Patently Obvious Michael Gniwisch

“The parties are advised to chill.” Thus ends Judge Kozinski’s judicial opinion regarding the Barbie doll and the Euro-pop band, Aqua, who used her name in a song. “I’m a Barbie girl, in a Barbie world/life is plastic it’s fantastic.” Is that allowed or can Mattel, Barbie’s makers, sue Aqua for trademark infringement? The court held, no. Some terms enter the public domain and are protected by the First Amendment, the 9th Circuit held. The case is called Mattel v. MCA Records.

The second case discussed in this episode is A&M Records v. Napster. Napster was a file-sharing website which allowed one party to upload music onto the site and others to download it. The 9th Circuit, in 2001, held that transmitting a file to a new medium was not “transformative” under the fair use doctrine. This adverse ruling eventually lead to Napster’s demise.

Mr. Russell Frackman has been an entertainment and IP litigator for many years and has represented Hollywood personalities such as Jack Nicholson, Neil Diamond, Coldplay, and the Rolling Stones with Mitchell, Silberberg, and Knupp.

Hope you enjoy this great conversation with an entertainment law veteran!

Link to Mattel: https://casetext.com/case/mattel-inc-v-mca-records-inc

Link to Napster: https://casetext.com/case/a-m-records-inc-v-napster-inc-3

Movie production is a multifaceted and complex operation. There are scriptwriters, set directors, actors, hairdressers, cameramen, editors, visual effects creators, and many others--all integral to the finished product. But who owns the movie’s copyright in the absence of a written contract?

This question was litigated in the 9th Circuit case, Aalmuhammed v. Lee (2000). Spike Lee directed the 1992 Malcolm X biopic and sought the help of Jefri Aalmuhammed, an expert on Malcolm X and the Nation of Islam. When Lee did not give credit where it was due, Aalmuhammed argued that he co-owned the movie’s copyright as its co-author. The court held that Mr. Aalmuhammed was not a co-author of the movie. An author has supervisory control over the finished work and co-authors have to manifest intent to be co-authors, both of which were missing in this case.

We interviewed Bruce Isaacs who represented Spike Lee and the studios in this case and Jeremy S. Goldman who aided our discussion of entertainment litigation today.

If you plan to become an entertainment litigator, listen to this episode for an introduction to the types of litigable issues in this space!

Link to the case: https://casetext.com/case/aalmuhammed-v-lee

Super Soakers. First sold in 1990 by Larami, Corp., they quickly became the number one toy on the market. Alan Amron and Talk to Me Products had a different idea. They asserted that Larami infringed on their patented water gun and sued Larami in federal court. The doctrine of literal infringement states that a product infringes a patent if it copies every element of at least one claim. Patent applications are divided into "claims"—detailed descriptions of the patented product delineating the exact invention being protected. In 1993, the Federal Court for E.D. Pa. ruled in Larami's favor, explaining that the Super Soaker did not infringe on every element of the claim Amron alleged. Amron claimed a water gun with a water chamber inside the body of the gun while the Super Soaker famously had its water chamber on top of the gun. Larami and their Super Soaker trademark were eventually bought by Hasbro.

Mr. Gary Rosen has litigated all manner of intellectual property law for over 30 years and now runs the LOGAR PC law firm in Bryn Mawr, Pennsylvania. He has lectured at Wharton and taught an intellectual property law course at Drexel Univesity Law School. A legal historian, Mr. Rosen has published two books on the history of copyright law in the U.S. The second, Adventures of a Jazz Age Lawyer, is available now.

Probably because of its whimsical content, Larami is used to teach the doctrine of literal infringement in many law schools around the country. Enjoy!

Link to the case: https://www.nathenson.org/courses/innovations/larami-v-amron/

Booking.com is a Dutch company that offers online services for booking hotels, flights, and other amenities. Booking.com sought to trademark their company name but their registration was denied by the U.S. Patent and Trademark Office on the grounds that the mark was generic—referring to a class of goods as opposed to a single producer. Booking.com appealed that decision and in a 2020 decision, the Supreme Court held that the mark could be registered since Booking.com could prove that the public saw the mark as referring to a specific company and not a class of goods. 

Lisa Blatt argued the case on behalf of Booking.com in front of the Supreme Court—the first in U.S. history to be argued on the phone due to the COVID-19 pandemic. Lisa runs the Appellate Litigation team at Williams & Connoly and was recently named one of the top ten women in litigation by Benchmark Litigation. Lisa had argued more cases than any woman in front of the Supreme Court—40.

Sarah Harris wrote the brief for Booking.com. Sarah recently joined the Appellate team at Williams & Connolly and recently argued her first case before the Supreme Court in Salinas v. U.S. Railroad Retirement Board. Sarah was named a "rising star" by the National Law Journal and has briefed and argued cases on all sectors of the law.

Link to the case: https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf

Enjoy!

Prometheus Laboratories is a biopharmaceutical company that specializes in treating GI diseases (gastrointestinal-relating to the stomach and intestines). Prometheus owned the patents to a diagnostic method that helped determine the proper dosage of a drug meant to treat autoimmune diseases (like Chrons). Mayo Collaborative is a for-profit diagnostics laboratory affiliated with the Mayo Clinic in Minnesota. In 2004, they began to sell diagnostic kits using an identical method to the one patented by Prometheus. Prometheus sued Mayo and the case made it to the Supreme Court–twice. Finally, in 2012, the Supreme Court held that Prometheus's method was unpatentable from the outset because it was akin to an unpatentable "law of nature."

Mr. Jonathan Singer heads the life sciences division at Fish & Richardson in San Diego. He is a seasoned patent attorney and an expert on pharmaceuticals and patent law. Mr. Singer argued on the side of Mayo and won.

Link to the case: https://www.supremecourt.gov/opinions/11pdf/10-1150.pdf

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2 Live Crew was a successful rap group, hitting its stride in the 80s and 90s. On their 1989 album, As Clean as They Wanna Be, 2 Live Crew parodied Roy Orbison's famous song, "Oh Pretty Woman." Besides skewering its lyrics, 2 Live Crew appropriated large swaths of "Oh Pretty Woman"'s musical composition. Was that allowed under Copyright Law? The Supreme Court said "yes" in a 1994 case, concretizing the Fair Use Defense for copyright infringement and holding that certain transformative applications of copyrighted material were allowed under the law. 

We spoke to Mr. Bruce Rogow who litigated the case for Luther Campbell, 2 Live Crew's lead singer. Mr. Rogow has more than 55 years' experience in litigation and has taught courses at the University of Miami and Nova Southeastern University Law Schools. Mr. Rogow shared with us his passion for copyright law, the story behind this fascinating case, and his indispensable advice for young law students. 

Here's a link to the case: https://casetext.com/case/campbell-v-acuff-rose-music-inc

Correction: The podcast lists the album with the "Oh Pretty Woman" parody as As Nasty as They Wanna Be. In truth, the album with "Oh Pretty Woman" was 2 Live Crew's next album, As Clean as They Wanna Be

Thank you for listening!