October 11 / All Articles, Trademark

The Trademark Registrability Of The Harley-Davidson Roar: A Multimedia Analysis

If motorcyclists are a unique breed, Harley-Davidson motorcyclists must be considered a cult unto themselves. They have transformed the hobby of motorcycling into a lifestyle, replete with clubs, clothing, and a distinct “biker culture.” [1] The official Harley-Davidson web page describes the Harley history and allure:

 

In 1903, three Davidson brothers and their friend, Bill Harley, started a rumble heard ‘round the world. Their first motorcycle was the start of a unique combination of people and machines. Through the decades, Harley-Davidson motorcycles have had the ability to generate emotion. The excitement of racing, the peacefulness of a ride down a country lane, the pleasant symphony of a handful of bikes rumbling down Main Street, the exhilaration of switchbacks on a mountain road, but most of all, the camaraderie of the people who share the same love for Harley-Davidson motorcycles. The Brotherhood. The Sisterhood. The Family. It’s time to come home. [2]

The Harley-Davidson corporation’s ability to evangelize the Harley lifestyle– as on the company’s website–without alienating a customer-base which prides itself on being free-spirited and countercultural has been a testament to its marketing shrewdness. However, in a business expansion which probably irked the hardcore Harley faithful, the company now manufactures or licenses jewelry, watches, clothing, and a chain of “lifestyle” restaurants called the Harley-Davidson Cafe. [3]

 

In every commercial enterprise Harley-Davidson has undertaken, the company has ensured that the integrity of its trade name and various trademarks in the marketplace is vigilantly protected. Indeed, Harley has successfully litigated trademark infringement cases in federal courtrooms across the country. [4] Interestingly, much of this litigation has taken place within the past five to ten years. This development has a purely economic reason. Since the 1980’s, when the U.S. motorcycle market was dominated by Japanese manufacturers such as Honda, Yamaha and Suzuki, Harley-Davidson has enjoyed a remarkable resurgence of business–to the tune of approximately $1.5 billion in revenues. [5] This cash has enabled Harley to pursue trademark infringers with a renewed zeal.

 

Harley-Davidson’s most recent endeavor to secure trademark protection is not only its most unconventional, it is also arguably, the most unusual and provocative trademark application ever filed with the U.S. Patent and Trademark Office (PTO). On February 1, 1994, Harley filed a registration for a trademark, then already in use, with the following description: “THE MARK CONSISTS OF THE EXHAUST SOUND OF APPLICANT’S MOTORCYCLES, PRODUCED BY V-TWIN, COMMON CRANKPIN MOTORCYCLE ENGINES WHEN THE GOODS ARE IN USE.” [6] Put simply, Harley was attempting to trademark the sound of its motorcycles; which, of course, begs the question, can a manufacturer trademark the exhaust roar of its motor vehicle?

 

Michael B. Sapherstein*

 

April 24 / All Articles, Copyright

Itar-Tass Russian News Agency v. Russian Kurier: Federal District Court Applies The Berne Convention, United States And Russian Copyright Laws To Prevent Piracy In Mass Media

The United States is well known for its vigorous protection of intellectual property rights owned by American nationals as well as foreigners. Similarly, the United States expects other nations to observe intellectual property rights of American nationals. Not surprisingly, the United States makes determined effort to urge other countries, especially the countries with emerging economies, to join the international treaties in the area of intellectual property. Virtually as a result of the United States’ active policy regarding expansion of intellectual property rights protection in the international context, the two principal international documents in this area, the Berne Convention [1] and the Universal Copyright Convention, [2] now have all major trade nations as their signatories. Russia, after modernizing its intellectual property laws in the early 1990s, acceded to the Berne Convention in 1995.

 

The Berne Convention and the Universal Copyright Convention are the two principal international conventions obligating signatory countries “to protect, in as effective and uniform a manner as possible, the rights of authors in their literary and artistic works.” [3] These two treaties do not, however, constitute such a thing as “international copyright law” automatically protecting the copyright of each and every author in the world. Protection against unauthorized use in a particular country, whether a signatory to theses conventions or not, will depend on the national laws of that country. [4] The Berne Convention and the Universal Copyright Convention do, however, impose significant obligations on their members as to the legal protection afforded to foreign works.

 

The Berne Convention, the more authoritative of the two conventions, proclaims the two governing principles applicable in the international context: “minimum standards” and “national treatment.” Under the minimum standards principle, a member of the Berne Union is required to protect foreign works if a very limited, easy-to-satisfy set of conditions is met. [5] Protection of foreign works, in particular, cannot be conditioned on registration or any other formality. The Convention does not however prohibit formalities as a prerequisite for certain types of remedies, licenses, procedural benefits, exemptions, etc. Under U.S. copyright law, for example, the availability of statutory damages depends on whether the copyright owner has registered its copyright in the U.S. Copyright Office. Similarly, the owner of a registered copyright will be entitled to compensation of its attorneys’ fees in an infringement suit.

 

The application of the minimum standards principle together with “national treatment” [6] is demonstrated in Itar-Tass Russian News Agency v. Russian Kurier. [7] The Itar-Tass case is interesting not only for its application of the Berne Convention and U.S. copyright law to an unusual fact-pattern, but also because it extensively discusses and applies new Russian copyright law.

 

Maxim Voltchenko*

 

March 11 / All Articles, Other Intellectual Property

Svyazinvest: A Failed Attempt At Creating A Big Contender

Russia’s attempts to introduce large-scale competition into the Russian telephone industry got off to an encouraging start in late 1995 when a public offering of shares in Svyazinvest, the holding company representing the government’s 51% stake in 85 of Russia’s 87 regional operating companies, attracted the bids of several foreign investors. But a promising set of negotiations with the Italian state telephone company ended in an imbroglio at the year’s end, turning imminent success into sudden, dismal failure. Ever since, Svyazinvest has been widely considered an unattractive investment, and the failed negotiations prompted concerns that Russia was incapable of successfully bringing off a major international investment. Recently, the government has taken steps to consolidate the ownership of Svyazinvest with that of Rostelekom, the partially-privatized, primary long-distance and international service provider, leading many observers to believe that Russia will soon have a telecommunications monopoly the likes of Deutsche Telekom or France Telecom. Given Russia’s pro-competition communications policy, however, such an outcome seems unlikely.

 

Steven M. Chernoff*

February 2 / All Articles, Copyright

Judicial Response: A Safe Harbor In The “Fair Use” Doctrine

Despite the cries of some commentators that copyright law is dead (or at least that they wish it was), [1] copyright law is fully capable of responding to the challenges posed by the new technologies of the digital revolution. Copyright law initially developed in response to the invention of the printing press, [2] and has a long history of addressing changes in technology. [3] Where Congress has not explicitly made provisions for the new technology, the courts have stretched statutory interpretation and common law doctrines to do so. The courts’ express goal in fitting existing copyright law to new technologies has been to strike a balance between stimulating artistic creativity through the limited monopoly provided by copyright and providing “broad public availability of literature, music and the other arts.” [4]

 

To this end, the common law, [5] and eventually Congress, provided a safe harbor to those who use another’s work for the purposes of “criticism, comment, news reporting, teaching … scholarship, or research”. [6] When someone reproduces a copyrighted work for one of the enumerated purposes, the courts may find that there was no infringement under the fair use doctrine. Congress specified that the courts were to apply a four-factor test in determining whether any specific use is a fair use. [7] The four parts of the test are:

 

(1) the purpose and character of the use, including whether such use is of a commercial nature of is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work. [8]

The U.S. Supreme Court has said that the fair use doctrine should be applied when a rigid application of the copyright statute would “stifle the very creativity which that law is designed to foster.” [9]

 

The new technologies of the digital revolution, in particular multimedia development, seem to cry out for the application of the fair use doctrine. As of this time, however, none of the federal appellate courts have considered the application of fair use doctrine to the new technologies of the digital revolution. The Supreme Court considered the application of the fair use doctrine to a predecessor of digital technology, the Betamax Video Cassette Recorder (“VCR”). However, the focus of the Supreme Court’s opinion in Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417, 430 (1984) was the issue of contributory copyright infringement of television programs’ copyrights. [10] Although the Court clarified the fair use doctrine, emphasizing that it is an “equitable rule of reason” and that all four statutory factors must be balanced against one another, [11] fair use was a small part of the Court’s analysis. It was the central issue of a subsequent case, Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164 (1994), but this case involved musical parody rather than technology. [12] Notably, however, Acuff-Rose reversed the trend among the lower courts to over-emphasize the commercial nature of the use such that commercial uses were presumptively barred from employing the fair use doctrine as a defense. [13] This reversal clearly has important ramifications for multimedia technology, much of which is purely commercial in nature. [14]

 

Although neither Sony nor Acuff-Rose directly addressed the application of the fair use doctrine to digital technology, these cases laid important groundwork. The Circuit Courts have built upon this groundwork, and although they have not yet applied fair use to digital technology, either, at least one court has applied the doctrine to the analogous technology of photocopying. [15] In American Geophysical Union v. Texaco, Inc., 37 F.3d 881 (1994), the Second Circuit held that copying of eight articles from the Journal of Catalysis by one of Texaco’s researchers was not fair use. [16] The Texaco opinion is particularly instructive as it builds on the Acuff-Rose opinion and carefully balances the four factors of the fair use doctrine. [17]

 

In his article on multimedia and fair use, Goldberg argues persuasively that Texaco leads the way for multimedia developers to find a safe harbor in the fair use doctrine. [18] However, Goldberg defines multimedia too tightly to give comfort to many developers or lay users of the new digital technology. Following Michael D. Scott, [19] Goldberg defines multimedia as having five essential characteristics: it 1) involves more than one media, 2) is adaptable for a variety of uses, 3) is delivered through CD-ROM, computer networks, or HDTV, 4) is stored in digital form, and 5) is interactive. [20] This definition excludes multimedia presentations which abound in the corporate world and in daily personal use. For example, presentations made by competing law firms in “beauty-pageant” competitions for a corporation’s business might use graphic images and text (multiple media), might be delivered through digitally projecting a computer screen on which the presentation “played,” and might be stored in digital form (saved on the firm’s computer network). However, under Mr. Goldberg’s definition, this would not be a multimedia production because the presentation had a single use (education of the audience) [21] and was not interactive (the presentation advanced from screen to screen automatically). Similarly, a “Seinfeld” screen saver made by a lay consumer out of sound clips from the popular television program and images of the shows downloaded from the Seinfeld web-page would not be a multimedia presentation because it has a single use (entertainment) and is not interactive. Although a broader definition does risk the “slippery slope of over-inclusion” against which Mr. Goldberg warns, [22] defining multimedia too narrowly risks excluding broad applications of the new digital technologies from this general discussion.

 

However, such broad considerations might be best left to the legislature. The courts will address the problem of the new technologies, if at all, through discrete facts. Furthermore, the courts are careful to consider applications of the fair use doctrine on a “case-by-case” basis. [23] Therefore, it may be instructive to describe a hypothetical use (which would not qualify as multimedia under Mr. Goldberg’s definition) and then apply the fair use doctrine to this use.

 

Pamela R. O’Brien*

 

January 20 / All Articles, Computing

Systems-On-A-Chip: Intellectual Property And Licensing Issues

There is an accelerating trend in the electronics industry toward implementing an entire electronic system on a single chip through the integration of multiple, reusable, virtual components including both digital and analog circuitry. These systems perform specific functions (i.e. digital signal processor graphics controllers) and are sometimes interchangeably referred to as intellectual property (“ip cores embedded” or “ip building blocks”). This trend toward such semiconductor systems has important licensing implications.

 

Because of widely adopted industry standards, standardized physical components can be rapidly and easily mixed on a printed circuit board (“PCB”) to create an electronic system of multiple discrete integrated circuits. Each discrete device or component in the system can be purchased from separate vendors which own or have rights to the intellectual property in the device. The best technology, both digital and analog, can usually be implemented because discrete components can be easily purchased from different vendors.

 

Current deep-submicron semiconductor technology makes dense integrated circuits feasible enabling the design and production of application-specific integrated circuits (“ASICs”) that combine components not on a circuit board, but within a single chip. Systems-on-a-chip are built of standard virtual components, combined with custom logic. Standardization occurs at the sub-chip level and customization at the device level. The combination of virtual components enables high quality electronic systems to be built faster and at a lower cost than products containing discrete physical components. Standardization is still developing and the goal of the growing Virtual Socket Interface Alliance is to establish technical standards to enable the mix and match of virtual components.

 

Fred M. Greguras*

January 14 / All Articles, Computing

Not Quite Cryptus Horribilis: 1997’s Developments In The Encyrption Debate Have Pushed Sides Further Apart

In late 1997, at least six bills or amendments on the use of encryption were either introduced or circulated in draft form. Seven congressional committees considered encryption legislation. A clear trend is emerging from these developments. Law enforcement and national security interests favoring restrictions on encryption are quickly growing further apart from civil liberties groups and computer and telecommunications industry associations favoring liberalization of encryption rules. The rifts have grown wide enough to induce at least one interested group to predict that no satisfactory compromise could imminently be possible and to cease advocating the passage of encryption legislation in the short term. This article surveys the current landscape of the encryption debate, and analyzes the major legislative proposals. By identifying their major provisions and policy decisions rather than advocating a particular solution, this article attempts to be a resource for those involved in the ongoing encryption debate.

Adam White Scoville *

December 12 / All Articles, Copyright

A Design For The Copyright Of Fashion

Fashion apparel is a multi-billion dollar industry that has no national boundaries. Designers, [1] retailers and consumers follow the game of international fashion. Within the last decade, consumer knowledge of specific designers has increased dramatically. Magazines and newspapers now cover the fashion industry as part of their national news coverage, focusing on the ever-changing world of creative designer expressions. [2] The general public has a ready command of the names and faces of fashion models and the designers for which they model. Countless television shows and feature films [3] exploit the fashion industry world. Consumers can now recognize the distinct style of their favorite designers: Chanel, jersey-knit double-breasted suits in contrast colors with trademarked brass buttons, and quilted leather accessories; Gianni Versace, colorful handprinted silks with reproduced 17th and 18th century illustrations; Issey Miyake, sparse deconstructed gender neutral garments in natural fabrics or highly unnatural polymers, which redefine both form and movement. [4]

 

In 1977, former Register of Copyrights Barbara Ringer stated that the issue of design protection is “one of the most significant and pressing items of unfinished business” of copyright revision. [5] This issue remains unaddressed today, even though the need for revision is even more significant, because garment designs lie along the fringe area of creative expressions that exhibit the same qualities as protected matter. This paper suggests that the traditional reasoning which denied certain articles copyright protection is no longer reasonable, and that protection should now be extended to garment designs. Further, this paper proposes solutions to the problems of implementing copyright for fashion and what effect copyright will have on the garment industry and consumers.

 

Jennifer Mencken*

November 14 / All Articles, Other Intellectual Property

The 1997 GATS Agreement On Basic Telecommunications: A Triumph For Multilateralism, Or The Market?

On February 15, 1997, sixty-nine governments signed an agreement seeking to liberalize the world telecommunications market – a market, according to Renato Ruggiero, the Director-General of the World Trade Organization (WTO), worth “well over half a trillion dollars per year.” According to Ruggiero, these sixty-nine countries making commitments account for more than 90% of telecommunications revenue worldwide. In a statement issued February 17, 1997, Ruggerio congratulated the governments for their “determination and foresight in bringing this negotiation to a successful conclusion.” Perhaps in acknowledgment of the many delays in concluding the agreement, Ruggiero said that not all the decisions had been easy. “But in the end,” he concluded, “member governments have put their faith in the multilateral process of the WTO, and the WTO has delivered.” [1]

 

Is that, however, truly the case? Is the WTO Agreement on Basic Telecommunications an agreement which the ever sober Economist said “[i]n scope alone … is the most ambitious yet [of the WTO]” [2] really a triumph for the WTO, the General Agreement on Trade in Services and the multilateral process as a whole?

 

At first glance, the agreement does seem to be rather a triumph. The services covered under the agreement extend broadly to almost every sector of the telecommunications market: voice telephony, data transmission, telex, telegraph, facsimile, private leased circuit services (resale), fixed and mobile satellite systems and services, cellular telephony, mobile data services, paging, and personal communications services (PCS). The liberalization of the services in these market sectors will occur not only in cross-border supply of telecommunications, but also allows for services to be provided through the establishment of foreign firms, or commercial presence in foreign countries, including “the ability to own and operate independent telecom network infrastructure.” [3] In other words, when the agreement is fully implemented, AT&T or MCI could be selling long-distance in Sweden and building a new fibre-optic network in El Salvador, while Telia (Sweden’s formerly national telecommunications carrier) could be selling network service to U.S. businesses, while building a new digital cellular network in Bulgaria with a joint venture partner such as Ericsson.

 

The agreement not only offers nearly comprehensive telecommunications sector coverage, but it offers extensive national market coverage as well. The sixty-nine countries signing the agreement include all the world’s industrialized countries, as well as forty developing countries from all regions of the world. The developing countries include large nations such as India, small nations such as Belize, as well as economies in transition from the former Warsaw Pact such as the Czech Republic. [4]

 

On the surface, therefore, the agreement does seem to be a victory for the WTO, and a reaffirmation the principle of multilateralism enshrined in the GATT. When one begins to look a bit deeper, however, and compares the actual legal text of the General Agreement on Trade in Services (born in 1994 with the GATT Uruguay Round Agreement), with the various incentives for countries to avoid liberalization, and recent developments in the world telecommunications market, a different picture emerges. It is a picture of the triumph of technology and market forces rather than a triumph of multilateralism; a picture in which the agreement seems to have come about not due to, but rather in spite of the GATS itself. In his statement, perhaps without even realizing, Director-General Ruggiero acknowledged this triumph:

 

Perhaps most importantly of all from a longer-term perspective, this deal goes beyond trade and economics. It makes access to knowledge easier. It gives nations large and small, rich and poor, better opportunities to prepare for the challenges of the twenty-first century. Information and knowledge, after all, are the raw material of growth and development in our globalized world. [5]

In the final analysis, the real triumph of this agreement belongs not to the WTO, but to the force of the information economy itself.

 

Eric Senunas *

October 28 / All Articles, Copyright

Intelligent Agents And Copyright: Internet Technology Outpaces The Law … Again

Intelligent agents, sophisticated computer programs that act on behalf of their users and adjust themselves to users’ behaviors and preferences, may answer the prayers of people who are increasingly overwhelmed by the sheer volume of information available to them on the Internet. [2] Instead of spending frustrating hours “surfing the ‘Net” in search of elusive information, users may soon employ intelligent software agents that gather information efficiently and without need for further human assistance, thereby freeing the user to spend time on more productive, or more leisurely, activities. [3] Still in its infancy, agent software “launches” itself into a computer system, a local-area-network, or the Internet, in order to perform a task or set of tasks requested by the user, such as retrieving information on a particular company or purchasing plane tickets at the lowest price. [4] If sufficiently sophisticated, intelligent agents may be able to “negotiate” with software agents resident in other computer systems, to coordinate, for example, a teleconference between two executives which does not conflict with the schedule of either person. [5]

 

Although agent technology is neither ubiquitous nor yet fully realized, it is nearly certain to play a major role in the way consumers and businesspeople deal with information in the years to come. [6] Indeed, agent software may cause people to rethink their entire approach to receiving information, creating distinctions between mere data and true information. [7] Don Norman, a research fellow at Apple Computer Inc., goes even further, arguing that we do not want data or information – we want knowledge. [8] Norman and others believe that intelligent agents will perform the tedious, time-intensive tasks of data collection and information retrieval, ultimately providing the user with readily-applicable knowledge and perhaps rendering obsolete presently “state-of-the-art” search paradigms, such as the unwieldy World Wide Web. [9]

 

Not surprisingly, any technology that promises to change fundamentally the way information is gathered will raise the eyebrows of the artistically or intellectually creative individuals (and their lawyers) who possess legally granted ownership rights in expressions of this information. [10] To be specific, intelligent agents may retrieve for users, via the Internet, documents, images, video or sound files that are the copyrighted material of another, thus subjecting the user, and/or the user’s employer, to potential legal liability. [11] This seemingly inevitable clash between copyright holders and the users of the Internet, compounded by the injection of intelligent agent technology, presents several novel copyright issues.

 

The core issue, and the issue in which the federal government, industry, academia, and individual computer users are all keenly interested at present, is when, or perhaps whether, the viewing, retrieval, transmission, or transfer of copyrighted files, data or images by users of the Internet constitutes copyright infringement. [12] This issue, until definitively resolved by the courts or legislature, will almost surely lie at the crux of numerous Internet-related copyright lawsuits that will be filed in the months and years to come. [13] Therefore, this paper must, at the outset, explore in depth copyright protection for files on the Internet.

 

Only after addressing this fundamental issue can we delve into our more creative investigation; that is, whether the retrieval of copyrighted computer files via the Internet by an intelligent software agent can be considered infringement by its owner, operator or initiator. Several ancillary issues will also be explored. For example, would the user’s employer, whether a corporation or academic institution, also be exposed to liability for copyright violations, under theories of contributory or vicarious liability? Additionally, would the company who designed, programmed, or owns the copyright to the source and object code for the intelligent agent software face potential liability when its software agents infringe upon copyrights?

 

Michael B. Sapherstein*

April 15 / All Articles, Computing, Copyright

Misunderstanding RAM: Digital Embodiments and Copyright

In the opinion of the United States federal courts, digital software embodied in a computer’s Random Access Memory (RAM) is sufficiently fixed to constitute a “reproduction” under the Copyright Act. As a reproduction, the creation of the RAM embodiment, or the loading of software into RAM, is a potential copyright infringement. However, a close reading of the Act and its legislative history reveals that a digital work embodied in RAM should not be considered a reproduction of the work. Furthermore, including digital works embodied in RAM as reproductions is a poor fit in light of the policy behind the Copyright Act. This would mean that every time a person opens a computer program, he or she might be infringing a copyright. The courts’ widely criticized finding can be explained, at least in part, by early law makers’ confusion about computer memory and inability to fit RAM into previous constructs. Courts and law makers have built on each others’ flawed or non-existent analysis of RAM embodiments as reproductions since the 1976 Act was being drafted. These approaches ignored the purpose behind the fixation requirement when interpreting it. Since digital embodiments in RAM do little harm to a copyright holder, their categorization as reproductions is not consistent with the policy behind the fixation requirement for reproductions.

In response to the intuitive incorrectness of the current law and its contradiction with the policy behind copyright law, critics have made several arguments against finding an embodiment in RAM to be an infringement. Critics argue that RAM embodiments should be afforded one of the defenses of fair use, copyright misuse, or per section 117(1), that the copying is an essential step in the program’s utilization. This paper, however, focuses on another argument born of the same policy considerations: That a RAM embodiment is not sufficiently fixed to be a reproduction under the Copyright Act’s definitions.

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