign laws and all sorts of other nonsense to play with. Something like…

How Trademark Law Is Supposed To Work: Groupon Sues Australian Clone That Tried To Squat Groupon Name  from the likelihood-of-confusion dept

“Not only did it register Groupon.com.au, it also registered its company name as Groupon Pty Limited and applied for the trademark on Groupon in Australia. That seems like a clear case of a company trying to confuse the public into believing it’s the original Groupon, and a perfectly reasonable situation for using trademark law.”

Hooray for reasonableness! Now, hopefully for Groupon, the courts will agree. More than likely, though, is that Scoupon will stop infringing and settle out of court, so this may be the only thing we hear about it. If it isn’t, though, I’ll be sure to follow up with further developments.

Now: The Bad… 
When Bad trademark lawsuits appear, it’s usually someone trying to stretch a protection into a right. Case in point, some people can think that because they have “Company X” registered with the USPTO (US Patent and Trademark Office) that means that they also have a Right to www.CompanyX.com and can demand that Some Guy who has had it registered for years must give it to me for little or no charge. (This is also a reaction to the effects of cyber squatting laws making it seem okay to bully people out of their legit domains because some squatters quite successfully bullied legit companies out of money – and that was just wrong. So charging at all is now wrong, etc.)

A Bad trademark lawsuit can also appear, however, when people try to use their right to a Trademark (again, governmental protection and remedy given to maintain a mental association of a product and a source) to skirt or fight against other government regulations – this time with health warnings.

Some background:

Legal obstacles raised against plain cigarette packs
Mark Metherell HEALTH CORRESPONDENT

“IP (Intellectual Property) Australia has advised the federal government that the plain packaging measure ”may not be consistent with Australia’s intellectual property treaty obligations” … “One of the briefing documents said that implementation of plain packs in Australia raised controversial treaty and trade issues concerning the use of trademarks which could violate provisions dealing with ”unjustified encumbrances” and undermine a trader’s ability to distinguish their good or services from other products.” (Emphasis added.)

Okay, this makes sense. A plain package means, essentially, no Trademarks can be used to distinguish one source from another. If it passes, the article notes that the tobacco industry folks there then want to be compensated for a “taking” (or an Australian “acquisition”) like when the government wants to build a highway through your back yard and you get paid for the property as you are forced to move. But:

“Experts in intellectual property law have… pointed out that international agreements and trademark laws protect trademarks and prevent third parties using them – but don’t guarantee a right to their unlimited use.’

Remind you of anything? Maybe Companies feeling like they have a right to domain names? Trademarks are a funny thing to begin with, but they are something that the government acknowledges and protects – not something they government (ANY government) can’t overrule. If Australia wants to ban packaging as a way to eliminate the “last way for cigarette companies to advertise their products,” then I suspect they’re going to have their way – American treaties or not.

And then, The Ugly:
In similar news, it seems that the Australian tobacco companies are fighting a two front war with their Trademark as the main weapon. In this one, though, the Australian company (British American Tobacco) WON the right to pursue damages against an importer (Trojan) for trademark infringement because the health warning Trojan is required to put on the tobacco products “covering up” the BAT trademark.

Tobacco giant fuming over packets
The Daily Telegraph 

“World tobacco giant British American Tobacco has won permission to pursue damages in the Australian courts, accusing local importer Trojan of infringing its Captain Black cigar trademark by covering its labels with the mandatory health warnings.”

This is a Bad trademark lawsuit because they’re using the trademark as a way to attempt to get the vividly graphic health warning off of the packaging. (Arguably because the health warnings are so effective.) While there is something to be said for BAT about the right to have their Trademark visible, what damages are there really? Put the image on the back of the package? Unfortunately I don’t know enough about the Australian requirements – but with an educated guess I would suspect BAT is going to try to “protect” not only the Trademark in their logo, but their “Trade dress” as well. Trade dress being the color of the box, placement of lines, etc. If the warning has to be face-pout on shelves, then it’s a problem. But if it has to be on the front, with the logo, then maybe they have something?

With such a big warning required, so big in fact that the “only place to put it” is over the logo (arguably a Trojan defense), then how will anyone know what brand it is (BAT’s damages). If Trojan could have put it somewhere else, then fine, but if not- won’t it basically amount to the packaging looking like it’s just a plain box? Warning logo on one side, logo on the other? Not that Australia would do anything like that…

From my perspective as an IP attorney, I’m definitely curious to see what happens in this one.

As for this blog – now you’ve had the opportunity to see both a good and bad trademark lawsuit in action. Lucky you!

Pax,
Entertainer at Law, Esq.

 

(c) Nicole L. M. Jurkowski 2011

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