You Decide: 11 Game-Changing Copyright Cases
Examine the evidence and judge for yourself where the boundaries of intellectual property lie.
What belongs to you, and what doesn’t? In the murky waters of copyright, trademark, and patent law, the complexities can foil the savviest of entrepreneurs, and the ramifications of being wrong can cost billions of dollars.
Just ask YouTube. They thought they proved when it comes to copyright theft, ignorance is bliss, until this April when the federal courts overturned the infamous 2010 ruling. Or Apple (AAPL); the company thought it owned the iPad name, but Proview International has another idea. And sometimes the simplest aesthetic decision, as Urban Outfitters (URBN) recently discovered, can promote not only lawsuits, but a hailstorm of criticism. But whether or not their actions were morally sound is not the point. Under the law, the only question that matters is: Who will make the better case?
In other words, it’s a matter of opinion, and I want to know yours. Here are the top 10 cases of the past few years. You’re the judge; examine the evidence and give your verdict.
1. Yahoo v. Facebook
The Plaintiff: Yahoo! Inc. (YHOO).
The Defendant: Facebook (FB).
The Charges: That under U.S.C 35, Facebook infringed upon 10 Yahoo registered patents on advertising optimization, privacy, customization, networking, and messaging innovations. An example of infringement is the Facebook Wall and NewsFeed, which Yahoo claims uses patented Dynamic Page Generator technology (US Patent No. 5,983,227). Yahoo successfully sued Google Inc. (GOOG) for patent infringement in 2004, also for 10 patent infringements and also with law firm Quinn Emanuel Urquhart & Sullivan, and earned $201 million in the patent suit settlement. (Click here to view filed complaint.)
The Defense: The case has yet to come to trial, but Facebook may attempt to prove that under the Supreme Court “Benson-Flook-Diehr Trilogy” decisions, the broad nature of the Yahoo patents renders them void. Facebook will need to prove that the object of each patent is either a basic tool of technological work, based on conventional knowledge rather than invention, or an abstract idea.
Next Case: Proview v. Apple
2. Proview v. Apple
The Plaintiff: Computer display manufacturer Proview Electronics, Co. Limited and Proview Technology, Inc., subsidiaries of Hong Kong-based Proview International Holdings. The company sold its “IPAD” trademark to the British corporation IP Application Development in 2010.
The Defendant: Apple, Inc. (AAPL).
The Charges: That the trademark purchased from Proview Taiwan did not cover mainland China because the mainland trademark is owned not by Proview Taiwan, but by Proview International’s unit in Shenzhen. That Apple committed fraud by intentionally misrepresenting itself when it used IP Application Development, an organization set up by Apple agents, to purchase the trademark. That Apple fraudulently induced the sale of the trademark by concealing its intent in purchasing the trademark, and making the false promise not to compete with Proview. (Click here to view filed complaint.)
The Defense: The case has yet to come to trial, but Apple will probably argue that no illegal business practices took place, that it did not misrepresent itself, and that it provided no fraudulent information. Apple may also argue that since the trademark was purchased by IP Application Development, Proview should sue IP Application Development, not Apple, Inc.
Next Case: United States v. MegaUpload Limited
3. United States v. MegaUpload Limited
The Plaintiffs: The United States Attorney’s Office for the Eastern District of Virginia and the Computer Crime & Intellectual Property Section of the Justice Department.
The Defendant: Kim Dotcom, also known as Kim Schmitz, founder of MegaUpload.com. When Dotcom and six MegaUpload programmers were arrested in January, the Customs and Excise Department of Hong Kong froze $42 million worth of company assets.
The Charges: That MegaUpload was designed to facilitate a crime by providing users with unlicensed copyrighted works. That MegaUpload provided payment to users who provided content and supported third-party linking to advertise illegal content. That the site did not effectively police content. That MegaUpload facilitated infringements that led to more than $500 million in harm to copy right holders.
The Defense: The case has yet to come to trial, but MegaUpload attorney Ira Rothken has been quick to compare the site to YouTube.com, which famously beat the copyright suit against it. In the case of Viacom v. Google, the judge ruled that because YouTube.com removed obviously pirated material, it was protected under the Digital Millennium Copyright Act, which protects hosting sites that actively discourage uploading illegal content. Rothken will have to prove that illegal materials on MegaUpload could not be policed because they were not obviously pirated.
Next Case: Navajo Nation v. Urban Outfitters
4. Navajo Nation v. Urban Outfitters, Inc.
The Plaintiff: The Navajo Nation and the Navajo people have been known by the trademarked name “Navajo” since 1849. The sales of these trademarked goods and services has earned the Navajo Nation over $500 million and represents their most lucrative source of income.
The Defendant: Urban Outfitters, Inc. (URBN), the international retail company based in Philadelphia.
The Charges: That Urban Outfitters, Inc. continued to sell Navajo-branded products after receiving a cease-and-desist letter. That the sale of Navajo products infringes and dilutes the Navajo trademark, presents unfair competition, and violates the Indian Arts and Crafts Act (which outlaws “any art or craft product in a manner that falsely suggests it is Indian produced"). (Click here to view filed complaint.)
The Defense: The case has yet to come to trial, but on Jezebel.com, Fordham University law professor Susan Scafidi posited the following as possible defenses: That under Copyright Act A, a useful article such as clothing cannot be copyrighted. That because their products are mass-produced, they do not constitute “arts and crafts” and therefore cannot violate the Indian Arts and Crafts Act. That use of the word “Navajo” is descriptive, not branding.
Next Case:Monsanto Co. v. Bowman
5. Monsanto Co. v. Bowman
The Plaintiff: Monsanto Co. (MON), a multinational biotechnology corporation that invented and developed technology for genetically modified Roundup Ready soybeans. It licenses the technology to seed producers, who insert the genetic trait into seeds they sell to farmers. Upon sale, the farmer agrees in a standard form limited-use license to use the seed only in a single season and not to save the seed for replanting. Second generation seeds can be sold in a mixture known as commodity seeds.
The Defendant: Vernon Hugh Bowman, a farmer from Indiana. He purchased commodity seeds and by applying pesticide destroyed every seed except the pesticide-resistant Roundup Ready, which he saved and replanted.
The Charges: That Bowman breached the license agreement and the patent by replanting the Roundup Ready seed. (Clicke here to view filed complaint.)
The Defense: Bowman argued at trial in September 2011 that patent exhaustion had nullified Monsanto’s rights. Under this doctrine, a patent only lasts up to the point of initial sale. Once the patent owner profits from the sale of the patented object, he no longers owns said patent. Bowman argued that when Monsanto sold the Roundup Ready seed to the commofity seed distributor, its patent expired. He also argued that if secondary generations were not subject to patent exhaustion, patent exhaustion would be rendered void.
United States Court of Appeals for the Federal Circuit found for the plaintiff on the grounds that patent exhaustion does not apply to self-replicating technologies.
Next Case: Bikram Choudhury v. Gumucio
6. Bikram Choudhury v. Gumucio
The Plaintiff: Bikram Choudhury, the Indian yoga guru and Bikram Yoga College of India owner. Salon.com estimated Choudhury's worth at $7 million in 2003. He's demanding $150,000 per copyright infringement.
The Defendant: Greg Gumucio, owner of the Yoga to the People studios, with outposts in New York, Seattle, Berkeley, and San Francisco. Yoga to the People’s “Traditional Hot” yoga classes replicate the Bikram series, but typical Bikram classes cost upward of $25, and Gumucio only charges $8.
The Charges: That the contract Gumucio entered upon his teacher training prohibited him from replicating the Bikram series and that “Traditional Hot” yoga classes infringe the copyright registered by Bikram in February of 2003. In 2002 Choudhury successfully sued Prana Inc. under this copyright; the owners paid a substantial fee in retribution and agreed never again to offer Bikram-like yoga. (Click here to view filed complaint.)
The Defense: The case has yet to come to trial, but on his website YogaTruth.org, Gumucio argues the following: That there was no trademark violation because Gumucio never uses the Bikram name. That there was no copyright infringement because the Yoga to the People instructors do not use Bikram’s copyrighted dialogue (the speech used by Bikram teachers to guide students through the Bikram series). That the copyright on the physical enactment is invalid because the series is not a choreographed dance but an exercise system, which cannot be copyrighted. That the document Gumucio signed upon his Bikram certification did not include any restrictions on his teaching.
Next Case: Louis Vuitton v. Penn Intellectual Property Group
7. Louis Vuitton v. Penn Intellectual Property Group
The Plaintiff: Louis Vuitton (MC.EN) of the LVMH Moet Hennessy Louis Vuitton SA luxury goods conglomerate.
The Defendant: The Penn Intellectual Property Group, or PIPG, a student club within the University of Pennsylvania Law School that fosters the study of intellectual property law. A poster advertising their March 20 Symposium on Fashion Law featured an imitation of the Louis Vuitton trademarked print.
The Charges: In a cease-and-desist letter sent to UPenn Law School Dean Michael A. Fitts, Louis Vuitton's Director of Civil Enforcement in North America Michael Pantaloney, Esq., charged the group with the following: That PIPG “misappropriated and modified” the Louis Vuitton logo, infringed upon the trademark, and diluted the brand willfully. It has yet to be revealed whether Louis Vuitton will continue to pursue legal action.
The Defense: In a response to the letter, PIPG representative Robert F. Firestone, Esq., argued the following: That the poster is protected from any claim of dilution by 15 U.S.C. 1125(c)(3), which protects both noncommercial usage and parody of logos. That there can be no irreparable harm because the symposium poster is not a trademark for a product in interstate commerce. That dilution did not occur since the poster was clearly marked as advertising a symposium and therefore unlikely to be confused with a Louis Vuitton product. That Louis Vuitton would need a Class 41 registered trademark to own use of its logo in an educational setting.
Next Case: Golan v. Holder
8. Golan v. Holder
The Plaintiff: Lawrence Golan, conductor and professor of music at the University of Denver. Golan represented the many academic professionals who rely upon the free availability of works in the public domain for their livelihood. Golan filed suit to challenge the constitutionality of Section 514 of the Uruguay Round Agreements Act, which saught to return copyright protection to works published abroad from 1923-1989, including films by Alfred Hitchcock and paintings by Pablo Picasso.
The Defendant: Attorney General Eric Holder, Jr., representing the United States government.
The Charges: That the Constitution’s Copyright and Patent Clause and the First Amendment preclude Congress from removing works from the public domain. Since the purpose of copyright and patent law is to “promote the progress of science and useful arts,” making foreign works unavailable would limit freedom of expression for professionals who wished to draw from the public domain store. Golan cited his personal experience with Sergei Prokofiev's "Peter and the Wolf," which once was free but would now cost $800 in fees to perform.
The Defense: Holder argued at trial in the summer of 2011 that under Article 18 of the Berne Convention, the United States is required to prevent future infringements by reinstating American copyrights on foreign works. As to whether or not the court had authority to remove work from the public domain, Holder cited the precedent set by private bills that removed articles from the public domain (this argument was weakened by the fact that the bills had passed before the Copyright Act of 1790, when copyright was determined by state law, not federal).
United States Supreme Court found for the defendant on the grounds that strict adherence to Berne would best serve the spirit of copyright law and, according to Justice Ruth Bader Ginsburg, return to foreign works "an equal footing with their US counterparts."
Next Case:Universal Music Group v. Grooveshark
9. Universal Music Group v. Grooveshark
The Plaintiff: Universal Music Group, one of the four largest record companies in the world and owned subsidiary of the French media conglomerate Vivendi (VIV.PA). Universal has been joined by Sony (SNE) and Warner Music Group (WB5.MU).
The Defendant: Grooveshark.com, a website that allows users to upload songs for others to stream for free. Grooveshark.com is a subsidiary of Escape Media Group.
The Charges: That providing certain materials free of charge violated the copyright owned by Universal, Sony, and Warner. That Grooveshark employees were given financial incentives to upload copyrighted material. The suit has provided a post from the blog Digital Music News, in which alleged Grooveshark employees confessed to the violation. They also claim to have business records showing 1,000 to 20,000 uploads per employee.
The Defense: The case has yet to come to trial, but Grooveshark representatives have argued that they are protected by “safe harbor” provisions of the federal Digital Millennium Copyright Act, which states that online service providers cannot be charged for infringement as long as they quickly remove or disable access to the alleged copyright-infringing materials. The validity of this argument depends on the defense proving employees were not downloading copyrighted materials themselves.
Next Case: Cambridge University Press v. Patton et al
10. Cambridge University Press v. Patton et al.
The Plaintiff: Cambridge University Press, in conjunction with Oxford University Press and SAGE publications, with support from the Association of American Publishers and the Copyright Clearance Center.
The Defendants: Because as a state institution Georgia State University is exempt from being sued in a federal court, the publishers sued select officials including university President Mark P. Becker, Dean of Libraries Nancy H. Seamans, and members of the University System of Georgia’s Board of Regents.
The Charges: That by putting class readings on university electronic reserve and faculty websites, the university routinely copied and distributed copyrighted works without authorization. (Click here to view filed complaint.)
The Defense: During the trial in the summer of 2011, the defendants argued that their actions were protected by “fair use,” a mandate that exempts nonprofit educational organizations from purchasing copyrights. They argued that e-reserves are the modern-day course-packs and merit the same protection under the law. This argument was weakened by the 1991 Basic Books Inc. v. Kinko’s Graphics Corp. case, where the Supreme Court found that the copying of copyrighted works for academic use was not protected. Defense argued that in the 1991 case, Kinko’s profited from the unauthorized copies, whereas Georgia University did not.
United States District Court for the Northern District of Georgia has heard the arguments but has yet to rule on the case.
Next Case: Rude Music Inc. v. Newt 2012, Inc.
11. Rude Music Inc. v. Newt 2012, Inc.
The Plaintiff: Rude Music, Inc., owned by Frank Sullivan, a former member of the 1980s rock band Survivor. Sullivan co-wrote the Rocky III theme song “Eye of the Tiger” in 1982.
The Defendants: Newt 2012, Inc., Newt Gingrich, and the American Conservative Union. “Eye of the Tiger” has been played at Gingrich political events, including the 2012 presidential campaign, since 2009.
The Charges: That the defendants performed Rude Music’s copyrighted composition without authorization in violation of 17 U.S.C. § 501. That the American Conservative Union distributed Internet video recordings featuring Gingrich and "Eye of the Tiger” without authorization. That as an American politician, a copyright owner, a CEO, and a professor, Gingrich is proficiently knowledgeable of copyright law and willfully infringed upon the copyright belonging to the plaintiff. (Click here to view filed complaint.)
The Defense: The case has yet to come to trial, but Gingrich representatives have argued the following: That the plaintiff has no standing to file suit because he has not provided sufficient evidence of copyright infringement. That the playing of the song constitutes fair use. That the alleged infringement is protected under the First Amendment. That the defendant is not affiliated with the American Conservative Union and therefore cannot be charged with distributing the material. That the suit is barred because the plaintiff suffered no irreparable harm. That the plaintiff lacks sufficient evidence to prove authorship of copyrighted material. That the plaintiff did not take adequate measures to protect his copyright. That jurisdiction is improper in the United States District Court for the Northern District of Illinois. (Click here to view filed defense.)
Stephen Colbert of The Colbert Report has rendered his verdict and implemented a penalty.