#16479 - Other Forms Of Ip - Intellectual Property (IP) Law

26. Other Forms of IP

(1) Misappropriation, (2) Right of Publicity, (3) Design Protection

MML 1162-77, 1199-1230; California Civil Code § 3344

(1) Misappropriation

• International News Service v Associated Press (Supreme Court 1918) P.1162

  • Facts: P (Associated Press) sued D (INS, a competing distributor of news to newspapers throughout the US) for pirating P’s news. D allegedly bribed employees of newspapers to supply P’s news to itself before publication, and selling them to D’s own clients on the West Coast DC granted preliminary injunction CA sustained injunction

  • Held: Affirmed. One who has gathered news or general information for the purpose of publication has an interest that is entitled to protection from interference.

    1. Property in News? Does it survive first instance of publication?

       • News is not copyrightable because the writer did not create the news element + facts/ historical facts are not protected + not registered upon publication (previously required for copyright protection) + D paraphrased

    2. Whether D’s behaviour constitutes unfair competition in trade?

       • Court looked to unfair competition in business for gathering and production of news look at rights of the parties as between themselves.

       • The news are the materials which both parties are attempting to make profit at the same time and in the same field must be regarded as quasi-property between the 2 parties, regardless of the right of either or of the public

       • News has an exchange value to one who can misappropriate it.

         • Labour, skill and money spent to gathered sold

         • Court want incentive to invest something of value to the public party who undertook such investment should be recognised by the law.

    • Here, acquiring and transmitting the news required elaborate organization and a great expense of money, skill, and effort.

      • As D sold P’s goods as its own D is guilty of unfair competition by misappropriation sustained preliminary injunction

  • Concurrence. (Holmes, J.): Misattribution theory rather than misappropriation

    • Within the limits recognized by the majority, D should be prohibited from publishing news obtained from P for hours after publication by P, unless D gives express credit to P it is a misrepresentation of attribution (look as if INS did this, but it was done by AP)

  • Dissent (Brandeis, J):

    • Court should decline to determine limitations that should be set upon any property right in news or of the circumstances under which news gathered by a private agency should be considered affected with a public interest (there is no traditional IP right in published news)

    • The fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property. Though news has a value, it doesn’t mean it is a property

    • Freedom is the baseline, has to be some really good reason to justify changing that baseline this rule extends protection beyond Patent and Copyright law (which balances rights) difficult to justify

    • Creation/ recognition by courts of a new private right may work serious injury to the general public, unless the boundaries of the right are definitely established and wisely guarded may need to prescribe limitations and rules for its enjoyment + provide admin machinery for enforcing the rules

• INS v AP is a Common law concept, only a cause of action under State Law/Court in a narrow form (not cause of action under Federal Law)

• Federal Preemption of State Law P.1173

  • Express

    • Federal Two-Part Preemption Test:

      • Law Title 17 s.301 Preemption with Respect to Other Laws

      • “whether state common law misappropriation doctrine survives the preemption of all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by s 106 in works of authorship that are fixed in a tangible medium of expression and come within the

        • (1) Subject of claim must be a work fixed in a tangible medium of expression and come within the subject matter or scope of copyright protection as described in s 102 and 103; and

        • (2) the right asserted under state law must be equivalent to the exclusive right contained in s 106

  • Conflict:

    • “stands as an obstacle to the accomplishments of the full purposes and objectives of Congress.” Hines v. Davidowitz, 312 U.S. 52, 67 (1941)

  • Field

(2) Right of Publicity P.1199

• A person’s identity attached to the good can be very valuable

• This right affords individuals a property-type interest in the use of their names, likeness, photograph, portrait, voice, and other personal characteristics in connection with the marketing of products and services

• Jurisdiction approach varies across States

• 16 States recognise common law rights of publicity, another 15 codified the right of publicity

• Some States, like California, recognise both statutory and common law sources of protection

• NY’s statutory privacy and publicity protection are in a single statute

• Broadest states: California and Indiana, Minnesota

• Narrow state: New York (a lot of Media, hates this)

• Rationale for protecting right of publicity

  • Stems from right of privacy (but usually celebrities)

  • Economic value attached to identity: celebrities (with valuable identity) are exploiting their images to make money, need control over so identity not diluted

  • Moral rights: people have a say to what they associate themselves with (but: cultural icon which people may want to associate themselves with, e.g. Barbie should we allow this? Tension with First Amendments)

1. Scope of right

2. Tension with 1^st amendment

3. Copyright Preemption

4. Character Protection

(i) Scope

• Common Law in Cali: “identity”

• California Civil Code

  1. Name, voice, signature, photograph, or likeliness

  2. Living persons s.3344.1(a)

  3. Deceased person 3344.1(b)

§ 3344.1 Unauthorized Commercial Use of Name, Voice, Signature, Photograph or Likeness

• (a)Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof. In addition, in any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages. In establishing such profits, the injured party or parties are required to present proof only of the gross revenue attributable to such use, and the person who violated this section is required to prove his or her deductible expenses. Punitive damages may also be awarded to the injured party or parties. The prevailing party in any action under this section shall also be entitled to attorney's fees and costs.

• (b)As used in this section, “photograph” means any photograph or photographic reproduction, still or moving, or any videotape or live television transmission, of any person, such that the person is readily identifiable…

• (c)[Presumption] Where a photograph or likeness of an employee of the person using the photograph or likeness appearing in the advertisement or other publication prepared by or in behalf of the user is only incidental, and not essential, to the purpose of the publication in which it appears, there shall arise a rebuttable presumption affecting the burden of producing evidence that the failure to obtain the consent of the employee was not a knowing use of the employee's photograph or likeness.

• (d)[Exceptions] For purposes of this section, a use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign, shall not constitute a use for which consent is required under subdivision (a).

• (e)The use of a name, voice, signature, photograph, or likeness in a commercial medium shall not constitute a use for which consent is required under subdivision (a) solely because the material containing such use is commercially sponsored or contains paid advertising. Rather it shall be a question of fact whether or not the use of the person's name, voice, signature, photograph, or likeness was so directly connected with the commercial sponsorship or with the paid advertising as to constitute a use for which consent is required under subdivision (a).

• (f)Nothing in this section shall apply to the owners or employees of any medium used for advertising, including, but not limited to, newspapers, magazines, radio and television networks and stations, cable television systems, billboards, and transit ads, by whom any advertisement or solicitation in violation of this section is published or disseminated, unless it is established that such owners or employees had knowledge of the unauthorized use of the person's name, voice, signature, photograph, or likeness as prohibited by this section.

• (g)The remedies provided for in this section are cumulative and shall be in addition to any others provided for by law.

• Midler v Ford Motor Co (9^th Cir. 1988)

  • Facts: D ad agency couldn’t get P to re-create her 1970 hit song for its TV...