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In the “good old days”, we used to sit down in the living room or den at a set time to watch our television shows. (And in the really old good old days we even had to get up and walk to the television to change the channel).

Things have changed just a little since then. Between the Internet, computers, laptops, tablets, smart phones, Twitter, Facebook, etc. etc., you can pretty much have your entertainment any way you want it. But how about combining any or all of those devices and delivery platforms for watching your favorite “TV” show or film? What if you could watch your favorite TV show or film on your smart phone or tablet and simultaneously send or receive text messages with hidden clues or other info about the show and simultaneously perform tasks related to the show that can score points that turn into prizes you can instantly brag about on your Facebook profile? This article describes a studio in LA (Fourth Wall Studios) that is in the process of trying to make this happen. We are looking forward to seeing if they can pull it off.

Of course, if you’re having trouble sleeping now, just wait until you can have all this fun on your smart phone in bed!

In the meantime, the intellectual property issues related to this will keep on coming. Between having to clear the content that’s being delivered and then protecting it, it’s going to be a whirlwind of activity for IP lawyers. On the protection side, we think that wrapping up the content within a great trademark and brand name – and then quickly registering the content itself with the U.S. Copyright Office – is going to be critical to limiting the inevitable piracy that will follow.

(And …coming soon to a theatre on you: mini TV screens embedded in your glasses or contact lens?).

When we talk about the inter-related worlds of intellectual property and entertainment, we often find ourselves talking about the sometimes seemingly random intersection and overlapping of talent, luck, timing, and hard work. There are, of course, zillions of examples of this in the worlds of science, sports and entertainment. But one of the most compelling of them – especially for lovers of popular music of the last half of the 20th century – has to be the story of James Brown.

Brown was born in the South at the beginning of the Great Depression. He pioneered his own brand of funk and soul music that appealed to both black and white audiences over the course of a career that rocketed to some great highs and sunk to some deep lows. There were, of course, many stops along the way – including seemingly incongruous appearances at a Richard Nixon inauguration and a concert in Boston after the Martin Luther King assassination that some have credited as helping to avoid a riot.

A new book by RJ Smith about the GFOS (“Godfather of Soul” for the unfamiliar) entitled “The One – The Life and Music of James Brown” was recently published and has been getting some very good reviews. Here is one of them. It’s worth a read to see if you would like to read the book itself.

Having said that, there is probably no substitute for seeing and hearing Brown himself. There is, of course, tons of video footage out there. But if we had to choose one, we recommend the 1964 concert film “The T.A.M.I. Show”. Although Brown had been performing professionally for a decade or more, his appearance at the T.A.M.I. show in Los Angeles was one of his first cross-over appearances and it contains one of the most kinetic unscripted original performances we have ever seen. A DVD of the T.A.M.I. show was finally released last year and Brown appears towards the end of the show – just before the Rolling Stones. You will have to decide for yourself, but for our money Brown blew the Stones off the stage – and it appears obvious to us that Mick knew it. He looks very nervous and distracted trying to follow Brown’s performance. You can find the T.A.M.I. show DVD at all of the usual online outlets for DVDs, etc.

Tomorrow we will be participating in an interesting webinar sponsored by the San Diego County Bar Association:  “The Business of Medical Marijuana”.  Our role will be to address the intellectual property issues regarding trademarks, copyrights, patents and trade secrets that come into play as the industry grows, morphs and changes.

[For more info or to register, click here ]

It goes without saying that the state’s medical marijuana laws are controversial to say the least. Although the Compassionate Use Act was enacted in 1996, the legal landscape in this area is far from clear. Add to these ambiguities the fact that marijuana remains illegal under federal law and you have a minefield of legal obstacles for attorneys offering legal advice in this area.

Despite these complexities, medical marijuana patients and groups (or collectives) continue to use, possess, cultivate, and distribute marijuana for medical purposes throughout the state. Furthermore, the CUA has survived multiple legal challenges based on federal preemption. In fact, since California voters approved the first medical marijuana law 16 years ago, fifteen other states and the District of Columbia have passed similar laws allowing some form of medical marijuana activity. Today, most cities are attempting to craft some form of regulation that both allows access to medical marijuana for legitimate patients while protecting against diversion to the black market. A recent audit by the San Francisco Controller’s Office revealed the annual gross sales of the city’s two dozen permitted dispensaries to be $41 million. Expanded to the rest of the state, medical marijuana is a $1.9 billion industry. In short, it is apparent that medical marijuana is not going anywhere and has the potential to be a huge boon to the state and local economies.

In light of the reality that medical marijuana is here to stay, the question becomes what role should lawyers play in advising clients in this treacherous legal terrain?  This brief webinar presented by two attorneys and a CPA will provide a brisk overview of the medical marijuana laws and potential legal and tax issues that may arise for these businesses in the future. Attorney Lance Rogers will provide a general overview of the medical marijuana laws at the federal, state, and local level. Suzanne Farrand, CPA, will explain some unique tax implications with regard to the operation of a dispensary and how to address these issues.   Finally, attorney David Branfman will discuss the possible intellectual property law issues that may arise for dispensaries and the ancillary businesses associated with this industry.

[For more info or to register, click here: ]

Know your rights.

Tonight the San Diego Entertainment & Sports Lawyers, in connection with Media Communications Association – San Diego, present a special meeting with a panel of three of San Diego’s entertainment lawyers: Professor K.J. Greene, Valerie Nemeth and yours truly David Branfman. Here you can gain valuable insight and ask questions on how to setup back-end deals, understand what constitutes copyright infringement and more.

Topics include:
* What is copyright?
* How is it used in entertainment deals?
* Will copyright protections censor our free access to the Internet?
* What’s in your contract for distribution?
* Are you getting your share of the action?
* Who owns the copyright and Intellectual Property to your productions?
* Is your deal on your next project the best it can be?
* Independent contractor or employee – how does that relate to work for hire?

To Register Click Here
Date: February 22, 2012
Time: 6:00pm – 9:00pm
Price: $15 Non Members
$20 At The Door
Members Free
Location: Groovy Like A Movie
2505 Kearny Villa Way
Suite 100
San Diego 92123

In the last two years mainstream movie producers (for example Academy Award winner “The Hurt Locker” and “The Expendables”) and XXX-rated adult porn studios have taken the record industry’s tactic of suing unauthorized file sharers to a whole new level. Instead of suing individual file sharers one at a time, the film producers (actually – their lawyers) have filed dozens – perhaps more – of U.S. District Court copyright infringement lawsuits in federal courts around the country which name anywhere from 20 – 25,000 “John Does” per lawsuit. (The 25,000 number is not a typo). The business model is extremely effective because the film producer only has to pay one $350 court filing fee – regardless of the number of defendants. The producer then has a virtual carte blanche to use the threat of federal court litigation to extract monetary settlements out of the entire group of targeted file sharers. This process has been referred to as “copyright trolling” and the companies behind it are often called “copyright trolls”. The film producers and their lawyers view themselves as anti-piracy advocates. It all depends on which side of the fence you sit on.

How does it work?

The lawyers for the film production company (mainstream or porn) files a copyright infringement lawsuit somewhere in a federal court against numerous “John Does”, claiming illegal downloading or uploading of movie from a BitTorrent file-sharing network. BitTorrent is a peer-to-peer file sharing protocol used for distributing large amounts of data that is similar to (but not identical to) Napster, Kazaa, etc..

The plaintiff’s lawyer then asks (and usually gets) the court to issue subpoena to various Internet Service Providers (“ISPs”) requiring the ISPs to identify the real names and addresses of the Does previously only known by their Internet addresses (e.g., 123.56.38.60). The plaintiff’s lawyer then sends demand letters to targets threatening to seek damages of up to $150,000 plus an award of attorneys fees for “willful” copyright infringement – BUT offers to settle the case quickly for anywhere from $1500 – $3500 so the target can avoid being named in the lawsuit and can avoid the cost of defending. The plaintiff’s lawyer (or a company it has set up) accepts Visa & MasterCard payments via a website. This is especially frustrating – to put it mildly – for the target who is accused of downloading/uploading porn. If the plaintiff’s settlement demand is not accepted right away, the target is advised that the settlement demand will increase dramatically within 5 – 10 days.

Why are the film companies and porn producers doing this?

They claim that their businesses are being destroyed by Internet piracy and the only way to stop it is to sue file sharers en masse. But we believe it is really all about using the threat of federal court litigation to generate quick dollars – especially because of the threat of Copyright Act damages of up to $150,000 and an award of attorneys fees. After all, settling cases for $1500 – $3500 for the downloading a DVD that might sell for $20 or even $60 is a pretty good return on the investment. The porn producers in particular would need to sell a lot of DVDs to make $3500.

But this business model depends on the plaintiff’s ability to name and threaten hundreds or thousands of targets in one lawsuit where the plaintiff has only paid one $350 filing fee to the court. If the plaintiffs have to name each target individually and pay $350 for each individual lawsuit, the costs of litigation would become astronomical and the business model would probably fail.

What’s wrong with what the film producers and their lawyers are doing?

There seems to be little doubt that Internet piracy of movies is rampant and is in fact hurting all kinds of content owners. The copyright law exists in part to protect the rights and investments of content owners. Thus at first blush what the film producers are doing is probably just this side of legal. Where it gets dicey and starts to look like a shakedown is the hardball tactics used by the lawyers and the coercive extortion-like effect of being threatened with an embarrassing public lawsuit — not to mention serious questions about the accuracy of the information the film producers allegedly gather to identify the file sharers. After all, anyone with an unsecured wireless network can have their Internet address spoofed or hacked by a neighbor or a roommate.

Lawyers for the film producers assert that these days it is negligence per se for the owner of a computer to use an unsecured wireless connection. However, we are not aware of any statute or case decision to date that supports that assertion in this context. One or more of the lawyers for the film producers may be hoping to make new law if one of these cases goes far enough.

Is anything being done to challenge this business model?

There is a loose group of lawyers around the country who have started to defend some of the targets in some of these cases. Some judges – but not all – have started to take a dim view of these “shoot first and ask questions later” cases and have dismissed some of the lawsuits for a variety of reasons including misjoinder. But the film producers and their lawyers have not been deterred; they move on to a different court in a different jurisdiction when a particular court starts to dismiss the lawsuits.

Conclusion

Whether the reverse class-action lawsuit model is a shakedown or just good proactive lawyering seems to be subject to some debate. To us the hardball tactics that are often used – especially the coercive threat of being named in an embarrassing lawsuit – seems to tip the scales in favor of this model being more of an abuse of the system than a proactive anti-piracy effort. But while people may differ about whether this is an abuse of the system or not, what we do know for sure is that there are upwards of 100,000+ targets and/or defendants around the country. The effects of this volume of litigation on the already-impacted court system could be dramatic. What is not yet clear is whether the majority of federal court judges around the country are aware of what is happening with this business model and are ready to take steps to prevent abuses of the system.

Shortly after we last blogged about the controversy over the pending SOPA and PIPA bills in the Congress, the House and the Senate essentially tabled SOPA and PIPA. Apparently the broad-spectrum protest over the two bills this past Wednesday worked. According to the L.A. Times and other news sources, lawmakers were flooded on Wednesday by phone calls and emails protesting SOPA and PIPA.

This, of course, could simply be a function of the greater ability of the companies, organizations and individuals opposed to SOPA and PIPA to rally the troops than the ability of the entertainment industry content owners to rally their troops in support. That is not meant to diminish the efforts of the opposition forces. It is just meant to highlight something we’ve said before: how you feel about SOPA and PIPA often depends on which side of the content creator/owner vs. content user fence you sit on.

Even Bill Maher, the host of his own largely anti-establishment HBO series “Real Time” expressed ambivalence last night about the side-lining of SOPA and PIPA. Why? Because his 2008 documentary film “Religulous” was pirated via the Internet and ultimately he concluded he couldn’t do much about it.

The issues of Internet piracy and what to do about it aren’t going to go away any time soon. But what is likely to happen is a modified version of the SOPA and PIPA bills that will hopefully achieve something close to the right balance between the need to substantially curtail Internet piracy and the need to protect legitimate users of the Internet from draconian consequences.

Here is an article that describes in some detail what has happened in the last 72 hours.

We have been watching this phenomenon for years. In song it’s been memorialized by the line “One man’s ceiling is another man’s floor”. In intellectual property law circles it’s been said that “One person’s theft is another person’s freedom of expression”. And so it goes with the legislation now being debated in Congress that attempts to deal with Internet piracy and the unauthorized use of content such as movies, TV shows, music, photos, etc. This legislation – the Stop Online Privacy Act (SOPA) – has caused a firestorm of controversy and protest for several months. Yesterday Wikipedia voluntarily took down its website in the U.S. in protest of SOPA.

Supporters of SOPA say it is necessary to combat the online theft of protectible content like movies, etc. Opponents say it contains draconian provisions that will stifle the public’s use of the Internet and possibly land some Internet users in jail. Where you come down in this debate probably depends on which side of the content creation and ownership fence you sit on: creator/owner or user.

As in so many arguments these days on any number of subjects, it is hard to distill the truth from the hype. In order to help cut through the hysteria on both sides of this argument, below are links to arguments for and against SOPA and to an article about a new piece of legislation that was introduced yesterday in an effort to defuse some of the most disturbing parts of SOPA.

Here is a short video which mostly addresses the arguments against SOPA.
(Many thanks to April Morris in our office for alerting us to this video clip).

Here is a link to a pro-SOPA argument posted by the sponsor of SOPA.

Here is law professor KJ Greene’s rather well-balanced analysis of SOPA and the Senate version Protect IP Act (PIPA).

Here is a link to an interesting article about a new piece of legislation that was introduced yesterday as a more balanced alternative to SOPA.

What do you think?

Over the weekend we read an article about a newspaper CEO named John Paton who is in the process of transforming the papers he runs into “digital media companies”. Whether he’s right or whether he’s wrong, he figures the traditional world of analog/print newspapers needs to morph into a digital world of tweeting, blogging, Facebook posting and video-posting – or else the journalists who work for his companies will be too late and the news they report will be stale.

It occurred to us that Paton’s message isn’t limited to newspapers and journalism: it’s hard to think of a business or entrepreneurial endeavor these days that can’t benefit by being more nimble and able to adapt to the changes around us. For a full look at the article about Paton and the changes he’s implementing, click here

I would like to express my thanks to our many clients, colleagues and friends who helped to make 2011 a very good year – economic turmoil and all. We would also like to extend our best wishes for happy holidays and a healthy new year!!

We what we do because we like it and because we want to make a difference. But we could not do it without all of you. In particular I am especially thankful to Mark Reichenthal, April Morris, Travis Nelson and Josh Oliver who all make a huge difference every day.

NEW YEAR LEGAL CHECK-UP

The following is a list of ten suggestions for starting off the coming new year by putting some of your professional and business affairs in order. Not all suggestions may be applicable to all readers, but they are designed to provide a framework for planning ahead. Make your own additions to the list as they come to mind.

1. CONDUCT AN INTELLECTUAL PROPERTY AUDIT:

The Sarbanes-Oxley Act requires all publicly traded companies to identify, value and protect their copyrights, patents, trademarks, trade secrets and other intellectual property. Corporate officers can be held civilly and criminally liable for the failure to protect the company’s intellectual property. We believe this kind of audit represents a “best practice” for all businesses – whether publicly traded or not.

2. MEET WITH YOUR ACCOUNTANT:

Have you scheduled an appointment to meet with your accountant? By planning ahead you may be able to reduce taxes and to forecast your income and expenses for 2012. Your accountant may be able to suggest ways to pre-pay certain expenses and to defer income.

3. PLAN AHEAD FOR 2012:

There are two universal keys to success in the business world: adequate planning and adequate capitalization. Take time to write down where you’d like to be one year from now and develop a written game plan to get there; be sure you’ve made some reasonable estimates as to what it will cost you to complete your plan and where the money will come from to do so.

4. REVIEW ALL CONTRACTS:

Have you taken a look recently at all agreements to which either require you to do something for someone else or which obligate someone else to you? Does the agreement need to be modified in any way to reflect changed circumstances? If so, contact the other side to see if you can work things out. Try to get important agreements written down if they are not already reduced to writing. Do you operate a website for your business and have you made sure that you have legally enforceable Terms and Conditions of use and a clear Privacy Policy in place?

5. CHECK YOUR PARTNERSHIP AGREEMENT:

Are you are conducting business as a partnership? If so, this is a good time to review your agreement; see if there have been any changes since the last agreement was written up that need to be reflected in writing. If you don’t have your agreement in writing, use this as an opportunity to do so; oral agreements are sometimes valid, but they’re difficult to enforce.

6. CHECK YOUR CORPORATE DOCUMENTS:

Have you checked to see if your corporate records are up to date and if any recent changes need to be reflected on the books of the corporation? If you’ve been considering incorporating or forming a LLC, use this as an opportunity to talk with your accountant and attorney about the pros and cons of doing so.

7. REVIEW YOUR COPYRIGHTS:

Have you reviewed all copyrightable material (websites, CDs, DVDs, screenplays, computer programs, manuals, advertising brochures, etc.) to see if you’ve placed a proper copyright notice on each and if you’ve registered the materials with the Copyright Office in Washington, D.C.?

8. REVIEW YOUR TRADEMARKS:

Have you reviewed all names, words, and logos used to describe your business to see if you’re using trademark and service mark designators on your website, letterhead, and advertising, etc.? Check to make sure that any words or names you are using are not descriptive or generic; if they are, seriously consider changing them. Also consider trademark registration to protect your marks and logos and additional domain name registrations to prevent cybersquatting. If you are conducting business under a fictitious name, be sure you have filed and published a fictitious name statement and that it’s current.

9. REVIEW AGREEMENTS WITH EMPLOYEES AND INDEPENDENT CONTRACTORS:

If you have employees or use independent contractors, is your basic understanding with them reduced to writing?; if not, you can develop standards forms for this purpose. Also double-check to see if your “independent contractors” really are; the trend recently has been for the IRS and the Employment Development Department to treat more independent contractors as employees and to require withholdings, etc.

10. DEVELOP TRADE SECRETS AGREEMENTS:

Do you have a compilation of data (a customer list, sources of supply, method of doing business) or any secret processes that are not known to the general public and give you a competitive advantage? If so, you may have a trade secret that can be protected by a trade secret policy that includes specific written understandings with your employees and independent contractors.

We hope these ten suggestions help to get your new year off to a great start. If you have additional tips you would like to share, please let us know.

Under U.S. law, a copyright in a work of authorship like a book, screenplay, song, sound recording, illustration, photograph, computer program, sculpture, work of art, etc. comes into existence at the moment of creation. (By “moment of creation” we mean when the author gets the book, etc. out of his or her head and down on paper or in some other tangible form). Initially the copyright is owned by the author/creator.

But often those copyright rights are then transferred by the author/creator to a third party like a book publisher, record label, advertising agencies, employer, etc. – especially when the author/creator is young and hungry. All is not lost, however, because copyright law provides a mechanism in some situations for the author/creator to re-capture ownership of his or her copyrights after a set number of years. Yet the vast number of works subject to termination under the Copyright Act has been largely ignored because of the complexity of the termination provisions.

This powerful recapture method allows authors (and their heirs) to terminate copyright contracts 35 years after the initial publication. This right to terminate an assignment cannot be negotiated away. Thus, the author or the author’s heir has the right to reclaim the copyright even if the original agreement stated that the assignment was permanent and irrevocable.

Terminations are a time-limited right that must exercised by those individuals entitled by statute. There is a narrow five-year termination window requiring at least two, but not more than ten years prior notice.

The termination notice deadline for 1978 grants began to expire in 2011. So authors (and their heirs) with the ability to soon recapture their rights will have to weigh the value of their existing publishing deals with today’s access to indie distributors and print on-demand technology. These termination rights only apply to domestic copyrights, leaving publishers to continue to exploit the terminated works internationally.

Of course there are several significant exceptions to this right to terminate. The first one applies to those parties who created derivative works (adaptations) prior to valid termination and the second even more fact intensive exception is for works made for hire (non-spec work).

Termination rights are of profound significance for freelance creators – including: artists, writers, photographers, designers, composers, and computer programmers – and of equal significance for the publishing, advertising, music, and other industries whom commission their works. The gray area created by works that do not clearly fall into the work for hire categories will surely propel future litigation.

What the courts should keep in mind as these issues are further litigated is that the underlying congressional intent was to give authors a second chance to exploit their works. So far the publisher’s brawn seems to be trumping the brains of the court; but with fortunes at stake the artists will not tire readily. Litigation will surely continue to draft the copyright termination rules, as this battle for rights is far from decided.

Please let us know if you have any questions regarding copyright termination. If you or anyone you know was the author of copyrightable works which were assigned more than 30 years ago, we might be able you to reclaim those valuable rights

(Many thanks to Josh Oliver, our legal intern, for his drafting of the bulk of this blog entry).