Blueprint of a gear train.

 Robert J. Yarbrough
Patent Attorney

 Patents - Inventions - Trademarks 

Newsletter Issue 85 - March 2016

In this issue:

Songwriters can reclaim song publishing rights
Is publishing a work to a file sharing site 'publication' of the work?
Supreme Court to consider design patent damages in Apple v Samsung

Ask Dr. Copyright ...Dr. Copyright logo

I'm an aspiring musician. I write the songs that make the whole world sing. Lately, it seems that I'm having to work much harder to become an overnight success. After all, I write the songs that make the young girls cry. Can you help?


Dear Mandy:

Woof! Wooof, grrrr. Woof! (But I digress...)

It is very hard to become an overnight sensation in the music "biz", but keep at it! Under the U.S. Copyright Law you, like Sir Paul McCartney, may be able to reclaim your early works from music publishing companies after just 56 years. Sir Paul is doing that, or, at any rate, half of that, right now. You see, he wrote almost all of his Beatles' hits with John Lennon, and they were owned by Northern Songs, the publishing company set up by the late Brian Epstein. Epstein died in 1967, and Northern was sold to ATV Music. In 1985, Michael Jackson bought ATV. In 1995, ATV merged with Sony, taking half of Jackson's ownership. In 2009, Yoko Ono sold Lennon's half to Sony. Last month, Sony bought the other half from Jackson's estate. Simple, huh?

But under the Copyright Law (17 USC 304(C )), a songwriter may file a notice terminating transfers of publishing rights anywhere from two to ten years prior to the 56 year reclaiming period. On December 15, 2015, Sir Paul did that for 32 of the original Lennon-McCartney/Northern/ATV/Jackon/Sony songs.

So, Mandy, if all goes well, then soon, and for the first time, Sir Paul will actually own the rights to the songs he wrote - at least the very early ones. As for the later ones? You might say that he came, and he gave without taking, and will have to wait a while longer to file more notices in the Copyright Office.

Have a question about intellectual property? Want to talk to someone not named "Rico" about it? Ask the attorneys at LW&H. They help creative types, and as I am sure that they'll tell you, you get what you get when you go for it. Until next month...

The "Doc"

Posting Images on Flickr: Is it Publication?camera image

During a recent presentation on copyright law to the Lehigh Valley Photography Club, several members expressed an interest in knowing whether posting images to a photo sharing site such as was "publication" for purposes of copyright registration. I expressed my opinion that it is publication. I thought it would be useful to take a closer look at the issue to see whether there was a definitive answer. Unfortunately, there is not.

To understand why there is no clear answer it's necessary to look at the 1976 Copyright Act. Keep in mind that in 1976, or similar sites did not exist and the Internet was just being born. Because the definition has not been updated since that time we have to determine whether the definition still fits technological advances and innovations developed after the law was enacted. Here's how the Act defines "publication":

Section 101: "Publication" is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not of itself constitute publication.

The key concepts in the definition are "distribution," "sale," and "transfer." Exchange of money is not required. "Offering to distribute" for purposes of distribution, public performance, or display also constitutes publication. The key word here is the term "offering." Finally, the definition contains a single exception, that is, "a public performance or display of a work does not of itself constitute publication." So, if posting images online only for purposes of display is the copyright owner's objective then there is an argument under the definition that such conduct does not constitute publication. The problem, however, is that the underlying assumption of posting images to a photo sharing website is the presumption that the images will be "shared," that is, being offered to be distributed to the public (assuming public access to the sharer's webpages). To make matters even more complicated is that the very act of viewing photos, even on a web site not devoted to photo sharing, creates a copy of the images in your device's memory. Isn't that distribution and, if so, isn't that "publication?" So, even the "public performance and display" exception may not be applicable. This analysis appears to support our original conclusion that posting to a photo sharing website is publication under the Copyright Act.

Let's see what judges say about this. As you may have guessed, they have been largely silent; there are few cases. In one case, William Wade Waller Company versus Nexstar Broadcasting, Inc., plaintiff, Waller brought a federal copyright action contending that 17 photographs with its copyright watermark were removed or cropped out in a television commercial produced by defendant. Waller contended that the infringement was willful and sought damages. The issue was whether plaintiff could pursue statutory damages if registration is made within three months after the first publication of the work. This is a requirement of the Copyright Act. The court stated, without analysis, that "Plaintiff's act of posting the pictures to the website making them accessible to others for distribution is considered a publication." The court relied on a 2002 New York case that held that display of a webpage was equivalent to publication.

In another case, Rogers versus Better Business Bureau of Metro. Houston, the issue before the court was whether the plaintiff's copyright registration was valid because he said his website was "unpublished." The court was reluctant to conclude that simply uploading webpages to the Internet was "publication" under the Act even though Wade and some other cases supported that proposition. The court concluded that although the trend favored the finding of "publication," the conclusion was fact dependent and absent binding law or even a clear consensus the court was not inclined to negate the presumption of validity by finding as a matter of law that plaintiff distributed copies of the websites when he uploaded them to the Internet." Instead, the court deferred to the Copyright Office which did not object to the plaintiff's assertion in the copyright application that the websites were "unpublished."

As noted by the court in Rogers, the end result is that there is no definitive answer to the question of whether posting images is equivalent to publication. Perhaps, the best advice is to err on the side of publication; that way you get all the attendant rights as well as a strong argument that the images were published upon posting. Don't forget to register the copyrights of the images within 3 months of posting them. That way you will insure that you will have access to statutory damages should the images be infringed.

Supreme Court Dabbles in Patent Law, AgainSupreme Court

The first general rule is that whenever the Supreme Court accepts a patent case, it will reverse the lower court decision and change the law. The second general rule is that whenever the Supreme Court decides a patent case the law is left in worse shape than it was before.

This time, the Supremes have inserted themselves into the Apple v Samsung litigation. In 2007, Apple under Steve Jobs took a high-risk leap and launched the first iPhone. No one knew at the time whether anyone would buy the new product or whether Apple would slowly sink beneath the waves. The first iPad followed three years later. Apple had the foresight to protect the appearance of the iPhone and iPad with design patents. A 'design patent' protects how a thing looks, not what it does or how it does it.

The iPhone and iPad were, of course, wildly successful, a fact not lost on Samsung. In a later infringement action by Apple, a U.S. jury found that Samsung willfully copied the appearance of the iPad and iPhone in the early Samsung smart phones and tablet computers, and in the process infringed Apple's design patents. The jury awarded over $1 billion in money damages to Apple. The money damages were subsequently reduced by the trial judge and now total $400 million.

There is no longer any question as to whether the Apple patents are valid or whether Samsung infringed those patents - the patents are valid and Samsung did infringe. The only issue remaining is whether the method used by the lower courts to calculate Apple's damages is correct.

Design patents have a special remedy that does not apply to utility patents, and design patent law is as clear as the law gets:

"Whoever... applies the patented design or any colorable imitation thereof to any article of manufacture for the purpose of sale...shall be liable to the [patent] owner to the extent of his total profit." 35 U.S.C. 289

The lower courts held that Samsung's total profit from the sale of the infringing smart phones and tablet computers was the proper measure of damages and the $400 million award is based on Samsung's profits from the sale of infringing products.

Samsung argues that because the patented design is incorporated in a component of the total product, then the damages should be the profits from the sale of that component, not the entire product, and that is the issue that the Supreme Court has agreed to consider. Of course, the profit from the sale of a $40.00 smart phone case is a lot less than the profit from the sale of a $600.00 smart phone. This issue has far-reaching ramifications and we expect a decision from the Supreme Court later this year. We'll keep you posted.

Robert J. Yarbrough was awarded an 'AV' (highest possible) rating by the Martindale 
			Hubbel attorney rating agency.