An impassioned, darkly amusing look at how corporations misuse copyright and trademark law to stifle creativity and free speech.

 

Anyone who cares about protecting the vitality of art and democratic culture in the digital age should read this important book.
—Pete Seeger

         

Varieties of Brand-name Bullying: Excerpts from the book

Locking up music

Appropriation and visual art

Imitation is the mother of invention

Trademarked characters and images

The corporate privatization of words

Stealing the public domain

Owning facts, colors and emoticons


Locking Up Music

ASCAP Stops the Girl Scouts from Singing around the Campfire

You may think that it's O.K. for little campers to sing "Happy Birthday" and "Row, Row, Row" around the campfire for free, without asking for permission. But in fact, you may have to pay a license to a licensing society known as ASCAP. ASCAP, the American Society of Composers, Authors and Publishers, is a performance rights body that licenses copyrighted works for non-dramatic public performances. It then distributes royalties collected from those performances and channels them to the appropriate composers, authors and publishers. The system is intended as a way to assure that creators receive monies for the public performances of their works.....even some campfire songs.

In 1996, ASCAP decided that that since hotels, restaurants, funeral homes and resorts pay for the right to "perform" recorded music, and since many summer camps resemble resorts, why shouldn't they pay too? Under copyright law, a public performance occurs "where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered." Like a summer camp.

After reportedly opening its negotiations with the American Camping Association with an offer of $1,200 per season per camp, ASCAP eventually settled on an average annual fee of $257. But once ASCAP's plan went public, and people learned that the Girl Scouts were among the 288 camps being dunned, the group beat a hasty and embarrassed retreat.

Copyright Colonizes the Subconscious Mind

The subconscious copying doctrine, invented by Judge Learned Hand in 1924, lay dormant for nearly fifty years, partly because it was tethered to several stringent factual premises. A defendant had to have been exposed to the plaintiff's song. The two works had to be "substantially similar." And the period of time between an artist's exposure to the first work and the creation of the second (or in the law's formulation, "the degree of temporal remoteness") had to be short.

But then a federal court ruled that former Beatle George Harrison's 1969 song, "My Sweet Lord," unlawfully copied the Ronald Mack song made famous in 1963 by The Chiffons, "He's So Fine." The case relaxed the legal criteria needed to find that "subconscious copying" had occurred. At trial, Harrison admitted that "He's So Fine" and "My Sweet Lord" did sound "strikingly similar." Even though Harrison had composed his song six years after first hearing the Chiffons' song, the appeals court held that copyright infringement had occurred.

How Illegal Rap Sampling Revived the Music Business

Early hip-hop artists considered every sound in the culture as fair game for their creativity. The first hip-hop samplers developed a technique of "scratching," the manual rotation of a vinyl record back and forth to produce unique sounds from individual grooves. The essence of the music was a real-time performance pastiche using someone's else's recorded music.

Scratching and sampling thus shifted the locus of "originality" from the composer to the rapper and DJ, whose creativity consisted of the selection and arrangement of samples. Put another way, sampling put composers, rappers, DJs and record producers on a more or less equal footing - as appropriators of other people's music. In rap music, originality was more about an artist's live performance and improvisation, not the notes as written on sheet music.

With the proliferation of sound synthesizers and later, inexpensive digital audio and computer technologies, the musical palette for hip-hop sampling exploded. Every sound in the culture became a potential sample. Musical creativity became democratized. It became possible for anyone to draw upon hundreds of snippets of sound, modify them in novel ways, and assemble a sonic collage that might just attract an audience. In these dynamics, rap might be considered a musical analogue to open-source software: a creative milieu that is open to anyone and receptive to merit no matter its source.

What began as an underground ghetto art form in the 1970s had by the early 1990s become a $1 billion market. Naturally, as certain songs became hits, questions about who "owned" a given snippet of music became the subject of legal wrangling. After all, a hit rap song was now worth some serious money.

Appropriation and Visual Art

Illegal Art to Express Illicit Ideas

Illegal Art was the brainchild of Brewster Kahle, director of the Internet Archive, and Carrie McLaren, editor of Stay Free! magazine. Their idea was to use "forbidden" art works to demonstrate just how far intellectual property law reaches into people's everyday lives. It is not permissible, for example, to show Disney characters in naughty sexual situations, or to depict Binky the Rabbit (from Matt Groening's Life in Hell comic strip) punching the Trix rabbit.

The anti-corporate point of view was rather hard to miss. Kieron Dwyer produced a parody of the Starbucks Coffee green mermaid logo, renamed as "Consumer Whore." Tom Forsythe's "Food Chain Barbie" photographs featured nude Barbie dolls entangled perilously in kitchen appliances and immersed in food. Diana Thorneycroft offered up the Sesame Street character Bert hanging from a noose and Barney Rubble of The Flintstones with a bloody gash in his head. Heidi Cody made a point about the corporate influence of culture by creating a sampler, "American Alphabet," consisting of letters taken from corporate logos (such as the "P" from a Pez candy wrapper).

The Untold Legal Story Behind Andy Warhol's Art

For his Myths portfolio, Warhol very much wanted to paint Aunt Jemima, the seemingly fictional character associated with Quaker Oats pancake mix, syrup and oatmeal. Aunt Jemima, of course, was a trademarked version of the racist stereotype - the stout, jovial black kitchen servant whose life appeared to revolve around serving the family of her white master or employer. Quaker had, in fact, based its image on American history. "Aunt Jemima" was the name given to the female counterpart of "Uncle Tom" on Southern plantations.

"We wrote Quaker's for permission to use this image in our series," said Ronald Feldman, Warhol's friend and gallery owner. "Quaker's sent us back a threatening letter that said if we dared to do that, they would certainly take legal action. They definitely had trademarked their packaging, but they probably didn't want anyone to call attention to the face that their product had been subliminally changed in the marketplace over the years. Aunt Jemina was no longer a big black-faced lady; slowly over a period of time she had become a thinner, reddish faced person - sorta black, but sorta reddish. She was younger and had a more 'with it' bandana on her head."

Rather than risk litigation with Quaker's, Warhol and Feldman came up with an imaginative solution. Feldman had seen a charismatic black singer, Sylvia Williams, at the Village Gate in Manhattan, and thought she would make a terrific model for the image. With some trepidation, Feldman called her up, explained the legal complications with Quaker Oats, and asked if Williams would pose for Warhol. As Feldman recalled it, "She became fantastically brilliant and energized, and said, 'Are you kidding? You put me on the stand [in a court trial]! They cannot own my heritage!'" Williams was incensed that any company would claim to "own" Aunt Jemima and was only too willing to pose for Warhol.

In the end, Warhol changed the name of his print to "Mammy" not just to avoid a legal skirmish with Quaker's, but because he concluded that the real myth he was painting was not only perpetuated in Quaker's product, but in the character of Mammy popularized through Gone With the Wind.

Imitation is the Mother of Invention

Shakespeare the Imitator

Few if any works of art spring full-blown, wholly original and without antecedents, like Athena from the head of Zeus. The Greek legend of Pygmalion was the basis for a George Bernard Shaw play of the same name and later for the musical, My Fair Lady. The great copyright scholar, Melville Nimmer, has said that West Side Story would infringe Romeo and Juliet had Shakespeare been able to copyright it. But then, Julius Caesar was a derivation of Sir Thomas North's 1579 translation of Lives of Noble Grecians and Romans, by Plutarch. The chain of creative appropriation is tangled and long.

If any work of art could not draw upon prior material with impunity, then Shakespeare would be quickly adjudged a thief. Writes Judge Richard Posner:

Measure for Measure would infringe Promos and Cassandra, Ragtime would infringe Michael Kohlhaas, and Romeo and Juliet itself would have infringed Arthur Brooke's The Tragicall Historye of Romeo and Juliet, published in 1562, which in turn would have infringed several earlier Romeo and Juliets, all of which probably would have infringed Ovid's story of Pyramus and Thisbe - which in A Midsummer Night's Dream Shakespeare staged as a play within the play. If the Old Testament had been copyrighted, Paradise Lost would have infringed it, not to mention Joseph and His Brothers.

Disney Privatizes the Classics and Folktales

When the Fox network planned a Peter Pan half-hour cartoon series based on J.M. Barrie's public-domain work, the Disney Company said that Tinkerbell could only be presented as a single point of light because Disney animators had come up with the idea of portraying her as a young woman. Fox retorted that J.M. Barrie himself had described Tinkerbell as a slightly plump girl "gowned in a skeleton leaf, through which her figure could be seen to best advantage."

Disney has also claimed the folk tale of Snow White as its own. In 1989, when the Academy of Motion Pictures Arts and Sciences opened the annual Oscar awards ceremony with a song-and-dance number spoofing Snow White, Disney demanded an apology. It felt that the sketch besmirched the innocent, wholesome image of Snow White, one of Disney's most valuable intellectual properties.

When the Academy refused to apologize for its parody, Disney threatened a lawsuit, prompting the New York Times to jest that Disney should be given the "Can't Take a Joke" award. Cartoonist Garry Trudeau drew a fanciful strip in which a furtive Snow White secretly meets with a journalist to talk about her ill treatment by Disney. In the last panel of the strip, a Disney lawyer materializes to take Snow White away, whistling, "Hi ho, hi ho, it's off to court we go!" On another occasion, the mere threat of litigation by Disney was enough to stop a French AIDS awareness campaign featuring Snow White in suspenders and fishnet stockings and Cinderella striking a seductive pose.

Trademarked Characters and Images

The Legal Lockdown of Barbie

Mattel's aggressive control over its icon, oddly enough, has provoked contempt among both lovers and haters of Barbie. Critics of the Barbie ideal in 1989 formed the Barbie Liberation Organization, a project of "culture-jamming" (r)(tm)ARK group ("art-mark"), to stage cultural events that mock the doll. In one of its more famous gambits, the group in 1993 furtively switched the voiceboxes on 300 talking versions of Barbie and G.I. Joe dolls sitting on store shelves. The goal was to have unwitting consumers buy Barbies who would then yell, "Vengeance is mine!" and G.I. Joe's who would sigh, "Let's plan our dream wedding." Stickers on the packages advised consumers to call their local media to report the subterfuge.

Mattel's protests about unsavory depictions of Barbie are hilariously ironic given the doll's origins in the 1950s as a German "street walker" doll, "Lilli," an adult novelty gift and collector's item, which itself was inspired by a cartoon character in the newspaper Bild. Ruth Handler, the creator of Barbie, adapted the German doll (dare anyone say "stole"?) and transformed it into the all-American doll we all know today. Like Disney, Mattel thinks it is fine to borrow liberally from the public domain or competing products, but no one is allowed to mess with "its" product.

Mattel is legendary for fighting unauthorized depictions of Barbie. So it comes as a surprise to learn that Barbie can trace a direct lineage to "Lilli," a German adult novelty doll from the 1950s (pictured here) that Mattel took the liberties to adapt.

Evoking Celebrity Personalities is Prohibited

Comedian Johnny Carson brought a lawsuit against a portable toilet maker who named his enterprise "Here's Johnny," the phrase that Carson's sidekick, Ed McMahon, always used to introduce Carson's nightly monologue. The portable toilet advertised his product as "The World's Foremost Commodian." The King of Comedy wasn't laughing. Carson claimed that his men's clothing company used the phrase "Here's Johnny" on its labels and marketing; the use of "Here's Johnny" by another company, he said, represented unfair competition and an infringement of his publicity rights.

A federal appeals court ruled for Carson, finding that there was a "likelihood of confusion" that consumers would falsely associate the toilet company with him. It declared that because the public tends to associate the words "Here's Johnny" with "Johnny Carson," the toilet company had unfairly evoked Carson's identity without his permission!

The aftermath of this 1983 case leads one to wonder: Will Judy Garland's estate be able to sue anyone who tries to exploit the image of ruby slippers, which are forever associated with Garland's legendary performance as Dorothy in the Wizard of Oz? Will Frank Sinatra's publicity rights be violated when a corporate executive also claims to be the "Chairman of the Board"?

The Corporate Privatization of Words

You Must be Socially Acceptable to Use the Word "Olympics"

In the early 1980s, the nonprofit San Francisco Arts & Athletics organization initiated plans to convene a "Gay Olympic Games" in San Francisco. The event sought to emulate the traditional Olympic Games with its ceremony, competition and international goodwill, with the notable difference that it would feature gay athletes....A few months into the planning of the Games, the organizers received a shock. The United States Olympic Committee informed them that it was illegal for them to use the word "Olympic" to describe or market their games. Since 1950, it had been a criminal act for anyone to use the word "Olympic," "Olympiad," "Citius Altius Fortius," or any combination of these words.

....In the USOC's lawsuit against San Francisco Arts & Athletics, a federal district court upheld Congress' authority to grant the USOC exclusive use of the word "Olympic" without having to prove that unauthorized uses were confusing. It also found no violation of the First Amendment. These rulings were upheld by the Ninth Circuit, and then appealed to the U.S. Supreme Court.

In 1986, the Supreme Court reaffirmed by a 7 to 2 margin the lower court's ruling in San Francisco Arts & Athletics, Inc. v. United States Olympic Committee. The USOC's monopoly over words, the Court held, amounted to "incidental restrictions on First Amendment freedoms" when balanced against the "substantial governmental interest" of giving the USOC "an incentive to continue produc[ing] a 'quality product'."

....In a dissent at the circuit court level, Judge Alex Kozinski had noted this very point: "It seems that the [United States Olympic] Committee is using its control over the term Olympic to promote the very image of homosexuals that the [Athletics Group] seeks to combat: handicapped, juniors, police, Explorers, even dogs are allowed to carry the Olympic torch, but homosexuals are not." But the Supreme Court rejected this argument, saying that the USOC was not sufficiently a government agent for the Equal Protection Clause to apply.

The Value of Godzilla? Priceless!

The term "Godzilla" is commonly used as a synonym for a giant monster. So should its trademark owner, Toho Co. Ltd. of Japan be able to shut down derivations that use "zilla"?

That's what happened to Dave Linabury, the owner of an online humor website, Davezilla.com. In August 2002, Toho sent Linabury a "nastygram" letter claiming that the domain name and its use of a "'reptile-like' character as well as a 'monster-like' character.... constitutes a trademark infringement and confuses consumers and the public into believing that your "Godzilla" character originates from Toho, which it does not."

The idea that anything that is "reptile-like" or "monster-like" and associated with the phenomes "zilla" belongs to the trademark holder of Godzilla is daffy, of course..... Toho has ignored many other derivations using "zilla." It has not apparently gone after Mozilla, the open-source version of the Netscape browser; Issuzilla, a software bug-reporting system; Go!zilla, a software download program; or Budgiezilla, a mock-movie advertisement on the Web about giant birds that destroy a city. Paul Allen Levy, an attorney with the Public Citizen Litigation Group, noted that the Patent and Trademark Office's electronic database features a number of trademarks ending in "zilla," including "bosszilla, bootzilla, dogzilla, webzilla and bockzilla."

One wag captured the real significance of the Davezilla legal quarrel: "Coming soon: 'Lawyerzilla: The Monster That Ate the World!"

A screenshot from the Davezilla.com website

Stealing the Public Domain

West Publishing's Claim to Own Page Numbers - and the Law

One of the more creative copyright claims, made by West Publishing Co. of Eagan, Minnesota, is that the company owned copyrights on the page numbers of the federal court decisions it published. What might seem like a bizarre assertion of copyright protection was in fact a key legal argument by West for preserving its multi-billion-dollar market monopoly in the publishing of federal court cases.

The practice of law in the United States revolves around the citation of legal cases by their page numbers. All attorneys, judges, legislators and legal scholars must refer to the specific volume and page number of a given case, as reported in the official court reporter.... The public paid a dear price for West's monopoly. Based on a license that West had granted to the U.S. Justice Department, Love calculated that the cost to a single user of accessing a single year of federal court cases (or approximately 15,000 cases) was $40,500. Neither West nor LexisNexis offer their online legal products to public libraries for their patrons to use; what is offered is accessible to librarians, and it costs $14 per minute to use, plus printing costs. This means that the public and pro se litigants (people who represent themselves in court) generally cannot get free or inexpensive online access to court cases even though, as taxpayers, they already finance the entire court system.

In 1998, the absurdity of allowing copyright law to protect the pagination of federal court cases finally came to an end. Legal publisher Matthew Bender & Co. won a federal lawsuit declaring that the elements of West's case reports that other legal publishers sought to copy were not copyrightable. HyperLaw, an intervenor in the case, won a declaration that it could publish redacted versions of West's case reports without infringement. Anyone may publish federal court decisions, complete with the page numbers selected by West, with impunity.

I Have a Dream...That Someday All of Public Life Will be Copyrighted

Martin Luther King, Jr.'s famous "I Have a Dream" speech, delivered on August 28, 1963, is a work that arguably belongs to everyone. It is a fascinating paradox that one of the greatest speeches in American history is in fact a strictly controlled piece of private property. It is owned by King's estate, consisting of Coretta Scott King and her four children. The estate actively licenses the right to reproduce Dr. King's works, and has sued news organizations and scholars for using excerpts of King's speeches without permission or payment. One of the most meaningful moments in American public life, a bracing call to human dignity and progress by one of America's great leaders, is available only to those who can curry favor with the King family or pay them enough money....

Dexter Scott King, Dr. King's son, believes that people should not be allowed to exploit Dr. King's memory without paying something to the estate. As he told the New York Times, "It has to do with the principle that if you make a dollar, I should make a dime." For her part, Coretta Scott King said she only wants to promote Dr. King's message. "It's difficult and it's challenging when people desire in their own way to exploit the message and the mission of Dr. King for their own personal gain," she told the New York Times. "Yet when we seek to perpetuate the legacy in the way the Holy Ghost has told us to perpetuate it, and we just so happened to be blessed financially by it, it saddens me that people are confused. If it were your daddy, what would you do?"

The King estate clearly is not confused about its interests. It wants to leverage The Speech for some serious money. In 2001, it licensed the rights to the speech to Alcatel, a communications firm, for a television and print ad campaign. The ad features the Reverend King delivers his soaring sermon to a vast empty space; through the miracle of digital editing, the Mall is utterly empty. A narrator intones: "Before you can inspire, before you can touch, you must first connect. And the company that connects more of the world is Alcatel, a leader in communication networks."

The family also licensed Dr. King's speech to Cingular, the wireless telephone carrier. A company spokesman explained it wanted to use Dr. King's image because the wireless marketplace is "a ghetto of competing rate plans." Ouch.

Owning Facts, Silence and Emoticons

The Next Form of Private Property - Facts?

Copyright law has never protected raw factual information, which is considered part of the public domain. But it does protect compilations of data that have been selected, coordinated or arranged in an original way. Databases are also protected by federal laws such as the Computer Fraud and Abuse Act and state laws dealing with contracts and misappropriation.

But under the Database and Collections of Information Misappropriation Act, a bill introduced by several Senators in 2004, the traditional scope of copyright protection would be radically expanded. Database vendors could have legal protection not just for their artful selection and compilation of facts, but in the facts themselves!

Public Knowledge, a leading advocacy group fighting this legislation, has pointed out that "when a Western novelist researches in the Encyclopedia Britannica the history of the state of Utah for a new book, nothing in his or her publication of that book will diminish the value of Encyclopedia Britannica in the slightest, so long as the novelist did not infringe on the copyrighted particular expression of information in the Britannica article." Yet under the proposed database legislation, the ordinary researcher might well encounter copyright restrictions in using "proprietary" facts.

A Legal Monopoly Over Silence

Does silence belong to all of us, or can someone own it and charge money for it? It sounds like a silly question. But not, apparently, to the British licensing agency that collects royalties for the performances of composers' works.

A controversy over the sounds of silence began in 2002 when avant-garde composer Michael Batt performed "One Minute's Silence," which was exactly that. In the program notes for the performance, Batt decided to pay tribute to experimentalist composer John Cage, who in 1952 had pioneered a similar performance piece called " 4'33"," which was precisely four minutes and 33 seconds of silence. Batt also put "One Minute's Silence" on his album, Classical Graffiti, performed by The Planets....

In the program notes for Batt's performance, he listed the composers of "One Minute's Silence" as "Batt/Cage." He gave a credit to Cage "just for a laugh," he later told the Independent of London. This attribution was sufficient, in the eyes of the Mechanical-Copyright Protection Society, the British agency that collects royalties for music performances, to demand payment. MCPS sent Batt its standard license form, seeking a royalty on behalf of Cage's estate.

Batt was nonplussed: "My silence is original silence, not a quotation from his silence. Mine is a much better silent piece. I have been able to say in one minute what Cage could only say in four minutes and 33 seconds." Batt's mother asked her son, "Which part of the silence are they claiming you nicked?"

Who Owns the "Frowny" Emoticon :-( ?

What happens when a company obtains a trademark on one of the most frequently used symbols of online life, the "frowny" emoticon? For millions of Internet users, the symbol rendered as " :-( " - a sequence of keyboard's colon, dash and parenthesis mark - is an arch way to convey sadness in email messages.

But is this widespread practice still legal? In 2001, Despair, Inc., a Dallas-based maker of spoof inspirational merchandise for the corporate world, played a colossal practical joke that exposed the absurdities of current copyright trademark policies.....Despair sought to have its corporate logo, the "frowny" emoticon, declared a legal trademark. It applied in 1998, and two years later, the U.S. Patent and Trademark Office actually awarded Despair a trademark in the emoticon [registration #2347676]. On January 2, 2001, Dr. E.L. Kersten, the Founder and COO of the company, announced plans to sue "anyone who uses the so-called 'frowny' emoticon, in their written email correspondence. Ever."

Playing the gag for as much as it was worth, the Despair press release announced that the company had "filed suited yesterday in a U.S. District Court in Dallas, alleging trademark infringement against over seven million individual Internet users. The company has requested separate injunctions granted against each. It is believed to be the largest single trademark dispute in history." The company even claimed it had used the FBI's controversial "Carnivore" Internet wiretapping system to identify the seven million individuals who had illegally used the :-( symbol in email.