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Week in Review

By Martha Nimmer


College athletes may one day be eligible to receive compensation for appearing on televised sports events. Last week in California federal court, U.S District Judge Claudia Wilken heard arguments over class certification in a case that began as a suit involving former NCAA athletes, but has quickly evolved into a suit that could include current NCAA players. Judge Wilken, The Hollywood Reporter writes, must decide "whether to certify a class of former athletes like Ed O'Bannon, Bill Russell and Oscar Robertson; to certify a class of athletes playing the games right now; to certify both; or to certify neither." Observers at the hearing report that the judge may be going for "the big one," that is, certifying a class of both former and current NCAA athletes.

At the hearing last Thursday, Judge Wilken remarked that she anticipates asking for an amended complaint, which is expected to include the name of a current NCAA athlete as a class representative. In response, the lead attorney for the plaintiffs stated that he had "been anticipating this for quite some time and there are a number of current athletes who have expressed a desire and an interest in joining the case." It remains unclear, however, who that current NCAA athlete will be.

The lawsuit, which now potentially affects thousands of current and former NCAA players, has changed dramatically over the course of four years. The suit, originally filed in 2009, initially involved publicity rights. In its sports-themed videogames, videogame maker Electronic Arts (EA) allows users to go into "dynasty mode" to "control characters with the same jersey numbers and other identifiable characteristics" of former NCAA players." This feature, among other factors, helped form the basis of the plaintiffs' initial suit. The NCAA argued, however, that Ed O'Bannon and other ex-players relinquished their publicity rights in release forms signed at the time they were in school; unfortunately for the NCAA, that argument shifted the focus of the lawsuit to "alleged antitrust injuries inherent in forcing athletes to sign waivers and having licensing partners enforce a boycott against ex-players making their own deals." Later, an amended complaint proposed that current NCAA athletes be included as a class to discipline the NCAA for allegedly creating "collusive restraints" not to pay athletes for "their names, images and likenesses in connection with live television broadcasts of games and video games."

When determining whether to certify the proposed classes, Judge Wilken will weigh a handful of factors, including whether the named plaintiffs adequately represent a class, whether there is commonality "in the questions of law and fact that support the claims," and whether a class action is the best avenue for deciding the case.


U.S. Releases its 2013 Joint Strategic Plan on Intellectual Property Enforcement

Last week, the Obama Administration issued its annual report on intellectual property (IP) enforcement. Included on the "action items" list of the 2013 Joint Strategic Plan on Intellectual Property Enforcement (the 2013 Report)is improving transparency in IP lawmaking and international negotiations, in addition to enhancing law enforcement communication with IP owners and educating authors on "fair use."

The 2013 Report provides a survey of recent activity by the administration on the IP front, from negotiations with trade partners abroad to crackdowns on counterfeit goods, ranging from counterfeit pharmaceuticals to infringing purses. Included in the report are statistics about how various departments and agencies of the federal government, such as Immigration and Customs Enforcement (ICE) and the Justice Department, have been fighting IP theft. According to The Hollywood Reporter, "the past year was also one in which Hollywood studios and ISPs enacted voluntary initiatives to discourage piracy -- something noted amid the administration's willingness to foster more cooperation among what it calls the stakeholders." The report also includes a section on transparency, underscoring the administration's long-stated goal of being more open. As part of this plan for increased transparency, IPEC has maintained an "open door policy, meeting with hundreds of stakeholders, large and small, across a broad range of sectors in developing and implementing the Administration's strategy for intellectual property enforcement."

Although the 2013 Report's section on enforcement efforts is not terribly specific, it does discuss the need for federal law enforcement officials "to continue to regularly engage rights-holders." Included in the section are statistics about various law enforcement efforts in the United States and abroad. According to the 2013 Report, customs seizures and criminal IP actions have risen modestly since President Obama took office. Since 2009, the U.S. Attorney's Offices have filed 178 IP cases against 254 defendants--a 2% increase in cases filed, and a 14% increase in defendants charged, compared to the previous year. Additionally, ICE and Homeland Security initiated 1,251 IP investigations and effected 691 arrests last year, compared to 730 investigations and 266 arrests in 2009.

Enforcement efforts are not limited to the United States, however. In November, for instance, the IPR Center issued its first international intelligence bulletin to INTERPOL, Europol, and the World Customs Organization reporting the dangers of counterfeit airbags. ICE, Homeland Security and the National Traffic Highway Safety Administration (NHTSA) issued a safety advisory to U.S. consumers in October, "as a result of testing conducted by the NHTSA of airbags purchased online by ICE-HSI agents during the course of criminal investigations into the distribution of counterfeit airbags through online sales." The airbags, the report states, were ordered online directly from China or from foreign-based wholesale business to wholesale business websites, and were described as the genuine manufacturer's part. "In an effort to share information with international partners, the IPR Center transmitted an international intelligence bulletin to consumers outside the U.S. who could be at risk if these airbags are installed in their vehicles."

The 2013 Report also includes a section on educating authors about fair use, stating "the Administration believes, and the U.S. Copyright Office agrees, that authors (including visual artists, songwriters, filmmakers, and writers) would benefit from more guidance on the fair use doctrine." To that end, the Copyright Office will soon begin publishing "major fair use decisions, including a summary of the holdings and some general questions and observations that may in turn guide those seeking to apply the decisions to their own situations."

Read the full report here: http://www.whitehouse.gov/sites/default/files/omb/IPEC/2013-us-ipec-joint-strategic-plan.pdf


Problems with Picasso

Citing concerns from Italian law enforcement that the painting was part of an embezzlement and bankruptcy fraud scheme, U.S. customs officials intercepted the sale of Pablo Picasso's 1909 work "Compotier et tasse" last month. Special agents with U.S. Immigrations and Customs Enforcement located and recovered the Picasso piece in New York on May 21st, where the work was being offered for $11.5 million as part of a private sale. The United States plans to repatriate the work to Italy in the coming weeks.

The painting's current owner, Gabriella Amati, is under criminal investigation and prosecution in Italy for numerous counts of embezzlement and fraud. Prosecutors in Milan had charged Amati and her late husband, Angelo Maj, with embezzlement and fraudulent bankruptcy offenses, according to the Justice Department. Amati and Maj are alleged to have worked with a Naples government official on various schemes to misappropriate city tax receipts. These schemes to embezzle Naples' tax revenue included "the use of fraudulent service contracts, forged accounting records, inflated operational expenses and fraudulently claimed refunds to Naples taxpayers," according to the Justice Department. The couple is charged with causing Naples to sustain $44 million in losses by transferring taxes that were collected for the city to the couple's own bank accounts.


Siri, Do I Have a Claim?

A federal judge in California ruled last week that Apple does not need to compensate a photographer for the company's use of an image of actress Zooey Deschanel's band in an iPhone commercial. The commercial aired from April 5, 2010 through April 18, 2010, showing numerous images including an iPhone 3GS, a demonstration of the phone's "Shazam" application and album cover art for the band. The photo in questions appears in the video montage for less than 5 seconds of the 30-second commercial.

Taea Thale, the photographer who shot the photo, sued Apple for copyright infringement in 2011, claiming that the company lacked permission to include her photo of the band, She & Him, in the commercial for iPhone 3GS. Thale did concede that she licensed the photograph to Merge Media for "limited use in magazines and posters to promote the band's appearances," but stated that the license explicitly excluded the right to use the photo to promote other entities or products. Unfortunately for the plaintiff, U.S. District Judge Yvonne Gonzalez Rogers agreed with Apple that Thale failed to "proffer sufficient non-speculative evidence to support a causal relationship between the infringement and the profits generated indirectly from such infringement." Judge Gonzalez Rogers added that Thale "misinterpreted her burden on this motion for summary judgment and her factual support on causation is lacking." Adding to Thale's list of legal deficiencies, the judge also pointed out that the plaintiff mistakenly relied on precedent from different circuits, an error usually confined to first year law students. Thale, for instance, cites an 8th Circuit decision in Andreas v. Volkswagen of America Inc., which "reinstated a jury's profit award where the infringing use was 'the centerpiece of a commercial that essentially showed nothing but the TT coupe.'"

The plaintiff, the court wrote, also failed to prove that her photo was the "centerpiece" of Apple's commercial and helped promote the company's image. "Even assuming arguendo that these facts are undisputed, they are not material to causation, and in fact, they fail to address causation between the use and revenue altogether," Rogers wrote. "At best, Thale's facts establish that Apple liked the photo, used it, approved of the 'Concert' commercial, and hoped that it would generate sales of iPhones." Thale, in a tautological argument for the ages, also tried to argue "the only reasonable conclusion is that the intentional selection and use of the Thale photograph did have an impact in iPhone sales - no other logical conclusion can reasonably be reached." (Emphasis in ruling.) Judge Gonzales Rogers ruled, however, that "logical and reasonableness ... do not equate to causation for the purposes of this motion."

Maybe next time, Thale should ask Siri for legal advice.


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This page contains a single entry from the blog posted on June 30, 2013 1:55 PM.

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