|
By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jrosenblatt@cfl.rr.com
The Well Known And Highly Respected Intellectual Property Innocent Bystander Rule
We all know about the innocent bystander rule, regularly invoked with the cry, “It wasn’t, me it was the other guy. I’m just an innocent bystander. Honest.” (Or is it “honestly?”). Or we may have heard of a witness introduced as on the scene but “just an innocent bystander.” What is meant by “innocent,” is that no connection exists between the person claiming to be an innocent bystander and the injury, damage, or the crime, in question.
When considering a legal connection, we mean a legally recognized act of causation between the person and the damage or crime. However, in the case of a crime, there must be some common law or statutory rationale for assigning responsibility. In the case of the common law, the rationale may be “intent” or a “malicious” state of mind. Or the statutory law may require the act be done with “knowledge” or may not require any knowledge or intent, and just merely doing the act is sufficient. Criminal law examples are the “drunk and disorderly” laws. In the civil law, the connection may be negligence, or an absolute liability even without negligence, such as in a defectively designed product inherently dangerous for its intended use, or intent, as in assault and battery, or knowledge, as an act done with the knowledge that the act is likely to cause injury, as dumping PCB’s in a public water source. That last example involving PCB’s may be serious enough to merit criminal as well as civil penalties. An example of an act merely prohibited and not requiring any knowledge or intent, would be passing a red light. You may not have intended to pass the light and may not even have seen it and certainly you would never consider doing any such thing, but try telling that to the arresting officer.
Well, the innocent bystander, referring to the above, would disavow intent or knowledge, by claiming he or she would never consider doing such a thing and has no idea what was going on and wasn’t aware there was a crime or injury and would have been the first to call the police or take corrective action.
With the forgoing as prologue, we ask, what does that have to do with intellectual property, meaning patents, copyrights, trademarks, domain names, trade secrets and the commercial use of another’s identity (sometimes called invasion of privacy.) Of course we mean in particular, the “I” word: infringement, or the “M” word misappropriation, whether done willfully, or intentionally or with malice or negligently or even innocently. For patents and copyrights, we can go directly to the statutory law as each is the creation of statue. Trademark infringement, trade secret misappropriation or misuse of an identity, may be based on a statutory right or on the common la, and for that reason the rules and results differ.
As each of the separate intellectual property disciplines are distinguished from each other more by infringement remedies than the basic protections, it is necessary to consider each in its own right, a separate law and involving different kinds of causation. As the author of this piece, I enjoy certain privileges, subject only to the higher prerogatives of my publisher, one of which is to choose which branch of intellectual property law to start with first and I choose copyright. What is interesting about copyright protection is its very nature which makes it the choice for some very large corporations producing very expensive multi-media entertainment, joined by very large industry or trade associations and each with very large legal staffs who may enjoy the well deserved reputation of throwing their legal weight in the literal sense.
As all of us know from reading my columns, copyright protects only the creative part of an author’s work and only the expression of the author’s ideas. That means while the expression of the cartoon “Batman,” can be copy written, the idea of some vigilante running around town in tights and a mask and cape, cannot be copy written.
For the purpose of discussion, let us just say copyright infringement occurs when a copy written work has been reproduced, modified, publicly performed or displayed, or worse, transferred, without the copyright proprietor’s permission, and for the purpose of discussion, that has already occurred. What happens now? To determine the consequences and in fact it would not make any difference if our assumed act of infringement was done maliciously with intent to profit or innocently, as in the case of an innocent bystander, we look to the statue because copyright, like patents, is a pure creation of the legislative process.
For comparison of a wilful or malicious act compared to what would be an innocent act of infringement, the No Electronic Theft Act (enacted December 16, 1997), would be a good place to start. The NET Act permits federal prosecution of large-scale, willful copyright infringement even where the infringer does not act for a commercial purpose or for private financial gain. However, what is lurking in this prohibition apparently limited to willful acts, is what is known in the law as a presumption where the act itself, even if innocently done, presumes a willfulness and liability. So, even without commercial or private financial gain, a putative innocent infringer’s acts may be criminal if done by the reproduction or distribution, including by electronic means, during any180-day period, of one or more copies or phono records, of one or more copyrighted works, which have a total retail value of more than $1,000. Meet that definition and you are in big trouble. If the infringer is caught within the 5-year statue of limitations, punishment is as provided under sections 2319 and 2320 of title 18, United States Code. That is a serious penalty, to be avoided as is the case with any criminal conduct.
I admit making copies of “copyrighted works” with a value of more than $1,000, is beyond the capability of those of us who may copy a magazine article or a few pages from a book. However, it does not take much in the way of imagination to conceive of the scenario where an innocent CD producer or a commercial printer, receives an order for production of what may seem to be a noninfringing work but which later turns out to be an infringement or worse, a work which is in, or about to be in litigation. Take the case of the novel “Wind Done Gone,” about the “real story of the fictional “Gone With The Wind” plantation. While thought of as free speech and a fair use comment to the stylized Margaret Mitchell treatment, and not an infringement, the Mitchell estate sued for copyright violations. A more common recurring act of infringement would be the innocent printing house doing a run of an advertising supplement with copyrighted artwork, written copy, art work or a copyrighted compilation.
Even without any lurking presumptions to trap the unwary, as in the NET Act, the law relating to infringement opens a simple path leading to statutory damages even where there is no harm, or negligible harm. In the case of infringement, according to the copyright statues legally recognized infringement occurs by merely violating any one of the exclusive rights of the author by reproducing, modifying, transferring, publicly displaying or performing, a copyrighted work or by importing the copyrighted work without the permission of the copyright proprietor or for works of visual art, by violating the author’s right to claim authorship. A safe harbor exists only for a limited grouping of works identified in the Copyright Regulations as, (a) Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents; (b) Ideas, plans, methods, systems, or devices, as distinguished from the particular manner in which they are expressed or described in a writing; (c) Blank forms, such as time cards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms and the like, which are designed for recording information and do not in themselves convey information; and (d) Works consisting entirely of information that is common property containing no original authorship, such as, for example: Standard calendars, height and weight charts, tape measures and rulers, schedules of sporting events, and lists or tables taken from public documents or other common sources. and (e) Typeface as typeface. That last category will come as a relief to those in the printing profession who otherwise would have been in constant danger of infringement just by the mere act of selecting the wrong typeface.
Where all of this leaves us is with the question: How can anyone who is placed in the position of reproducing, modifying, transferring, displaying or performing a copyrighted work, or importing a copyrighted work, avoid being blind sided and named as a surprise defendant in a copyright infringement action? There is a simple and a complicated answer. The simple answer is to exercise judgment as relevant to the work’s source and content. The range of examples is too numerous to cover in this space so a few representative cases must suffice. Take the case of an advertising agency doing a spread for a new client in the fast food business. What would it take to cause a copyright infringement and we are not including infringement of trademarks like McDonalds or Burger King. To start, as we know from the Copyright Regulations, words and short phrases such as names, titles, and slogans, cannot be copyrighted. But that begs the question of what may be included in that same exemption. Then there are symbols including copyrighted artwork which are easily modified into the theme of the spread, while leaving enough of the original to infringe the copyright.
Without belaboring the issue, because copyright arises immediately upon its creation, without malice, intent, knowledge or willfulness, doing any of the acts: reproducing, modifying, transferring by assignment, license or otherwise, publicly performing or displaying, without the express permission of the owner, could amount to a copyright violation and then court imposed statutory damages of from $700 to $30,000, per violation. Then to add the insult, the court may award plaintiff its attorney fees which may be considerable.
So the lesson is know the source of any creative material given for the purpose of its use of importation and protect yourself accordingly. While even the best protection is not perfect, recommended is a) getting a warranty of the materials rightful ownership or right to use, b) getting an indemnity and agreement to defend a copyright action, and c) verify the party giving the warranty, indemnity, and agreement to defend, will have the resources to make good on these agreements.
Next month it will be Patent infringement, where the costs of litigation could easily force a putative infringer into a quick but costly settlement.
|
