Viral Marketing As Implied License?
"Let's be bad guys!" -- Jane Cobb in Serenity
As first reported on
Whedonesque, and later picked up (and apart) by the likes of
Slashdot and
Instapundit, the legal team at Universal Studios Licensing have fired up the C&D machine and
taken aim at fan-created merchandise related to the late, lamented television show Firefly and the excellent movie it spawned, Serenity. A fairly routine story on first glance, but there's a bit more to it. Prior to Serenity's release, Universal carefully cultivated the existing Firefly fanbase and actively encouraged them to
spread the word about the movie, not only via websites and message boards, but through the creation of home-brewed Serenity merchandise. Indeed, the official Serenity web forum had a sub-forum (now offline) where fans were encouraged to offer their creations for sale. The fans' efforts were moderately successful in generating buzz, and while Serenity suffered a rather tepid theatrical release it's done quite well on
DVD.
Despite the fact that the film's underperformance likely killed any thoughts of a sequel, the fans have kept the flame burning, and the unlicensed merchandise flowing. Someone at Universal decided that had to stop, and out went the letters demanding, in some cases, retroactive licensing fees upwards of $9000. Returning fire in rather inventive fashion, the fans who feel that whatever success the movie saw rested in large part on the back of their viral efforts are now
billing Universal for their time, to the tune of $1.7 million thus far.
It's unlikely the people on the wrong end of the C&D will take the fight to court, of course. This is unfortunate, as I expect discovery could uncover some very interesting information regarding the creation and development of viral marketing campaigns. And from the defendants' perspective, were it revealed that Universal, either directly or through some marketing agency, did actively encourage Firefly fans to put Universal's IP to use, perhaps they might claim they had an implied license to make limited use of those properties to further the marketing campaign. If so, they might even argue it was a naked license, as it appears Universal let the fans run wild for the past few years -- from the months leading up to the film's release through today -- without exercising any control over the nature or quality of the Serenity-related products they were producing. This is an off-the-cuff analysis, of course, but it bears further examination given the increasing use of professionally organized viral marketing campaigns. Any comments that might expand on the topic would be welcome.
Legalities aside, I won't even bother delving into the obvious "don't bite the fans that feed you" discussion. That lesson has been taught many times over by now, though companies like Universal seem to be slow learners.
Whedonesque has
the latest.
Sold! The Right To Be A Litigant
WSJ Law Blog
reports from the Ocean Tomo IP auction.Regarding the the Jimi Hendrix lots:
It’s a high-risk purchase: Hendrix’s catalog is currently the subject of a bitter legal dispute between Jeffrey’s estate and the Hendrix family. Jeffrey, who died in a plane crash in 1973 just three years after Hendrix died, left his estate to fourteen U.K. charities. But Hendrix’s heirs claim they own the rights to Jimi’s music and yesterday, a spokesman for the family told Reuters, “Whoever bought this bought themselves the right to be a litigant.”
New Massachusetts Tax Regs. for Computer Products
On October 6, 2006, the Massachusetts Department of Revenue released
regulations that cover the Commonwealth's tax treatment of computer products, including software and hardware. The regulations contain hypothetical examples as a guide.
Ringtones are Phonorecords
Please note the date of the article linked to in the previous post below.
The Copyright Office has decided that compositions used for ringtones may be subject to a compulsory license. RIAA rejoices. Publishers call their lawyers.
Commentary from Prof. Patry. As Prof. Patry notes, the Register's rejection of
Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988) could have implications well beyond ringtones.
Compulsory Licenses for Ringtones
Responding to a RIAA request, the
Copyright Royalty Board is asking the
Copyright Office to issue an opinion on whether a publisher must license a composition for ringtones under a compulsory license.
IP in the Kitchen
Claiming copyright in
recipes is only the beginning.
This article in the November issue of Food & Wine discusses recent attempts by chefs to protect their intellectual property.
It’s an image of cheerful pink cotton candy printed on a tiny sheet of edible paper that tastes like cotton candy. The paper measures roughly two-by-2.75-by-zero inches[.] The truly historic feature of Cantu’s two-dimensional treat is the legal notice printed beneath the cotton-candy image:
Confidential Property of and © H. Cantu. Patent
Pending. No further use or disclosure is permitted
without prior approval of H. Cantu.[Cantu] has already filed 12 applications for patents, including one detailing the process for making cotton-candy paper, and says there are more to come.Cantu may talk to his lawyer more often than John Gotti, Jr., does. Together they have filed patent applications for a fork that adds flavor to food and a polymer box with walls that, once heated, retains enough energy to cook a fish filet.Cantu requires almost everyone who enters his kitchen to sign a four-page nondisclosure agreement. He says he runs background checks on some potential cooks to make sure they’ re culinary school graduates and not corporate spies, and he uses caller ID just in case that party of two looking for a table next Thursday night is phoning from Burger King headquarters. Cantu says his closed-door policy mainly applies to big business. He’s generally happy to talk techniques with fellow chefs. Sometimes, though, even they can’t be trusted.Moto, where Cantu is the chef, certainly plays up the novelty of his approach to IP protection.
Commentary from megnut. I can't believe that
Ferran Adria of
El Bulli fame is not mentioned in the Food & Wine article.
Ferran Adria article from February 2005 Food & Wine. There was also a great episode of Anthony Bourdain's
No Reservations which featured Adria.
Project Posner
Project Posner: The Judge Richard A. Posner search engine. Via Boing Boing.
Trademark Law Can Be A Grind
The maker of In-Sink-Erator garbage disposals
files complaint against NBC alleging that the depiction of the shredding of a character's hand on the pilot episode of the NBC series "Heroes" "implies an incorrect and dangerous design for a food waste disposer" and paints the device "in an unsavory light, irreparably tarnishing the product, Emerson's In-Sink-Erator trademarks, and the associated goodwill."
Matt adds: Emerson says the scene "suggests that Emerson's In-Sink-Erator brand food waste disposers will cause debilitating and severe injuries, including the loss of fingers, in the event consumers were to accidentally insert their hand into one." Quite frankly, I'd be shocked if anyone who saw that scene (as I did) didn't think the girl's injuries were the expected result of her actions. Is Emerson officially taking the position that jamming your hand into a running disposer won't cause severe injuries? Anyone care to test that?
The Motley Fool takes a stab at why NBC's use of the IN-SINK-ERATOR mark makes a difference:
In contrast with peer broadcasters like CBS or ABC, both of which can generally be described as "entertainment" businesses, the GE conglomerate owns numerous non-entertainment businesses. Crudely put, these other businesses "make stuff." That stuff competes with other companies' stuff, and so when GE depicts its competitors' stuff in a negative light, it leaves itself wide open to lawsuits for unfair competition.Although interesting, the Fool article certainly is not a legal analysis. The complaint may have been filed regardless of the network as part of the policing procedures of the plaintiff. The Fool mentions trademark fair use but does not even give the briefest explanation of what fair use entails. The seems to be a common problem, writers mentioning "fair use" and leaving readers to invent their own definitions. In this case it is not crazy to think that there was sponsorship or affiliation between plaintiff and defendant.
Here is a fairly concise summary of trademark fair use.
7th Cir. Gray Market Goods/Material Difference Case
IP Legal Lounge reports on a recent Seventh Circuit decision regarding the "material difference" test for gray market goods. Even where marks are affixed with authorization, if the goods are produced for a foreign market and reimported into the US by a third-party, the importation may violate the Lanham act when the domestic and foreign products are materially different.
Previously.
Grosso Goes Bust
In
this post, we noted that while the 9th Circuit's decision in
Grosso would likely lead to more implied contract claims brought by screenwriters against movie studios, the success rate of those claims was still in doubt. And as of now, the screenwriters are batting zero. Grosso himself lost in state court, and barring some appellate heroics, Miramax is off the hook for using his script to develop
Rounders. Hollywood Reporter Esquire
examines what this might mean for the future of the implied contract claim, with emphasis on the question of just who exactly is left to sue?
