Joshua Kaufman is head of Venable’s Copyright and Licensing Group and co-chair of Venable’s Art Law Group. He counsels and litigates in copyright, e-commerce, licensing, art, intellectual property, software, on-line issues, trademark, anti-counterfeiting, Rights of Publicity, entertainment, media, and literary law. He advises his clients in structuring and negotiating transactions in which they exploit and protect their intellectual property rights or in acquiring them from others. A former computer consultant and writer, he was one of the nation’s first computer and cyber attorneys.

In every contract parties try to limit their liability. As a result, drafters put in very broad limitations of liability, which, up to a point, are fine and should be used. However, the problems arise when an entity tries to draft a limitation of liability that is so broad that it goes against public policy and state statutes. This is what recently happened in the case of Rossi v. Photoglou (Court of Appeals of California, Fourth District Division Three [9/29/2014]).

The case dealt with a cast member from “The Real Housewives of Orange County,” Gretchen Rossi, and her claim that her former friend Jay Photoglou was harassing and stalking her. At the trial level, Rossi was successful and recovered more than $500,000 in compensatory and punitive damages. The court dismissed the counterclaim by Photoglou against Rossi for libel, slander and invasion of privacy. It based the dismissal on the release signed by Photoglou which shielded not only the producers of the program, but also other cast members from liability. However, the Court of Appeals did not agree and reversed that finding because it held that all three of his claims involved intentional torts, and courts have often held that one cannot waive liability for intentional torts.Continue Reading Too Much of a Good Thing Can Hurt You

The vast majority of Terms of Service (TOS) on websites are unenforceable. Companies spend a great deal of time and money in crafting what they believe to be appropriate website specific TOS which they hope will provide them with the various protections, safe harbors and advantages needed in dealing with the public or in transacting business. Countless hours are spent honing, devising, revising and fine-tuning clauses on limitations on damages, choice of forum and law, mandatory arbitration, automatic renewals, jury waivers, IP ownership clauses, assignments and licenses. Eventually, they are crafted just the way the entity wants them and they are posted. After the countless hours of design, reflection, revisions and thousands of dollars in legal fees, the appropriate well-crafted TOS appear. Unfortunately, in most cases, those bits will not have any legal byte!

When the entity goes to enforce the TOS, believing they have entered into a contract with their users, they are unpleasantly surprised time and again by judges who refuse to enforce them. 
Continue Reading Your Websites Terms of Service are Unenforceable

3-DPrinting3-D printing is one of the most disruptive technologies to penetrate the market place.  While it is currently and extensively used for prototype design, medical devices and creating novelty items, it has the potential for dramatically changing our way of life.

As new technologies emerge and business models come online, we often see a lag in the law and the activities of business and the consumer.  Let’s fast forward a few years while you can still go to your favorite online store, order and pay for your product; but, instead of it being shipped to you, you will be able to download a file(s) and print out your “purchase(s).”

The whole way we “buy” products could change once we are able to download or stream digital files and print them ourselves.  In fact, we would no longer buy anything – we would, in all likelihood, licensing software files and products from the vendor.

When we buy something, we generally have the right to resell it and use it as we see fit.  This is true even with products that are protected by copyright based on the limits of the copyright owner controlling secondary sales under the First Sale Doctrine.  The copyright owner gets to decide who makes the first sale then the person who acquired the lawful copy can resell it (e.g. used CDs, VCR tapes, DVDs, books, etc.).  However, the First Sale Doctrine does not apply to licensed goods.  So, when we license a 3-D file and print out the product, one should not be confused to think they actually own the file or resulting product, it is being licensed.  How do we know if we are buying something and own it or are merely licensing it?  The answer it seems depends on what the vendor calls the transaction.Continue Reading 3-D Printing – The End of Shopping As We Know It

I was attending the recent annual meeting of the Copyright Society of the USA and listening to a presentation by the always eloquent Maria Pallante, the Register of Copyrights, when she made a comment that startled me regarding a controversial issue.  The issue being whether one must have a registration or simply a pending application for registration in order to meet the prerequisite to file a federal copyright infringement lawsuit.  This has been an ongoing issue, with a split amongst courts, and the difference has had significant implications.

Obtaining a Certificate of Registration can take anywhere from six weeks to over a year, depending on the nature of the material for which the registration is sought, the method of filing, and/or U.S. Copyright Office backlog. In most instances, upon discovery of an infringement, a person wishes to get into court fairly quickly and having to wait six weeks to a year is unacceptable.  Unfortunately, most people do not register their copyrights on an ongoing basis (which they should) so they are confronted with the dilemma of hustling to get a registration in place so they can file a lawsuit.Continue Reading Registration v. Application: Is the Battle Over?

1989 BatmobileIn advertising when one says “Brand Protection”, they instinctively think of trademark protection.  An often overlooked tool is copyright protection.  If in advertising you have developed a “character” (think Progressive Insurance’s “Flo” character or Haverty’s “Emily”) or have an object (think Geico’s Gekko or the Batmobile) that is essential to your advertising campaigns, under the right circumstances, it can be protected by copyright.  While trademark law can protect a specific individual rendition of the character, copyright will protect the persona.  In other words, you may be able to prevent a competitor from using a substantially similar character.

Certain characters in literature and in the movies have long enjoyed copyright protection (James Bond, Rocky Balboa, Tarzan, E.T., etc.).  The key is that in order to be afforded copyright protection, a character has to be distinctive and essential to the story.  Characters have to be especially distinctive, sufficiently delineated, and have displayed consistently, widely identifiable traits.

Most advertisements characters are interchangeable by type (i.e., the loud electronics salesman) and not protectable, however, there have been numerous advertising programs in which a character has clearly defined a distinct set of characteristic and the character is used over and over (Flo has appeared in over 50 Progressive Insurance commercials).  In such a case, copyright protection could attach to the character.  Also, if the ad is featuring an object that also has distinct characteristics is essential to the theme and, in a sense is treated like a character, it too can have copyright protection (i.e., Aflac’s duck).
Continue Reading Using Copyright to Protect Your Brand’s Characters