Garcia v. Google – Copyright overreach limited

            On May 18, 2015, the Court of Appeals for the Ninth Circuit sitting en banc reversed a ruling by an earlier Ninth Circuit panel concerning an actress's alleged  independent copyright claim to her performance in a copyrighted film (To prevent link rot, I am hosting both of these documents on Mega.co.nz).

            The plaintiff, Cindy Lee Garcia, is an actress who "was bamboozled when a movie producer transformed her five-second acting performance into part of a blasphemous video proclamation against the Prophet Mohammed".  See en banc ruling at 7.  After receiving death threats, Garcia filed numerous takedown notices with Google under the Digital Millennium Copyright Act.  See Panel Order at 5.  Google refused to takedown the film.  See id. at 6.  Garcia then sued Google to remove the movie by claiming, in part, that she had "a copyright interest in her fleeting performance".  See en banc at 8.  The district court denied the injunction and found that Garcia did not establish that she was likely to succeed on the merits of her copyright claim. See id. at 8.

            A divided Ninth Circuit panel reversed the district court stating that Garcia's copyright claim was "fairly debatably" and ordered the removal of the motion picture with her performance.  See Panel Order at 10.  In doing so, the panel found that Garcia could make a copyrightable contribution to a production and yet not be a joint author of the whole work.  See id. at 8.  The panel expressly avoided the issue of whether Garcia had to personally fix her work in a tangible medium.  See id. at 7, fn 4.  Because of the panel decision, the Ninth Circuit granted an en banc hearing to reconsider that decision.

             First, the en banc Court found that Garcia was not an author of the motion picture.  See en banc ruling at 16.  An author is the person or persons who fixes the original work in a tangible medium of expression.  17 U.S.C. § 101. Garcia was neither an author of the script nor the motion picture, which is a derivative work of the script.

            Second, the Court found that a motion picture is a single unitary work.  See en banc ruling at 17-18.  The Court relied upon the Copyright Office's expert opinion that an individual actor or actress cannot register their performance separate from the motion picture.  See id.  The court held, that to find otherwise would shatter copyright protection for a motion picture, or any large production, into many little pieces making the logistics of protecting such a production a nearly impossible. See id. at 20.

             Third, Garcia never "fixed" her acting performance in a tangible medium.  See id. at 22.  Copyright law requires that a work be fixed "by or under the authority of the author".  17 U.S.C. § 101.  However, in this case, any fixation occurred by the movie producer or the producer's crew.

             Thus, the en banc Court held that Garcia did not have an independent copyright claim to her performance in the motion picture.  

             This en banc ruling restores the balance between actors and producers.  It clearly states that copyright ownership in a motion picture, or any large production, will reside with the producers and that individual actors will not be able to interject copyright claims to muddy the ownership of the motion picture.

- Henry Park

updated on 5/26, 10/17 (to identify location documents are being hosted)

Trademark King – Update 2

     Since the last blog post, Mr. Lehocky has responded to a number of first Office Actions.  Mr. Lehocky's responses demonstrate that he does not understand trademark law, or does not believe that he needs to follow it.

     In his HYUNDAIUSA.COM application (application serial no. 86465557), he described the "evidence" he submitted in response to the first Office Action as:

The evidence consists of a trademark company requesting an automobile domain name HYUNDIUSA.COM [sic] that is not trademarked. The domain name involves advertising, promoting, buying, selling, and leasing automobiles to anyone in the United States for a legal business activity. A professional company should be 1a because it is available for sale right now. Any legal advertising cannot be done until approval is done.

And, he revised his description of services as follows:

Brand development and evaluation services in the field of trademarks, trade names, and domain names.; Creating trademarks for others; Creating trademarks for others. Selling or leasing the automobile domain name HYUNDIUSA.COM [sic] to anyone in the United States for a legal business activity.

And yes, he spelled his mark incorrectly.

     In the second Office Action, the trademark examiner, Nelson B. Snyder III, provides a short course in prosecuting a trademark to Mr. Lehocky.

     First, the examiner discusses the differences between a use based application (section 1(a)) versus intent to use application (section 1(b)).  As a hint, the difference is whether the mark already has been "use[d] in commerce".  Later, the examiner points out that the application probably should be an intent-to-use application because there has been no use of the trademark.

     Second, the examiner discusses the differences between a trademark, service mark and a domain name.  A trademark and service mark identify the source of goods or services while a domain name is part of an internet protocol address and registering a domain name does not give you any trademark rights.

     Third, the examiner highlights an ownership issue. To be entitled to file a trademark application, the registrant either must have used the mark (section 1(a)), or be entitled to use the mark (section 1(b)).  In this case, Mr. Lehocky's statements show that he has not used the mark and that he may not be entitled to use the mark.

     Fourth, the examiner points out that an application's description of goods or services may be clarified or narrowed, but cannot be broadened.  In this case, Mr. Lehocky's amendment – selling or leasing the mark – would broaden the description of services beyond brand development services (i.e., International Class 35).

     Fifth, the examiner points out that specimens submitted must show the "applied-for mark in use in commerce with the services for each international class".  The submitted specimen was "merely a photocopy of the drawing or a picture or rendering of the applied-for mark".

     Sixth, the examiner suggests that Mr. Lehocky retain trademark counsel and provides some suggestions on how to locate such a counsel.

     As I originally mentioned, the legal bases for these trademark application was sorely lacking.  As aptly demonstrated by the trademark examiner, Mr. Lehocky has no chance of saving his applications, even if he retains trademark counsel.



- Henry Park


updated on February 6, 2016

Becoming an attorney around the world – Part II

            And here is some information comparing the U.S. and U.K.

        

U.S.	U.K.
High School (18 years old)	High School (18 years old)
University for Bachelor's degree in any subject (4 years)	University for undergraduate law course - LLB (3-4 years)
Law School for a JD (3 years)	Postgraduate study – Legal Practice Course (1 year)	Postgraduate study – Bar Professional Training Course (1 year)
	Apprenticeship – training contract (2 years)	Apprenticeship (1 – 1.5 years)
Bar Exam
Attorney	Solicitor path	Barrister path

- Henry Park

Becoming an attorney around the world

            Lately, I have met many international attorneys.  Each of them had a great tale to tell about why they chose to become an attorney.

             One of the more takeaways from our discussions is that our educational paths to becoming attorneys are often quite different.  The following table compares the U.S. with Italy and Switzerland.

U.S.	Italy	Switzerland
High School (18 years old)	High school (19 years old)	Gymnasium / High School  (18 years old)
University for Bachelor's degree in any subject (4 years)	University for Bachelor's degree in law (4 years)	University for a combined BA / MA in law (total of 4.5 years)
Law School for a JD (3 years)	Practical experience (2 years)	Practical experience (1 year, of which a minimum of 3 months is court experience)
		Jurist is an unlicensed graduate
Bar Exam	Bar Exam	Bar Exam
Attorney	Attorney	Rechtsanwalt is a person who has passed the bar exam
	** In Italy, if you wish to be a Judge or work for the public, then you must take an additional examination

- Henry Park