Post by Concerned DBZ fan site owner on Nov 20, 2003 11:26:30 GMT -5
Hi all,
Please kindly read and share the article entitled
"Set Phasers on Stun: Handling Internet Fan Sites"
appearing at:
www.oppenheimer.com/news/content/fan_sites.htm
Prentice Hall Law & Business
The Computer Lawyer
Here are some excerpts:
BYLINE: by Erika S. Koster and Jim Shatz-Akin; Erika S. Koster is an associate
in the Intellectual Property Group at Oppenheimer, Wolff & Donnelly. Jim
Shatz-Akin is a Senior Account Executive at Shandwick USA, a public relations
company.
An intellectual property owner who knows that someone else has been using its
property, but takes no action, may find its right to proceed against the
infringer foreclosed forever. In other words, the infringer may be able to
assert defenses such as implied license, acquiescence or estoppel by laches n3
or may be able to argue that the property owner has waived its right to sue.
n4 In evaluating these arguments, courts will generally consider whether the
intellectual property owner knew of the infringing activity and whether the
infringer, relying on the property owner's tacit acceptance of the infringing
activities, made investments that increase the difficulty of ending the
infringement as time goes on.
Often, a fan's use of intellectual property is initially unobjectionable, even
though it is technically infringing. Later, the use may become more onerous,
creating a sticky trap for the property owner. The argument that an
intellectual property owner took no action initially because the infringer's
encroachment was progressive rather than sudden may be viewed with disfavor by
the courts. n5 Thus, the real danger is that a property owner may view
increased activity by a fan-site -- carping on the site, say, or the posting
of creative product before its public release -- as the final straw, forcing
the owner to take legal action. A court, however, may view the same activity
as a continuation of prior infringement that the owner found unobjectionable.
Accordingly, an intellectual property owner must be vigilant in protecting its
rights or it may be estopped from asserting a claim later...
Although the authors are not aware of any systemized method of policing the
Internet for instances of copyright infringement, services that will search
for Internet trademark infringement are proliferating. For an annual fee of $
900, a Mark Watch n10 agent will search the Internet for infringement of a
particular mark. Similar monitoring services are also provided by
NetSearchers. n11 Thompson & Thompson, the powerhouse trademark searching
firm, is in the process of developing a similar product.
The Traditional Legal Approach
An intellectual property owner is not powerless to respond legally to the
threats posed by fan-site infringement if it so chooses. Copyright, trademark,
and laws governing publicity rights all may be applicable to fan sites.
Copyright Infringement Laws
Modern copyright law derives from our British legal heritage, with roots
dating as far back as an ancient Irish king's pronouncement, "to every cow her
calf." It has been updated and refined for centuries and has met the demands
of today's "information age" remarkably well, considering this antique
lineage. Indeed, piracy of intellectual property isn't just a plague of modern
times. It was an issue as early as 1694, when the publishers of London applied
to Parliament for protection against illegally copied books and manuscripts.
The result of their lobbying, the celebrated Statute of Anne, is the
predecessor of our modern laws... n12
United States copyright law protects almost all original creative work, n14
and gives authors of that work the following exclusive "bundle of rights:"
1. reproduction;
2. modification (creation of "derivative works");
3. distribution of copies;
4. public performance; and
5. public display. n15
n14 17 USC § 102(a) and MAI System Corp. v. Peak Computer Inc., 991 F.2d 511,
517 (9th Cir. 1993), cert. dismissed, 510 U.S. 1033 (1994) (holding work
embodied temporarily in a computer's random access memory satisfies the
fixation requirement).
Most items that a fan might make available on its Web site will be
copyrightable, whether the work taken is in the form of text, graphics,
photographs, moving images or sounds, and will often implicate the
reproduction, distribution and display rights of the owner. In 1993, a federal
court held the display of photographs online fell within the purview of 17 U.
S.C. § 106 n16 and in 1997, another court ruled similarly in a case involving
unlicensed clip art displayed on a Web site. n17 On the other hand, schedules
(for movie showings, celebrity appearances, etc.) and other factual
information also commonly displayed on fan sites are unlikely to be covered by
copyright law. There is, however, a movement afoot to enact legislation
granting copyright-like protection to data. n18
n16 Playboy Enterprises Inc. v. Frena, 839 F.Supp. 1552 (M.D. Fla. 1993).
n18 In March 1996, the European Union adopted a directive requiring member
states to implement database protection by January 1, 1998. See generally,
Report of U.S. Copyright Office on Legal Protection for Databases available at
lcweb.loc.gov/copyright/more.html#rpt.
Although copyright law only protects work for a limited period of time, n19
this limitation is rarely an issue in cases of copying on the Internet. As a
general rule, denizens of the Internet, a young medium, tend to copy recently
-created or "youthful" work. The copyright in such work, if it ever existed,
is likely not to have lapsed. Additionally, the issue of copyright
infringement is often not contested. Surprisingly, fans will frequently
acknowledge that work created by others (scripts, written work, promotional
images, etc.) has been reproduced on the site, sometimes even seeming to admit
that the author might object to the reproduction. n20 Thus, assuming the
underlying work is original enough to be subject to copyright protection,
whether there has been infringement of a copyright is usually not at issue.
n19 17 USC § 302.
n20 For example, one Disney fan site filled with downloadable images of Disney
characters explains: This site is a tribute to the Disney characters that we
have grown up loving, and that are part of our lives. In my surfing the World
Wide Web, I have found it difficult to find a good collection of these Disney
Images. This is Probably (sic) due to Disney's strict image laws. . . . (
visited December 15, 1997) <http://disneyclipart.simplenet.com>. Another site
admits (rather incoherently) in its "Disclaimer" that "almost everything
featured on this page leads the copyright (sic) of the Walt Disney Company."
(visited October 17, 1997) <http://www.ari.es/Disneymania/homepagi.htm> (
emphasis in original). Although copyright infringement is normally a strict
liability offense, meaning the infringer's intent is irrelevant, such frank
admission that work was copied forecloses the potential defense against
imposition of damages for acts committed before receiving notice of the
ownership (the "innocent infringer" defense). 17 U.S.C. § 405(b).
Although most creative work posted on fan sites violates at least some of the
rights in the creator's bundle (most commonly the rights to control
reproduction, public display and creation of derivative work), it is possible
that the fan's use of the copyrighted material may be permitted under the "
fair use" exception to copyright infringement. n21 Whether a particular use
falls within this exception depends on the following four factors:
1. Whether the use serves the public interest. Arguably, this factor may weigh
in favor of some fan sites, especially those with an educational purpose. Fan
sites are ordinarily not operated to profit the proprietor. Nevertheless, it
is doubtful whether the public interest is served by sites such as one that
describes, in exacting scientific detail, the effects of incinerating a
Strawberry Pop Tart pastry. n22 Some sites, however, also have a commercial
purpose such as selling memorabilia, promoting the payment of dues or
generating advertising revenue. An Illinois court recently found that
activities of this nature were sufficient to cause this fair use factor to be
construed against a site proprietor (a trade association). n23
2. The nature of the copyrighted work. This factor is related to the first
factor. A copyrighted work that is of great public interest (for example, the
memoirs of a former United States President) or a work that involves little
creative effort (such as a listing of factual material) is more likely to be
subject to a fair use defense. This factor will weigh against most fan sites.
3. The amount of the work copied. The greater the amount of the copyrighted
work used, the less likely it is that the fair use exception is applicable.
Many fan sites run afoul of this factor because they will post any and all
work related to their chosen subject.
4. Whether allowing the copying will damage the potential market for the
copied work. Fair use may be found where the copier is profiting from an
activity that the owner of the work could not possibly take advantage of or if
the copier's use can be seen as having a beneficial effect on the market for
the copyright holder's work. n24 However, the exception will not apply if the
public would be less willing to pay for the original work, given the existence
of the copied material. Again, if the site conducts some commercial
activities, a court may presume an adverse effect on the potential market...
Please kindly read and share the article entitled
"Set Phasers on Stun: Handling Internet Fan Sites"
appearing at:
www.oppenheimer.com/news/content/fan_sites.htm
Prentice Hall Law & Business
The Computer Lawyer
Here are some excerpts:
BYLINE: by Erika S. Koster and Jim Shatz-Akin; Erika S. Koster is an associate
in the Intellectual Property Group at Oppenheimer, Wolff & Donnelly. Jim
Shatz-Akin is a Senior Account Executive at Shandwick USA, a public relations
company.
An intellectual property owner who knows that someone else has been using its
property, but takes no action, may find its right to proceed against the
infringer foreclosed forever. In other words, the infringer may be able to
assert defenses such as implied license, acquiescence or estoppel by laches n3
or may be able to argue that the property owner has waived its right to sue.
n4 In evaluating these arguments, courts will generally consider whether the
intellectual property owner knew of the infringing activity and whether the
infringer, relying on the property owner's tacit acceptance of the infringing
activities, made investments that increase the difficulty of ending the
infringement as time goes on.
Often, a fan's use of intellectual property is initially unobjectionable, even
though it is technically infringing. Later, the use may become more onerous,
creating a sticky trap for the property owner. The argument that an
intellectual property owner took no action initially because the infringer's
encroachment was progressive rather than sudden may be viewed with disfavor by
the courts. n5 Thus, the real danger is that a property owner may view
increased activity by a fan-site -- carping on the site, say, or the posting
of creative product before its public release -- as the final straw, forcing
the owner to take legal action. A court, however, may view the same activity
as a continuation of prior infringement that the owner found unobjectionable.
Accordingly, an intellectual property owner must be vigilant in protecting its
rights or it may be estopped from asserting a claim later...
Although the authors are not aware of any systemized method of policing the
Internet for instances of copyright infringement, services that will search
for Internet trademark infringement are proliferating. For an annual fee of $
900, a Mark Watch n10 agent will search the Internet for infringement of a
particular mark. Similar monitoring services are also provided by
NetSearchers. n11 Thompson & Thompson, the powerhouse trademark searching
firm, is in the process of developing a similar product.
The Traditional Legal Approach
An intellectual property owner is not powerless to respond legally to the
threats posed by fan-site infringement if it so chooses. Copyright, trademark,
and laws governing publicity rights all may be applicable to fan sites.
Copyright Infringement Laws
Modern copyright law derives from our British legal heritage, with roots
dating as far back as an ancient Irish king's pronouncement, "to every cow her
calf." It has been updated and refined for centuries and has met the demands
of today's "information age" remarkably well, considering this antique
lineage. Indeed, piracy of intellectual property isn't just a plague of modern
times. It was an issue as early as 1694, when the publishers of London applied
to Parliament for protection against illegally copied books and manuscripts.
The result of their lobbying, the celebrated Statute of Anne, is the
predecessor of our modern laws... n12
United States copyright law protects almost all original creative work, n14
and gives authors of that work the following exclusive "bundle of rights:"
1. reproduction;
2. modification (creation of "derivative works");
3. distribution of copies;
4. public performance; and
5. public display. n15
n14 17 USC § 102(a) and MAI System Corp. v. Peak Computer Inc., 991 F.2d 511,
517 (9th Cir. 1993), cert. dismissed, 510 U.S. 1033 (1994) (holding work
embodied temporarily in a computer's random access memory satisfies the
fixation requirement).
Most items that a fan might make available on its Web site will be
copyrightable, whether the work taken is in the form of text, graphics,
photographs, moving images or sounds, and will often implicate the
reproduction, distribution and display rights of the owner. In 1993, a federal
court held the display of photographs online fell within the purview of 17 U.
S.C. § 106 n16 and in 1997, another court ruled similarly in a case involving
unlicensed clip art displayed on a Web site. n17 On the other hand, schedules
(for movie showings, celebrity appearances, etc.) and other factual
information also commonly displayed on fan sites are unlikely to be covered by
copyright law. There is, however, a movement afoot to enact legislation
granting copyright-like protection to data. n18
n16 Playboy Enterprises Inc. v. Frena, 839 F.Supp. 1552 (M.D. Fla. 1993).
n18 In March 1996, the European Union adopted a directive requiring member
states to implement database protection by January 1, 1998. See generally,
Report of U.S. Copyright Office on Legal Protection for Databases available at
lcweb.loc.gov/copyright/more.html#rpt.
Although copyright law only protects work for a limited period of time, n19
this limitation is rarely an issue in cases of copying on the Internet. As a
general rule, denizens of the Internet, a young medium, tend to copy recently
-created or "youthful" work. The copyright in such work, if it ever existed,
is likely not to have lapsed. Additionally, the issue of copyright
infringement is often not contested. Surprisingly, fans will frequently
acknowledge that work created by others (scripts, written work, promotional
images, etc.) has been reproduced on the site, sometimes even seeming to admit
that the author might object to the reproduction. n20 Thus, assuming the
underlying work is original enough to be subject to copyright protection,
whether there has been infringement of a copyright is usually not at issue.
n19 17 USC § 302.
n20 For example, one Disney fan site filled with downloadable images of Disney
characters explains: This site is a tribute to the Disney characters that we
have grown up loving, and that are part of our lives. In my surfing the World
Wide Web, I have found it difficult to find a good collection of these Disney
Images. This is Probably (sic) due to Disney's strict image laws. . . . (
visited December 15, 1997) <http://disneyclipart.simplenet.com>. Another site
admits (rather incoherently) in its "Disclaimer" that "almost everything
featured on this page leads the copyright (sic) of the Walt Disney Company."
(visited October 17, 1997) <http://www.ari.es/Disneymania/homepagi.htm> (
emphasis in original). Although copyright infringement is normally a strict
liability offense, meaning the infringer's intent is irrelevant, such frank
admission that work was copied forecloses the potential defense against
imposition of damages for acts committed before receiving notice of the
ownership (the "innocent infringer" defense). 17 U.S.C. § 405(b).
Although most creative work posted on fan sites violates at least some of the
rights in the creator's bundle (most commonly the rights to control
reproduction, public display and creation of derivative work), it is possible
that the fan's use of the copyrighted material may be permitted under the "
fair use" exception to copyright infringement. n21 Whether a particular use
falls within this exception depends on the following four factors:
1. Whether the use serves the public interest. Arguably, this factor may weigh
in favor of some fan sites, especially those with an educational purpose. Fan
sites are ordinarily not operated to profit the proprietor. Nevertheless, it
is doubtful whether the public interest is served by sites such as one that
describes, in exacting scientific detail, the effects of incinerating a
Strawberry Pop Tart pastry. n22 Some sites, however, also have a commercial
purpose such as selling memorabilia, promoting the payment of dues or
generating advertising revenue. An Illinois court recently found that
activities of this nature were sufficient to cause this fair use factor to be
construed against a site proprietor (a trade association). n23
2. The nature of the copyrighted work. This factor is related to the first
factor. A copyrighted work that is of great public interest (for example, the
memoirs of a former United States President) or a work that involves little
creative effort (such as a listing of factual material) is more likely to be
subject to a fair use defense. This factor will weigh against most fan sites.
3. The amount of the work copied. The greater the amount of the copyrighted
work used, the less likely it is that the fair use exception is applicable.
Many fan sites run afoul of this factor because they will post any and all
work related to their chosen subject.
4. Whether allowing the copying will damage the potential market for the
copied work. Fair use may be found where the copier is profiting from an
activity that the owner of the work could not possibly take advantage of or if
the copier's use can be seen as having a beneficial effect on the market for
the copyright holder's work. n24 However, the exception will not apply if the
public would be less willing to pay for the original work, given the existence
of the copied material. Again, if the site conducts some commercial
activities, a court may presume an adverse effect on the potential market...