Howard University

Professor Mtima Lateef Article

Reproduced with permission from The United
States Law Week, Vol. 76, No. 36 (Mar. 25, 2008), p.
2568. Copyright 2008 by The Bureau of National
Affairs, Inc. (800-372-1033) http://www.bna.com

Volume 76 Number 36
Tuesday, March 25, 2008 Page 2568
ISSN 1522-4317
Legal News

Copyrights—Digital Rights Works
Practitioners Share New Strategies
For Protecting Digital Assets Online

Clearing, managing, and using digital rights online, while simultaneously balancing fair use and other considerations, require adaptive legal strategies and flexibility, a Washington Post Co. lawyer said March 6 at the Howard University School of Law’s fifth annual Institute of Intellectual Property and Social Justice in Washington, D.C. Throughout the two-day conference, participants shared similarly adaptive strategies for protecting trade dress, patent, and other intellectual property assets. The potential impact of pending patent reform legislation and recent Federal Circuit case jurisprudence were also on the agenda.

For Sherrese Smith, deputy general counsel for the Washington Post Co., the very nature of what needs to be protected has changed, as audiences shift their view from traditional print publications to online media.

For example, the Washingtonpost.com Web-based newspaper, which was originally viewed as the “throwaway child” of the Washington Post family, has now become a dominant player in the parent’s network, and one of the few that boasts impressive and consistent growth in an otherwise tumultuous publishing economy.

However, unlike its print counterparts, the online publication draws from outside sources to a greater degree, pulling copyrighted content from diverse sources, including the Washington Post, subsidiary publications such as Newsweek, outside wire services such as the Associated Press and Reuters, as well as an army of freelance writers and syndicated columnists.

Practically speaking, Smith said, this has meant that the Post has been forced to revisit how to adequately protect its varied intellectual assets.

In one respect, a seismic shift has occurred when it comes to thinking about what to protect, she said. For example, when you’re dealing with a print publication, you’re far more concerned about the wholesale copying of an article. By contrast, the ease of online duplication means that text—as well as graphics, video, and sound recordings—are just as easy a target for a would-be infringer as the printed word, especially when most “people don’t think about copyright issues [with images] as they do with text,” she said.

Enforcement Must Be Adaptive

Although Smith emphasized the importance of traditional protective measures, such as trademark and copyright registration, she also encouraged practitioners to protect their digital assets by other means, such as through the use of watermarking, digital rights management solutions, and cease and desist letters. In particular, Smith noted that cease and desist letters and the Digital Millennium Copyright Act’s notice and takedown procedure have become “cheap and easy” ways to get infringing content off a Web site. “Sixty-five percent of the time, the content comes down” immediately after a letter is sent, she said, obviating the need for further protracted and expensive action in most cases.

Although Smith remained hopeful for an eventual “DRM program that works and makes sense,” she admitted that currently, such a large-scale effective solution remains to be found.

Lateef Mtima, who is the director of Howard Law’s IP and social justice program, also praised some of the new enforcement solutions discussed, but emphasized the need to maintain flexibility and allow for fair uses of others’ content, including music “mashups” created by combining several songs into one work, as well as software adaptations and other future uses.

The question that will continue to confront us as these new uses develop, he said, is how to deal with the problem of “adaptation of use.” In 1984, Congress explicitly built a right of adaptation into the Copyright Act for computer software under Section 117. Section 117 allows the physical copy owners of computer programs to “make … a copy or adaptation of that computer program provided … that such a new copy or adaptation is created as an essential step” in the use of that program.

In a recent law review article, published in the Fall 2007 University of Pittsburgh Law Review, Mtima argued that the Section 117 adaptation privilege should be judicially interpreted to enable a new “public derivative work privilege” that allows users to create non-competitive, derivative software programs based on pre-existing works.

Under Mtima’s system, courts would consider the net market impact of the new adapted work against the original to assess whether a modification is permissible adaptation, as opposed to an infringing derivative use under Section 106.

New Perspectives on Trade Dress Protection

Shifting gears, Xuan Thao Nguyen, a professor at Southern Methodist University’s Dedman School of Law, reflected on the often arduous task of protecting the “look and feel” of a company’s most vital online asset: its Web site. “When you’re arguing trade dress, the look and feel, you’re arguing an uphill battle,” she said. Nguyen explained that although trade dress may offer substantial protection, courts have generally been reluctant to tread in this area, with only a handful of cases defining what constitutes protectable trade dress online.

As one of the first cases on the subject, the U.S. District Court for the Eastern District of New York in Crown Awards Inc. v. Trophy Depot, No. 2:03-CV-02448-DRH (E.D.N.Y. 2003), emphasized that a plaintiff will be largely unsuccessful if it merely piggybacks its trade dress cause of action to an existing copyright claim, Nguyen said. In Crown Awards, the court refused to “speculate as to the elements of the claimed trade dress or sua sponte consider those unidentified elements,” that the plaintiff had not properly articulated in its complaint.

Similarly, in SG Services Inc. v. Gods Girls Inc., No. CV 06-989 AHM (C.D. Cal. 2007), the court refused to grant a preliminary injunction to a plaintiff’s “barely distinguishable” trade dress elements on its Web site. In that case, the court reasoned that it was “inconceivable” that “a viewer would zero in on” a few small, indistinguishable elements “strewn about” and still “consider them to be definitive markers of their respective brands.”

In Faegre & Benson LLP v. Purdy, No. 03-6472 (MJD/JGL) (D. Minn. 2004), the court concluded that the defendant’s use of certain trade dress elements from the plaintiff’s home page for purposes of criticism was unlikely to cause consumer confusion. In addition to carrying distinctive disclaimers announcing that the site was a “parody” of the plaintiff’s law firm, graphic displays of photographs that are “jarringly unlike” anything a consumer would expect to see on a law firm Web site clearly alerted the consumer that the site was a parody, the court explained.

In contrast to these three cases, the few plaintiffs that have prevailed in Web site trade dress actions have done so in part due to the egregious nature of the defendant’s actions. As an example, Nguyen cited Peri Hall & Associates Inc. v. Elliot Institute for Social Science Research, No. 06-0202-CV-W-GAF (W.D. Mo. 2006), in which the district court enjoined an anti-abortion group’s use of a stem cell advocacy organization’s Web site, concluding that even a “cursory examination” of the parties’ Web sites showed that the look and feel of the plaintiffs’ site was “simply copied” by the defendants.

In her closing remarks, Nguyen cautioned that substantive non-content-based changes to a company’s Web site not only change the overall look and feel of a site, but will also make it harder to defend in court. When it comes to updates, it is better to leave the underlying layout alone and just adapt the text, she said.

Additionally, Nguyen stressed that practitioners avoid the practice that has doomed many trade dress litigants in the past: arguing both for copyright and trade dress infringement in the same complaint. If copyright is an adequate claim, courts generally do not want to entertain a secondary trade dress action, she said. And if you do want to argue on the basis of infringed trade dress, it is critical that you clearly identify the protectable elements of trade dress you are attempting to protect, and not just submit a few screen shots of the page to the court, Nguyen said.