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Brand Name Bullies

on Mon, 08/30/2010 - 17:36

Brand Name Bullies is a lively and instructive book by David Bollier that documents the enclosure of the cultural commons by powerful economic interests.  Included here is the introduction to the book that delineates the  important arguments that need to be heeded. Following this is an excerpt from the book that effectively uses outrageous examples to drive home the book’s main thesis.




The Modern Obsession with Owning culture

What Would Groucho Do?

Copyright and the Consent of the Governed


Locking Up Music

Appropriation and Visual Art

Imitation is the Mother of Invention

Trademarked Characters and Images

The Corporate Privatization of Words

Stealing the Public Domain

Owning Facts, Silence and Emoticons


Introduction to the Book

Mark Twain once sent a Connecticut Yankee back in time to King Arthur's Court. What better way to comment on his own times than use the past as an amusing foil?

I have my own time-travel fantasies. What would happen if contemporary copyright and trademark laws were spirited back in history and applied to the output of, say, William Shakespeare, Woody Guthrie and Albert Einstein? How would their creativity be affected? How might cultural history be changed?

For starters, the heirs of the first-century Roman poet Ovid would surely file the case of Estate of Ovid v. William Shakespeare. The complaint: that Shakespeare, in his tremendously popular drama, Romeo and Juliet, made an unauthorized use of Ovid's Metamorphoses, which is also based on two lovers from warring families. If such theft is not prosecuted, Ovid's descendants warn, there will be no incentive for new investment in future creative works. The consequences for Italy's trade deficit could be disastrous.

Shakespeare's first response, of course, is to kill all the lawyers. He then points out that Ovid was himself a thief. He filched the folk tale of Pyramus and Thisbe and transformed it into Metamorphoses. In classic Freudian style, the very title discloses the appropriation!

In any case, if Ovid's heirs are going to sue (Shakespeare continues), surely they should also name Robert Wise and Jerome Robbins, the creators of West Side Story, as co-defendants. For that matter, they should also seek damages from the producers of The Fantastiks, the immensely lucrative Broadway play, and Maxwell Anderson, for his 1935 drama Winterset, which also featured star- crossed lovers from warring families. Let's not forget Franco Zeffirelli's 1968 film version of Romeo and Juliet,, Baz Lehrmann's 1996 version, and the thirty- two others listed on the Internet Movie Database.

But plotlines aren't protected under copyright law, harrumphs an offstage copyright attorney. Unfortunately, Shakespeare, like most of us, can't be expected to recognize a spurious copyright claim, and he can't afford expensive litigation to vindicate his creative rights, especially when the adversary has deep pockets. (Ovid's family made a mint off of the love poems.) So long as a lawsuit hovers over Romeo and Juliet, no theater company will touch it. Performances drop off and the play slips into obscurity.

So goes my fantasy. The point, really, is that creativity and culture resemble an ongoing conversation. We necessarily draw upon the past and play off each other. We constantly borrow and transform prior works.

An acute tension arises from this fact. The components and meanings of creative works emerge over time from our collective interactions. Works are inherently social. Yet ownership of a particular work tends to be private.

Historically, this tension has been resolved through copyright law. Individual creators are granted limited monopolies on their works, through copyright protection, while the public is guaranteed certain rights of access and use, primarily through a legal doctrine known as "fair use." The system has worked well. In fact, it has been an important tool for encouraging people to create new works and disseminate them broadly.

What is happening today, however - and the reason for this book - is a radical expansion of the scope of copyright and trademark law. The owners of intellectual property, especially large entertainment industries,
are asserting sweeping new rights of ownership and control for themselves at the expense of the public and future creators. It is as if Ovid really could shut down Shakespeare. This is a significant departure from the time-honored principles of copyright law, which have struck a careful balance between private control and public access.

It is not easy to talk about this disturbing trend. The details are so abstract and embedded in the clotted language of the law. The cases tend to be convoluted and embroiled in arcane inter-industry squabbles. Who can begin to keep track?

Stories, I have learned, can help clarify what's going on. For example, it would be interesting to contemplate the fate of Woodie Guthrie's folk songs if a predatory media company - call it Globatron Content - were to acquire his copyrights and aggressively leverage their economic value.

Imagine that Globatron acquires a dozen media subsidiaries in single merger deal, and then learns that it unwittingly acquired the copyright to Guthrie's union organizing song, Union Maid. The famous chorus to the song - "Oh, you can't scare me, I'm sticking to the union, I'm sticking to the union till the day I die" - has become so much a part of the cultural landscape, a government arts official once told Woody Guthrie, that most Americans have no idea that he wrote it. A pleased Guthrie replied, "If that were true, it would be the greatest honor of my life."

But Globatron, the new legal "author" of Guthrie's song, has no personal attachments to the song. It is only concerned that its valuable intellectual property is being ripped off. Surely the singing of the song at union rallies constitutes a "public performance," which by law requires authorization and payment. Popular homage is one thing; a failure to pay is another. The company sues the AFL-CIO for abetting copyright infringement. Splutters one Globatron attorney, "And don't get me started about This Land is Your Land."

To take a cue from Guthrie, one might well ask about the brave new world being crafted by copyright and trademark law: Is this culture your culture? Is this culture my culture?

We are accustomed to thinking that knowledge and creativity are something that we can freely use and share with each other. That is what a democratic society is all about. But increasingly, copyright and trademark law is extending its reach into the most intimate corners of our daily lives and consciousness. We are being told that culture is a creature of the market, not a democratic birthright. It is privately owned and controlled, and our role is to be obedient consumers. Only prescribed forms of interactivity are permitted. Our role, essentially, is to be paying visitors at a cultural estate owned by major "content providers."

What this means is that the creativity and knowledge exchange that we participate in outside of the marketplace - online forums, collaborative archives, music remixes, open source software development - are regarded by the law as second-rate forms of culture, if not illegal in some instances. The "authorship" of commercial vendors is given full-armor legal protection, but the creative interests of ordinary citizens and artists are seen as unimportant. Posting online newspaper articles to a website has been declared illegal by one federal court. Scholars who share digital journal articles without authorization may be breaking the law. Using trademarks in artistic works may be considered an unlawful "dilution" or "tarnishment" of the mark.

Isaac Newton famously declared, "If I see farther than others, it is because I stand on the shoulders of giants." Newton didn't reckon on proprietary restrictions that might restrict who can stand on whose shoulders, and for how long, before putting another quarter in the meter.

Which led me to wonder what might have happened if Albert Einstein's famous theory of relativity had actually been inspired by a company's proprietary knowledge. Recall that, as a young man, Einstein worked as a patent examiner in Geneva, Switzerland, where he reviewed dozens of patent applications. One patent applicant - let's call it Railway Clocks - sought to synchronize the clocks of railway lines in cities throughout central Europe so that trains could depart and arrive on time. According to one historian, this patent application may have greatly influenced Einstein's thinking about the concepts of time and space.

So imagine this (after first recognizing that patent law is governed by different principles than copyright law): After Einstein publishes his landmark paper on special relativity, Railway Clocks fumes that its intellectual property has been stolen, and by a government insider at that. In the ensuing litigation, Railway asserts that Einstein's valuable derivative knowledge could only have been developed through the unauthorized use of Railway's proprietary knowledge. If self-appointed newcomers like Einstein are allowed to appropriate valuable prior knowledge and use it as they see fit - for free! - who will invest in future research? One might also ask, will future Einsteins have any free knowledge available to them?

The Modern Obsession with Owning Culture

The fantasies I have imagined here may seem faintly ridiculous. But in truth, contemporary copyright and trademark law are replete with tales of the bizarre and hilarious. That's what I discovered as I ventured into the forbidding precincts of intellectual property law. If Robert Ripley were still chasing down the lurid stories that once graced the Sunday comics section - a rutabaga that looks like Abraham Lincoln, a sultan with 500 wives - Ripley would find many ripe oddities for his franchise in copyright and trademark law. "Believe It or Not!"

For example, if you dare to evoke some aspect of a celebrity - by creating a portable toilet called "Here's Johnny!" or making an advertisement featuring a female robot that turns letter tiles on a game show - you may be violating that celebrity's "publicity rights."

If you're an artist who makes mobiles, the estate for Alexander Calder, the famous maker of monumental mobiles, may prevent you from selling your works in museum gift shops.

If you want to take a photograph of your friends while sitting in a Starbucks, the manager may intervene to stop your Kodak moment (oops, a trademark that doesn't belong to me) lest you replicate the shop's tastefully designed "trade dress" interior.

If you want to paint your own renditions of Mickey and Goofy on your day care center walls, lawyers for the Disney Company may send you an intimidating "cease- and-desist" letter.

While the stories of this book may shock and entertain, there is a serious purpose afoot. These tales speak to a radical reconfiguration of political and cultural power in the digital age. They are significant because they are harbingers of our future. As more aspects of American life migrate to the Internet and digital media, the obscure, clunky machinery of copyright and trademark law is gaining vast new powers to re-engineer the flows of information, art and culture in our society.

What was once considered part of the cultural commons, available for all to use, is increasingly being privatized and locked up. The scope of this plunder is remarkable. It includes all manner of text, images, music, fictional characters, celebrity personas, accounts of public events, and even common words. The ownership of culture now extends to letters of the alphabet, distinctive sounds and colors, and even scents. Increasingly, the lawyers tell us: "You may gaze upon and buy the products of American culture. But don't be so naive as to think that you can actually use them for your own purposes. We own them."

Congress and the courts have actively facilitated this rather dramatic privatization of culture and political rights with little public scrutiny or citizen participation. The resulting empowerment of several major industries - film, music and publishing in particular - is matched by a corresponding disenfranchisement of ordinary citizens, artists and posterity. Try to use an existing works in a new creation - even in a fleeting, partial way, even for personal and non- commercial purposes - and you enter a shadowy cultural underground, a zone of the illegal imagination.

New creativity is stymied. Free expression is stifled. A boisterous open culture is turned into a regimented marketplace.


What Would Groucho Do?

Faced with the growing absurdities of copyright and trademark law, sometimes the only appropriate response is WWGS - What Would Groucho Say? (The acronym WWJD - "What Would Jesus Do" - is already taken as a private trademark. But perhaps we can risk using the derivative WWGS.) I suggest WWGS in honor of Groucho's famous correspondence with studio mogul Jack Warner, described in Chapter 6. Warner tried to scuttle the title of the Marx Brothers' film, A Night in Casablanca lest it be confused with Warner Brothers' new film, Casablanca. Groucho pelted studio lawyers with a long series of zany jibes and digressions. Eventually they gave up and let the title A Night in Casablanca proceed.

Where is Groucho now that we really need him? One can only imagine the deadpan riposte that he would deliver upon hearing that Wal-Mart attorneys scuttled a website called started by a disgruntled customer. Or that Mattel spent millions of dollars on a legal campaign to prevent a photographer from posting photos on his Web site of Barbie dolls in unflattering sexual poses. Or that ASCAP, a performance licensing body, actually told hundreds of summer camps that they may not sing copyrighted songs around the campfire without paying a licensing fee.

Comics are actually discovering the rich vein of humor to be found in intellectual property. In fact, an entire chapter is devoted to some devastating parodies and practical jokes involving brand-name bullies. For the hapless victims of copyright and trademark law, of course, things are not so funny. Fear and befuddlement are the operative emotions. Ordinary American who are accused of copyright or trademark transgressions have a lot in common with the Jimmy Stewart characters in Hitchcock films; they are the innocent Everyman suddenly engulfed by a mysterious web of unseen, complicated forces.

What could be more innocent than teenagers creating their own fan Web sites to celebrate and discuss Harry Potter, the boy wizard of J.K. Rowling's books? But when Warner Brothers (still jealous of its film titles) came out with the first Harry Potter film, the studio could not abide the fact that teenagers might actually use the name "Harry Potter" in their domain names. Studio lawyers accordingly threatened the fans with legal action for trademark violations unless they shut down their sites. Only later, after a round of bad publicity and a lesson in "viral marketing," did the studio invite readers to join the AOL Hometown service and create their own Harry Potter Web sites.

The McDonald's Corporation has long been legendary for its proprietary zeal. It constantly prowls the world's restaurants and corner carryouts for unauthorized uses of the "Mc" prefix. In San Francisco, it was McSushi, a Japanese carry-out. In Scotland, it was McMuffin, a sandwich shop. In California, it was McDharma, a fast-food restaurant for vegetarians. So it goes that a San Diego- based multinational claims a venerable Scottish prefix as its private corporate asset.


Copyright and the Consent of the Governed

At first blush, it's hard to know if these stories are merely stupid and amusing, or outrageous and alarming. In isolation, each story may seem trivial, the paranoid overreaction of an over- lawyered corporation. And let's be honest: Is the Republic really threatened if a teenager can't name a domain name after Harry Potter or a restauranteur cannot name his restaurant McSushi?

The real question, however, is whether free speech and culture belong to everyone or chiefly to commercial interests. Seen in its broader sweep, the emerging landscape of copyright and trademark law has some disturbing implications for a robust, open world of creativity and knowledge. The prohibitions do not just affect single words or domain names, but sweeping fields of creative endeavor, political speech and cultural commentary. As we will see in the chapters below, the creeping tendrils of legal control seem to reach everywhere.

I still find it preposterous that Dr. Martin Luther King, Jr.'s "I Have a Dream" speech is legally private property. Even though Dr. King's speech has been heard by millions as a news event and has become an historic treasure showcased every year in a federal holiday, King's estate legally owns it and refuses to let it be reproduced without authorization.

As copyright and trademark holders extend their powers in unprecedented ways, it is important for us to learn these little-known stories. They can help demystify the contrived complexities of the law and help us re- imagine a more benign order. The What-Would- Groucho-Say strategy can help show how copyright and trademark law is reaching outrageous new extremes. A largely unresponsive body of law can be forced to the bar of public judgment and common sense and, as warranted, held up to ridicule.

Because intellectual property law has traditionally been a preserve of industry attorneys, not the general public, certain basic questions are typically ignored, such as: How are ordinary people affected when copyright and trademark law are taken to unprecedented extremes? How is a democratic society sapped of its vitality by the over-propertization of its culture? How are new creativity, scientific inquiry, competition and innovation being harmed by the new expansions of copyright and trademark protection?

These questions lie at the heart of this book.

By depicting some of the excesses and abuses on the frontlines of copyright law, I hope to make us more confident in asserting that copyright and trademark law must be the servant of the people. Our needs and values are paramount and must be protected. Thomas Jefferson once offered advice for occasions such as this: "When a long train of abuses and usurpations pursuing invariably the same object, evinces a
design to reduce the people under absolute despotism, it is their right, it is their duty to throw off such chains and to provide new guards for their future security."

We stand at such a crossroads today. We have reached a point at which copyright and trademark law is surging out of control.

The point is not that copyright and trademark law need to be overthrown. It is that their original goals need to be restored. Individual creators need to be empowered more than ever. The volume and free flows
of information and creativity need to be protected. The public's rights of access and use must be honored. We must strike a new balance of private and public interests that takes account of the special dynamics of the Internet and digital technology. None of this will occur, however, unless we recognize the problem. That is what the stories can help us do.

Bullies succeed by intimidation. When they do not encounter resistance, they push as hard and as far as they can. In copyright and trademark law, large corporations, famous personalities and well- heeled law firms have prevailed for too long precisely because the public does not have much of a role in writing the law, does not know the rights it may have, and does not have the legal resources to fight back. As a result, brand- name bullies have been allowed to inflict incalculable harm on public life, cultural freedom and personal choice.

Charlatans should not be allowed to misuse a trademark in order to commit marketplace fraud or confuse consumers. But it beggars the imagination why Ralph Lauren should have a monopoly on the word "polo" (at the expense of an equestrian magazine), or why Microsoft should be allowed to prevent a vendor of a Linux-based computer from naming itself "Lindows" (Microsoft lost its case at the district court level, but has appealed). Why should the owners of the Godzilla trademark be allowed to root out any uses of the letters "zilla" in the cultural landscape?

I did not make these stories up. They are immortalized in federal case law, documented in The New York Times, buried away in the trade press, retrieved from law review articles, culled from the cultural underground, and passed along by friends. It is an improbable fact that contemporary copyright and trademark law could provoke so much dark laughter. But just remember, it ain't no joke.....Believe It or Not!




Locking Up Music

ASCAP Stops the Girl Scouts from Singing around the Campfire

You may think that it's O.K. for little campers to sing "Happy Birthday" and "Row, Row, Row" around the campfire for free, without asking for permission. But in fact, you may have to pay a license to a licensing society known as ASCAP. ASCAP, the American Society of Composers, Authors and Publishers, is a performance rights body that licenses copyrighted works for non-dramatic public performances. It then distributes royalties collected from those performances and channels them to the appropriate composers, authors and publishers. The system is intended as a way to assure that creators receive monies for the public performances of their works.....even some campfire songs.

In 1996, ASCAP decided that that since hotels, restaurants, funeral homes and resorts pay for the right to "perform" recorded music, and since many summer camps resemble resorts, why shouldn't they pay too? Under copyright law, a public performance occurs "where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered." Like a summer camp.

After reportedly opening its negotiations with the American Camping Association with an offer of $1,200 per season per camp, ASCAP eventually settled on an average annual fee of $257. But once ASCAP's plan went public, and people learned that the Girl Scouts were among the 288 camps being dunned, the group beat a hasty and embarrassed retreat.


Copyright Colonizes the Subconscious Mind

The subconscious copying doctrine, invented by Judge Learned Hand in 1924, lay dormant for nearly fifty years, partly because it was tethered to several stringent factual premises. A defendant had to have been exposed to the plaintiff's song. The two works had to be "substantially similar." And the period of time between an artist's exposure to the first work and the creation of the second (or in the law's formulation, "the degree of temporal remoteness") had to be short.

But then a federal court ruled that former Beatle George Harrison's 1969 song, "My Sweet Lord," unlawfully copied the Ronald Mack song made famous in 1963 by The Chiffons, "He's So Fine." The case relaxed the legal criteria needed to find that "subconscious copying" had occurred. At trial, Harrison admitted that "He's So Fine" and "My Sweet Lord" did sound "strikingly similar." Even though Harrison had composed his song six years after first hearing the Chiffons' song, the appeals court held that copyright infringement had occurred.


How Illegal Rap Sampling Revived the Music Business

Early hip-hop artists considered every sound in the culture as fair game for their creativity. The first hip-hop samplers developed a technique of "scratching," the manual rotation of a vinyl record back and forth to produce unique sounds from individual grooves. The essence of the music was a real-time performance pastiche using someone's else's recorded music.

Scratching and sampling thus shifted the locus of "originality" from the composer to the rapper and DJ, whose creativity consisted of the selection and arrangement of samples. Put another way, sampling put composers, rappers, DJs and record producers on a more or less equal footing - as appropriators of other people's music. In rap music, originality was more about an artist's live performance and improvisation, not the notes as written on sheet music.

With the proliferation of sound synthesizers and later, inexpensive digital audio and computer technologies, the musical palette for hip-hop sampling exploded. Every sound in the culture became a potential sample. Musical creativity became democratized. It became possible for anyone to draw upon hundreds of snippets of sound, modify them in novel ways, and assemble a sonic collage that might just attract an audience. In these dynamics, rap might be considered a musical analogue to open-source software: a creative milieu that is open to anyone and receptive to merit no matter its source.

What began as an underground ghetto art form in the 1970s had by the early 1990s become a $1 billion market. Naturally, as certain songs became hits, questions about who "owned" a given snippet of music became the subject of legal wrangling. After all, a hit rap song was now worth some serious money.



Appropriation and Visual Art


Illegal Art to Express Illicit Ideas

Illegal Art was the brainchild of Brewster Kahle, director of the Internet Archive, and Carrie McLaren, editor of Stay Free! magazine. Their idea was to use "forbidden" art works to demonstrate just how far intellectual property law reaches into people's everyday lives. It is not permissible, for example, to show Disney characters in naughty sexual situations, or to depict Binky the Rabbit (from Matt Groening's Life in Hell comic strip) punching the Trix rabbit.

The anti-corporate point of view was rather hard to miss. Kieron Dwyer produced a parody of the Starbucks Coffee green mermaid logo, renamed as "Consumer Whore." Tom Forsythe's "Food Chain Barbie" photographs featured nude Barbie dolls entangled perilously in kitchen appliances and immersed in food. Diana Thorneycroft offered up the Sesame Street character Bert hanging from a noose and Barney Rubble of The Flintstones with a bloody gash in his head. Heidi Cody made a point about the corporate influence of culture by creating a sampler, "American Alphabet," consisting of letters taken from corporate logos (such as the "P" from a Pez candy wrapper).


The Untold Legal Story Behind Andy Warhol's Art

For his Myths portfolio, Warhol very much wanted to paint Aunt Jemima, the seemingly fictional character associated with Quaker Oats pancake mix, syrup and oatmeal. Aunt Jemima, of course, was a trademarked version of the racist stereotype - the stout, jovial black kitchen servant whose life appeared to revolve around serving the family of her white master or employer. Quaker had, in fact, based its image on American history. "Aunt Jemima" was the name given to the female counterpart of "Uncle Tom" on Southern plantations.

"We wrote Quaker's for permission to use this image in our series," said Ronald Feldman, Warhol's friend and gallery owner. "Quaker's sent us back a threatening letter that said if we dared to do that, they would certainly take legal action. They definitely had trademarked their packaging, but they probably didn't want anyone to call attention to the face that their product had been subliminally changed in the marketplace over the years. Aunt Jemina was no longer a big black-faced lady; slowly over a period of time she had become a thinner, reddish faced person - sorta black, but sorta reddish. She was younger and had a more 'with it' bandana on her head."

Rather than risk litigation with Quaker's, Warhol and Feldman came up with an imaginative solution. Feldman had seen a charismatic black singer, Sylvia Williams, at the Village Gate in Manhattan, and thought she would make a terrific model for the image. With some trepidation, Feldman called her up, explained the legal complications with Quaker Oats, and asked if Williams would pose for Warhol. As Feldman recalled it, "She became fantastically brilliant and energized, and said, 'Are you kidding? You put me on the stand [in a court trial]! They cannot own my heritage!'" Williams was incensed that any company would claim to "own" Aunt Jemima and was only too willing to pose for Warhol.

In the end, Warhol changed the name of his print to "Mammy" not just to avoid a legal skirmish with Quaker's, but because he concluded that the real myth he was painting was not only perpetuated in Quaker's product, but in the character of Mammy popularized through Gone With the Wind.


Imitation is the Mother of Invention


Shakespeare the Imitator

Few if any works of art spring full-blown, wholly original and without antecedents, like Athena from the head of Zeus. The Greek legend of Pygmalion was the basis for a George Bernard Shaw play of the same name and later for the musical, My Fair Lady. The great copyright scholar, Melville Nimmer, has said that West Side Story would infringe Romeo and Juliet had Shakespeare been able to copyright it. But then, Julius Caesar was a derivation of Sir Thomas North's 1579 translation of Lives of Noble Grecians and Romans, by Plutarch. The chain of creative appropriation is tangled and long.

If any work of art could not draw upon prior material with impunity, then Shakespeare would be quickly adjudged a thief. Writes Judge Richard Posner:

Measure for Measure would infringe Promos and Cassandra, Ragtime would infringe Michael Kohlhaas, and Romeo and Juliet itself would have infringed Arthur Brooke's The Tragicall Historye of Romeo and Juliet, published in 1562, which in turn would have infringed several earlier Romeo and Juliets, all of which probably would have infringed Ovid's story of Pyramus and Thisbe - which in A Midsummer Night's Dream Shakespeare staged as a play within the play. If the Old Testament had been copyrighted, Paradise Lost would have infringed it, not to mention Joseph and His Brothers.


Disney Privatizes the Classics and Folktales

When the Fox network planned a Peter Pan half-hour cartoon series based on J.M. Barrie's public-domain work, the Disney Company said that Tinkerbell could only be presented as a single point of light because Disney animators had come up with the idea of portraying her as a young woman. Fox retorted that J.M. Barrie himself had described Tinkerbell as a slightly plump girl "gowned in a skeleton leaf, through which her figure could be seen to best advantage."

Disney has also claimed the folk tale of Snow White as its own. In 1989, when the Academy of Motion Pictures Arts and Sciences opened the annual Oscar awards ceremony with a song-and-dance number spoofing Snow White, Disney demanded an apology. It felt that the sketch besmirched the innocent, wholesome image of Snow White, one of Disney's most valuable intellectual properties.

When the Academy refused to apologize for its parody, Disney threatened a lawsuit, prompting the New York Times to jest that Disney should be given the "Can't Take a Joke" award. Cartoonist Garry Trudeau drew a fanciful strip in which a furtive Snow White secretly meets with a journalist to talk about her ill treatment by Disney. In the last panel of the strip, a Disney lawyer materializes to take Snow White away, whistling, "Hi ho, hi ho, it's off to court we go!" On another occasion, the mere threat of litigation by Disney was enough to stop a French AIDS awareness campaign featuring Snow White in suspenders and fishnet stockings and Cinderella striking a seductive pose.


Trademarked Characters and Images


The Legal Lockdown of Barbie

Mattel's aggressive control over its icon, oddly enough, has provoked contempt among both lovers and haters of Barbie. Critics of the Barbie ideal in 1989 formed the Barbie Liberation Organization, a project of "culture-jamming" (r)(tm)ARK group ("art-mark"), to stage cultural events that mock the doll. In one of its more famous gambits, the group in 1993 furtively switched the voiceboxes on 300 talking versions of Barbie and G.I. Joe dolls sitting on store shelves. The goal was to have unwitting consumers buy Barbies who would then yell, "Vengeance is mine!" and G.I. Joe's who would sigh, "Let's plan our dream wedding." Stickers on the packages advised consumers to call their local media to report the subterfuge.

Mattel's protests about unsavory depictions of Barbie are hilariously ironic given the doll's origins in the 1950s as a German "street walker" doll, "Lilli," an adult novelty gift and collector's item, which itself was inspired by a cartoon character in the newspaper Bild. Ruth Handler, the creator of Barbie, adapted the German doll (dare anyone say "stole"?) and transformed it into the all-American doll we all know today. Like Disney, Mattel thinks it is fine to borrow liberally from the public domain or competing products, but no one is allowed to mess with "its" product.

Mattel is legendary for fighting unauthorized depictions of Barbie. So it comes as a surprise to learn that Barbie can trace a direct lineage to "Lilli," a German adult novelty doll from the 1950s (pictured here) that Mattel took the liberties to adapt.


Evoking Celebrity Personalities is Prohibited

Comedian Johnny Carson brought a lawsuit against a portable toilet maker who named his enterprise "Here's Johnny," the phrase that Carson's sidekick, Ed McMahon, always used to introduce Carson's nightly monologue. The portable toilet advertised his product as "The World's Foremost Commodian." The King of Comedy wasn't laughing. Carson claimed that his men's clothing company used the phrase "Here's Johnny" on its labels and marketing; the use of "Here's Johnny" by another company, he said, represented unfair competition and an infringement of his publicity rights.

A federal appeals court ruled for Carson, finding that there was a "likelihood of confusion" that consumers would falsely associate the toilet company with him. It declared that because the public tends to associate the words "Here's Johnny" with "Johnny Carson," the toilet company had unfairly evoked Carson's identity without his permission!

The aftermath of this 1983 case leads one to wonder: Will Judy Garland's estate be able to sue anyone who tries to exploit the image of ruby slippers, which are forever associated with Garland's legendary performance as Dorothy in the Wizard of Oz? Will Frank Sinatra's publicity rights be violated when a corporate executive also claims to be the "Chairman of the Board"?


The Corporate Privatization of Words


You Must be Socially Acceptable to Use the Word "Olympics"

In the early 1980s, the nonprofit San Francisco Arts & Athletics organization initiated plans to convene a "Gay Olympic Games" in San Francisco. The event sought to emulate the traditional Olympic Games with its ceremony, competition and international goodwill, with the notable difference that it would feature gay athletes....A few months into the planning of the Games, the organizers received a shock. The United States Olympic Committee informed them that it was illegal for them to use the word "Olympic" to describe or market their games. Since 1950, it had been a criminal act for anyone to use the word "Olympic," "Olympiad," "Citius Altius Fortius," or any combination of these words.

....In the USOC's lawsuit against San Francisco Arts & Athletics, a federal district court upheld Congress' authority to grant the USOC exclusive use of the word "Olympic" without having to prove that unauthorized uses were confusing. It also found no violation of the First Amendment. These rulings were upheld by the Ninth Circuit, and then appealed to the U.S. Supreme Court.

In 1986, the Supreme Court reaffirmed by a 7 to 2 margin the lower court's ruling in San Francisco Arts & Athletics, Inc. v. United States Olympic Committee. The USOC's monopoly over words, the Court held, amounted to "incidental restrictions on First Amendment freedoms" when balanced against the "substantial governmental interest" of giving the USOC "an incentive to continue produc[ing] a 'quality product'."

....In a dissent at the circuit court level, Judge Alex Kozinski had noted this very point: "It seems that the [United States Olympic] Committee is using its control over the term Olympic to promote the very image of homosexuals that the [Athletics Group] seeks to combat: handicapped, juniors, police, Explorers, even dogs are allowed to carry the Olympic torch, but homosexuals are not." But the Supreme Court rejected this argument, saying that the USOC was not sufficiently a government agent for the Equal Protection Clause to apply.


The Value of Godzilla? Priceless!

The term "Godzilla" is commonly used as a synonym for a giant monster. So should its trademark owner, Toho Co. Ltd. of Japan be able to shut down derivations that use "zilla"?

That's what happened to Dave Linabury, the owner of an online humor website, In August 2002, Toho sent Linabury a "nastygram" letter claiming that the domain name and its use of a "'reptile-like' character as well as a 'monster- like' character.... constitutes a trademark infringement and confuses consumers and the public into believing that your "Godzilla" character originates from Toho, which it does not."

The idea that anything that is "reptile-like" or "monster-like" and associated with the phenomes "zilla" belongs to the trademark holder of Godzilla is daffy, of course..... Toho has ignored many other derivations using "zilla." It has not apparently gone after Mozilla, the open-source version of the Netscape browser; Issuzilla, a software bug-reporting system; Go!zilla, a software download program; or Budgiezilla, a mock-movie advertisement on the Web about giant birds that destroy a city. Paul Allen Levy, an attorney with the Public Citizen Litigation Group, noted that the Patent and Trademark Office's electronic database features a number of trademarks ending in "zilla," including "bosszilla, bootzilla, dogzilla, webzilla and bockzilla."

One wag captured the real significance of the Davezilla legal quarrel: "Coming soon: 'Lawyerzilla: The Monster That Ate the World!"

A screenshot from the website



Stealing the Public Domain


West Publishing's Claim to Own Page Numbers - and the Law

One of the more creative copyright claims, made by West Publishing Co. of Eagan, Minnesota, is that the company owned copyrights on the page numbers of the federal court decisions it published. What might seem like a bizarre assertion of copyright protection was in fact a key legal argument by West for preserving its multi- billion-dollar market monopoly in the publishing of federal court cases.

The practice of law in the United States revolves around the citation of legal cases by their page numbers. All attorneys, judges, legislators and legal scholars must refer to the specific volume and page number of a given case, as reported in the official court reporter.... The public paid a dear price for West's monopoly. Based on a license that West had granted to the U.S. Justice Department, Love calculated that the cost to a single user of accessing a single year of federal court cases (or approximately 15,000 cases) was $40,500. Neither West nor LexisNexis offer their online legal products to public libraries for their patrons to use; what is offered is accessible to librarians, and it costs $14 per minute to use, plus printing costs. This means that the public and pro se litigants (people who represent themselves in court) generally cannot get free or inexpensive online access to court cases even though, as taxpayers, they already finance the entire court system.

In 1998, the absurdity of allowing copyright law to protect the pagination of federal court cases finally came to an end. Legal publisher Matthew Bender & Co. won a federal lawsuit declaring that the elements of West's case reports that other legal publishers sought to copy were not copyrightable. HyperLaw, an intervenor in the case, won a declaration that it could publish redacted versions of West's case reports without infringement. Anyone may publish federal court decisions, complete with the page numbers selected by West, with impunity.


I Have a Dream...That Someday All of Public Life Will be Copyrighted

Martin Luther King, Jr.'s famous "I Have a Dream" speech, delivered on August 28, 1963, is a work that arguably belongs to everyone. It is a fascinating paradox that one of the greatest speeches in American history is in fact a strictly controlled piece of private property. It is owned by King's estate, consisting of Coretta Scott King and her four children. The estate actively licenses the right to reproduce Dr. King's works, and has sued news organizations and scholars for using excerpts of King's speeches without permission or payment. One of the most meaningful moments in American public life, a bracing call to human dignity and progress by one of America's great leaders, is available only to those who can curry favor with the King family or pay them enough money....

Dexter Scott King, Dr. King's son, believes that people should not be allowed to exploit Dr. King's memory without paying something to the estate. As he told the New York Times, "It has to do with the principle that if you make a dollar, I should make a dime." For her part, Coretta Scott King said she only wants to promote Dr. King's message. "It's difficult and it's challenging when people desire in their own way to exploit the message and the mission of Dr. King for their own personal gain," she told the New York Times. "Yet when we seek to perpetuate the legacy in the
way the Holy Ghost has told us to perpetuate it, and we just so happened to be blessed financially by it, it saddens me that people are confused. If it were your daddy, what would you do?"

The King estate clearly is not confused about its interests. It wants to leverage The Speech for some serious money. In 2001, it licensed the rights to the speech to Alcatel, a communications firm, for a television and print ad campaign. The ad features the Reverend King delivers his soaring sermon to a vast empty space; through the miracle of digital editing, the Mall is utterly empty. A narrator intones: "Before you can inspire, before you can touch, you must first connect. And the company that connects more of the world is Alcatel, a leader in communication networks."

The family also licensed Dr. King's speech to Cingular, the wireless telephone carrier. A company spokesman explained it wanted to use Dr. King's image because the wireless marketplace is "a ghetto of competing rate plans." Ouch.


Owning Facts, Silence and Emoticons


The Next Form of Private Property - Facts?

Copyright law has never protected raw factual information, which is considered part of the public domain. But it does protect compilations of data that have been selected, coordinated or arranged in an original way. Databases are also protected by federal laws such as the Computer Fraud and Abuse Act and state laws dealing with contracts and misappropriation.

But under the Database and Collections of Information Misappropriation Act, a bill introduced by several Senators in 2004, the traditional scope of copyright protection would be radically expanded. Database vendors could have legal protection not just for their artful selection and compilation of facts, but in the facts themselves!

Public Knowledge, a leading advocacy group fighting this legislation, has pointed out that "when a Western novelist researches in the Encyclopedia Britannica the history of the state of Utah for a new book, nothing in his or her publication of that book will diminish the value of Encyclopedia Britannica in the slightest, so long as the novelist did not infringe on the copyrighted particular expression of information in the Britannica article." Yet under the proposed database legislation, the ordinary researcher might well encounter copyright restrictions in using "proprietary" facts.

A Legal Monopoly Over Silence

Does silence belong to all of us, or can someone own it and charge money for it? It sounds like a silly question. But not, apparently, to the British licensing agency that collects royalties for the performances of composers' works.

A controversy over the sounds of silence began in 2002 when avant-garde composer Michael Batt performed "One Minute's Silence," which was exactly that. In the program notes for the performance, Batt decided to pay tribute to experimentalist composer John Cage, who in 1952 had pioneered a similar performance piece called " 4'33"," which was precisely four minutes and 33 seconds of silence. Batt also put "One Minute's Silence" on his album, Classical Graffiti, performed by The Planets....

In the program notes for Batt's performance, he listed the composers of "One Minute's Silence" as "Batt/Cage." He gave a credit to Cage "just for a laugh," he later told the Independent of London. This attribution was sufficient, in the eyes of the Mechanical-Copyright Protection Society, the British agency that collects royalties for music performances, to demand payment. MCPS sent Batt its standard license form, seeking a royalty on behalf of Cage's estate.

Batt was nonplussed: "My silence is original silence, not a quotation from his silence. Mine is a much better silent piece. I have been able to say in one minute what Cage could only say in four minutes and 33 seconds." Batt's mother asked her son, "Which part of the silence are they claiming you nicked?"


Who Owns the "Frowny" Emoticon :-( ?

What happens when a company obtains a trademark on one of the most frequently used symbols of online life, the "frowny" emoticon? For millions of Internet users, the symbol rendered as " :-( " - a sequence of keyboard's colon, dash and parenthesis mark - is an arch way to convey sadness in email messages.

But is this widespread practice still legal? In 2001, Despair, Inc., a Dallas-based maker of spoof inspirational merchandise for the corporate world, played a colossal practical joke that exposed the absurdities of current copyright trademark policies.....Despair sought to have its corporate logo, the "frowny" emoticon, declared a legal trademark. It applied in 1998, and two years later, the U.S. Patent and Trademark Office actually awarded Despair a trademark in the emoticon [registration #2347676]. On January 2, 2001, Dr. E.L. Kersten, the Founder and COO of the company, announced plans to sue "anyone who uses the so-called 'frowny' emoticon, in their written email correspondence. Ever."

Playing the gag for as much as it was worth, the Despair press release announced that the company had "filed suited yesterday in a U.S. District Court in Dallas, alleging trademark infringement against over seven million individual Internet users. The company has requested separate injunctions granted against each. It is believed to be the largest single trademark dispute in history." The company even claimed it had used the FBI's controversial "Carnivore" Internet wiretapping system to identify the seven million individuals who had illegally used the :-( symbol in email.