“Such a character!” – pitfalls in using and protecting novel characters

We all know that guy or lady – the one who does impressions, or makes up a character and has us laughing all nite.  Well, it was no laughing matter to Hank Azaria when he was threatened with infringement of a character he created that went viral.  Azaria v. Bierko, C.D. Ca CV 12-9732 GAF (2/21/2014).

Azaria is an actor and voice performer (among many other voices, he voices several characters on the Simpsons).   Since about 1986 Azaria kept his guests in stitches at parties with a fictional baseball announcer voice.  In 1990 he was introduced by a mutual actor friend (Matthew Perry) to Craig Bierko – another comedian, who also did a fictional baseball announcer voice and character.  They interacted with their characters and often “riffed” on their characters.  Azaria wanted to use the voicing of Bierko’s announcer but Bierko refused.

Fast forward to 2010 (about 10 years later) when Azaria publishes a video on Funny or Die (note: has mature content) with a Baseball announcer character “Jim Brockmire”, and it goes viral.  Azaria is considering expanding the “character” into more short stories or videos, but Bierko threatens Azaria for violation of his Baseball announcer voice and character – and Azaria sues for a declaratory judgment of non infringement/non violation of rights.

Bierko’s “character” was not well defined – and it was only twice fixed in a tangible medium – both times only in audio and in both cases, only the voice provided character definition.  Azaria’s character was only fixed in a tangible medium once – however, the video has other announcers who “define” the character traits by describing Jim Brockmire, and Azaria’s portrayal of the fictional Jim Brockmire in the short video gave the character additional identifiable traits (type of clothing, style of announcing, over the top movie references etc) – many more attributes than those of Bierko’s 1 dimensional voice character.  Ultimately the court ruled in Azaria’s favor.  The court also held Bierko’s character was not protectable.

There is no legal question that fictional characters can be copyrighted, and hence, achieve protection from infringement.  However, the character must be rather well developed – either textually or via audio or video means.

This case demonstrates a number of issues we see regularly in our media practice – a confluence of ideas (which are generally not protectable absent a contract), and multiple people building one thought or idea on top of another until something actually creative and protectable is born.  When that happens – what are the rights of the parties?  Who owns the character that is born?

Likewise, we often encounter the reverse issue – a creative person sees a short video or skit, or reads some story (whether about a real or made up person) and then their ideas start to form and they develop a story or character from that interaction with existing content.  If they write that story or make the video, will they infringe the person/content they referenced or built upon?  Was it fair use?  Was the content even protectable?

The court avoided the 1st Amendment issue – but there is a also a strong question here whether the video – which is a classic parody of baseball announcers in general, would be actionable.  Recall the numerous funny skits of Will Ferrell as Harry Caray – all protectable as fair use paraodies.

We enjoyed the Azaria case because it describes a rather typical scenario . . . where the creative thought process takes a long time to develop and sources from interactions with third parties (sometimes at parties) who at least provided a germ of an idea.  If the facts had been changed only slightly (say that Azaria had never done a baseball announcer until he met Bierko) would the result have been different?

Determining whether a creative character is infringed, or can be protected, and to what extent, can be complex.  If the media presentation is a classic parody you can fall back on the 1st Amendment in many cases – but if the character is going to be used in a more mainstream manner, it is important to consider both possible infringement issues, as well as protection issues.  In terms of protection issues, as the Azaria case demonstrates, it is important that the fixation of the character (e.g. in audio, audio-visual, or textual mediums) describe a multidimensional and complete character.

For media clearance and protection issues please feel free to contact Mike Oliver or Kim Grimsley at Oliver & Grimsley.

Supporting the Ravens

Our office manager and Senior Paralegal Tina Neuman in attendance at the Ravens game on Thanksgiving, supporting our Ravens that beat the Steelers 22-20 (phew!)

We hope everyone had a wonderful Thanksgiving.

How to Mark and Provide Notice of “Patent Pending” or “Patented” Articles/Products

Article by:  Larry J. Guffey, Esq. and Pamela K. Riewerts, Esq.

A patent applicant who seeks the benefit of marking an article as “Patent Pending” must make a good faith effort to ensure that the articles are properly and consistently marked.  An effective way to do this is to mark the article as “Patent Pending”.  Use of this notice alerts the public that your article may soon be patent protected and that once a patent is issued, you have the right to initiate a patent infringement lawsuit against someone who is potentially infringing on that patent and wherein you seek monetary damages or other remedies for the copying, etc. of your patented article.

An applicant may only mark an article with “Patent Pending” once a patent application is filed with the Patent Office.  It is also pertinent to note that it is a criminal offense to mark or offer to sell an article as “Patent Pending,” when an application for the invention has not yet been filed.

In deciding how and where to mark articles as “Patent Pending”, a patent applicant should be mindful of the purpose of giving public notice and also use common sense.  For example, patent markings may be formed directly on the “Patent Pending” article by etching, molding, or printing, or if you are unable to place the marking on the article itself due to “the character of the article”, the notice may be provided on any packaging of the article, including the box and enclosed packaging papers, or marketing and promotional materials. In addition, there may be particular challenges that a patent applicant or patentee endures to properly mark an article.  For example, often times, labels may fall off of the articles in transit, etc.  The courts generally follow the “rule of reason” approach to hold that constructive notice is achieved when the patent applicant or patentee consistently marks substantially all of the articles.

Once a patent has been issued for the invention and you are a patentee rather than a patent applicant, the marking on the article should be changed from “Patent Pending” and instead be marked with the patent number and marked in the following manner: e.g., “U.S. Pat. No. X,XXX,XXX”, where your patent number is inserted therein.  Examples of the proper use of this patent number marking can be found on the products and packaging of many reputable manufacturers.

More recently, the America Invents Act (AIA) allows patented articles to be marked “virtually” by using the internet.  In order to comply with virtual marking requirements, the owner must mark the article itself, or the article packaging if it is not possible to mark the article, with the word “patent” or “pat.” along with a freely-accessible, internet address where one can find the patent numbers applicable to the patented article.  Virtual marking provides certain advantages including aesthetic appeal as well as being able to easily update and identify later issued patents relating to the article without having to remark the articles individually.  Instead, only a revision to the website page is needed.  Examples of virtual marking via internet webpages may be found here:  Examples of Virtual Marking

Please note that we recommend consulting with a patent attorney before moving forward with any marking or notice provisions.

Copyright 2013 Oliver & Grimsley, LLC

Disclaimer: The information provided in this article is not legal advice.  It cannot be such since legal advice must be tailored to the specific circumstances of each case, including the consideration of federal law and jurisdictional law that can vary greatly from state to state.  However, it is hoped that the information provided above will be helpful in familiarizing its readers with issues that may affect them.

Patent filing fee reduction strategies – micro entity status

Earlier this year, the United States Patent Office (USPTO) implemented a “Micro Entity” applicant status pursuant to the 2011 America Invents Act (AIA).  This rule allows qualifying applicants to receive a 75% fee reduction of certain fees—including fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and issued patents. See the USPTO Fee Schedule for a complete listing of fees.

An applicant may qualify for “Micro Entity Status” based on:  (1) experience and gross income; or (2) status as an Institution of Higher Education.

(1) Micro Entity Qualification Based on Experience and Gross Income:

An applicant must certify to the following four criteria:

  • Small Entity Status: The applicant qualifies as a small entity under 37 C.F.R 1.27 (generally, an entity that has less than 500 employees, see 13 CFR 121.802); and
  • No More than Four Previous Applications: The applicant or any joint inventor has not filed more than four previously filed US non-provisional patent applications (exceptions: applications filed in another country; international applications for which the National Stage fee 35 U.S.C. 41(a) was not paid – PCT applications which did not go past the International Stage; applications from a prior employment or assigned to the prior employer); and
  • Gross Income Limitation: The applicant or any listed inventor did not have a gross income for the previous year that was greater than $184,116.  The “Maximum Qualifying Gross Income” will change annually based upon median US household income.  Check the current USPTO Qualifying Gross Income eligibility fee; and
  • Grant of Rights (if any) must be to another Micro Entity: The applicant or any listed inventor has not promised, assigned, granted, or conveyed a license or other ownership interest (and is not obligated to do so) to a non-micro entity.

(2) Micro Entity Qualification for Institution of Higher Education Status:

An applicant must certify to one of the following criteria:

  • Employee of Institution: The applicant is an employee of an Institution of Higher Education from which the applicant obtains the majority of the applicant’s income(Institution of Higher Education as defined in Section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)) (not the same as a “not for profit” or school); or
  • Grant of Rights to Institution: The applicant has assigned, granted, or conveyed a license or other ownership interest (or is obligated to do so) directly to the Institution of Higher Education itself (not a research institute, foundation or technology transfer office). ** Under the current USPTO rules, an assignee can be listed as the named application, however, in order to qualify for reduced micro entity fees, an Institution of Higher Education (with current or promised ownership interest) should list the inventors as the named as applicants until discrepancies in the law are resolved.

Moving forward, applicants can secure (or lose) reduced fees at anytime throughout the life of a filed application or issued patent.  Keep in mind that each time fees are paid the applicant must certify that it has “Micro Entity” status.  Therefore, it’s best to conduct to review of these requirements prior to each fee filing.

For more information on this topic, please contact Pamela K. Riewerts, Esq. (U.S. Registered Patent Attorney) at pamela@olivergrimsley.com

California law changes the right of certain users to delete online posts, prohibits certain marketing starting in 2015

Beginning in 2015, any website or mobile service that is directed to minors under the age of 18 and allows them to post content, will have to delete that content on request of the minor user.  SB 568 provides in part that a site directed to minors must “(1) Permit a minor who is a registered user of the operator’s Internet Web site, online service, online application, or mobile application to remove or, if the operator prefers, to request and obtain removal of, content or information posted on the operator’s Internet Web site, online service, online application, or mobile application by the user. (2) Provide notice to a minor who is a registered user of the operator’s Internet Web site, online service, online application, or mobile application that the minor may remove or, if the operator prefers, request and obtain removal of, content or information posted on the operator’s Internet Web site, online service, online application, or mobile application by the registered user. (3) Provide clear instructions to a minor who is a registered user of the operator’s Internet Web site, online service, online application, or mobile application on how the user may remove or, if the operator prefers, request and obtain the removal of content or information posted on the operator’s Internet Web site, online service, online application, or mobile application. (4) Provide notice to a minor who is a registered user of the operator’s Internet Web site, online service, online application, or mobile application that the removal described under paragraph (1) does not ensure complete or comprehensive removal of the content or information posted on the operator’s Internet Web site, online service, online application, or mobile application by the registered user”

Some exemptions to this requirement apply (such as data that must be retained for law enforcement, data that is posted by a third party about the minor, and data that is anonymized).  It is not clear (to this writer) that the law would apply after a minor reaches his or her 18th birthday.  In other words – it is not clear a minor who does not make the request before their 18th birthday could make the deletion request after their 18th birthday.

That law also prevents a site “directed to minors” from presenting any content or advertising in the following enumerated categories:

(1) Alcoholic beverages
(2) Firearms or handguns
(3) Ammunition or reloaded ammunition
(4) Handgun safety certificates
(5) Aerosol container of paint that is capable of defacing property
(6) Etching cream that is capable of defacing property
(7) Any tobacco, cigarette, or cigarette papers, or blunt wraps, or any other preparation of tobacco, or any other instrument or paraphernalia that is designed for the smoking or ingestion of tobacco, products prepared from tobacco, or any controlled substance
(8) BB device
(9) Dangerous fireworks
(10) Tanning in an ultraviolet tanning device
(11) Dietary supplement products containing ephedrine group alkaloids
(12) Tickets or shares in a lottery game
(13) Salvia divinorum or Salvinorin A, or any substance or material containing Salvia divinorum or Salvinorin A
(14) Body branding
(15) Permanent tattoo
(16) Drug paraphernalia
(17) Electronic cigarette
(18) Obscene matter
(19) A “less lethal weapon”
A site is directed to minors if “[the] Internet Web site, online service, online application, or mobile application, or a portion thereof, [] is created for the purpose of reaching an audience that is predominately comprised of minors, and is not intended for a more general audience comprised of adults.”
This rule also reaches “advertising services” if the website/mobile operator advises the advertising service that the site is “directed to minors.”  Advertisers therefore will need to obtain certification from their customers that the site they are servicing is not directed to minors, or, they will need to add the above filters for such sites.
The California law appears to be the first law that has used the age of 18 in regulating website/platform content; prior to this, under the FTC COPPA act, the applicable age was “less than 13.”
Sites and services that are “directed to minors” will need to begin technologically addressing the issues raised by SB 568 in 2014, to be ready in 2015.
For more information, contact Mike Oliver

The Four Most Common Mistakes Made In Hiring a Website Developer

We meet a lot of clients that fail to obtain a written agreement, or blindly sign the form provided by the developer – and when a dispute arises, only too late realize the problems created by that lack of diligence.  This post addresses critical provisions in a website development agreement.

First, you want to make sure you will own the material and content created by the developer.  Thus, you want a provision in the agreement (which must be in writing) that recognizes that the developer’s work for you is considered a “work made for hire” and you want a copyright and intellectual property assignment as well.  These clauses ensure that, although the developer is not your employee, you are the owner of the website materials and intellectual property rights.  You do not want to find that your website designer created something unique for you only to discover the same unique layout on another website.  Many businesses are surprised to learn that in the absence of this statement in a written agreement, an independent contractor (in this case the website developer) typically is the owner of work they create, and the business at most would be a licensee of the material. This means you don’t own the work; rather, you only have permission to use it.

Second, you want to have a provision in the contract that states that the work on the website is the website developer’s original work and/or that the developer has the necessary permission/licenses from the owners to use the work on your site.  For instance, the website developer may place photographs on your website – you want the developer to represent that the developer has the right to use those photographs on your website (i.e. either the developer took the photos or it has the permission to use them).  If the developer uses photographs owned by a third party on your website without the third party’s permission, the third party could claim you are infringing on their copyright by displaying their work on your website without their permission, and would demand you cease use of the photos and may demand damages as well.  Thus, have your website developer represent the work is original or that he has permissions to use all work on your website.

Third, make sure to have an indemnification provision in your agreement.  This provision should provide that the developer will indemnify you in the event you incur damages or a loss due to a third party claim that you are infringing their intellectual property rights – where they claim the work on your website is actually their material.  For example, a business thinks the graphics on its site are original, however, it receives a cease and desist letter from a third party alleging that its use of the works on its website without the third party’s authorization is copyright infringement and demands damages.  Under Copyright Law, if the third party is the owner of a registered copyright in the work, the business as an unauthorized user could be subject to statutory damages ranging from $700 to $30,000 for unintentional infringement, and up to $150,000 for willful infringement. Thus, if material placed on your website by your developer is subject to a claim or legal action for infringement, you want your developer to indemnify you for these actions since you are relying on their knowledge, creativity and skill in developing and designing your website.

Finally, it is important that you make sure that the developer periodically delivers all source codes and native files to you, and that you control all passwords and access to critical website assets, such as the domain registration.  You want to make sure that such files and access rights cannot be withheld in the event of a dispute.  Thus, if a dispute arises, the developer’s sole remedy should be money damages.  You should not be prevented from transferring the work done (to the point of a dispute) to a new developer, so you can finish your site, and deal with the dispute separately.

For more information, please contact Kim Grimsley.