By: Shashank Upadhye
Introduction
Intellectual property (IP) is a cornerstone of modern innovation and creativity, providing creators and inventors with the legal means to protect their works, inventions, and brands. Typically, discussions about IP infringement focus on external parties unlawfully using someone else’s IP. However, there are unique scenarios where an individual or entity can inadvertently infringe upon their own intellectual property rights. This seemingly paradoxical situation can arise due to various legal and practical complexities. Below, we explore these scenarios and the underlying reasons why self-infringement might occur, along with relevant legal precedents and statutes.
Failure to Adhere to Licensing Agreements
One common scenario involves licensing agreements. When an IP owner licenses its IP to another party, the agreement often includes specific terms and conditions regarding how the IP can be used. For examples, if the IP owner exclusively licenses the IP (despite retaining ownership), then the IP owner cannot use the IP. If the IP owner later uses the IP in a way that violates these terms, they could be considered in breach of the agreement, effectively infringing on their own IP. It’s important, here, for the licensor to really understand what IP is being licensed away. If the IP owner wants to retain certain rights, then an exclusive license is not the answer, rather it is non-exclusive with the terms laid out expressly.
Example: A software developer licenses their software to a company with the stipulation that it can only be used for non-commercial purposes. If the developer later decides to use the same software for commercial purposes without adhering to the license’s terms, they could be held accountable for violating the agreement.
Example: suppose the IP owner licenses the IP to the licensee, but the IP owner continues to make improvements and then wants to utilize those improvements. The licensee could complain that the improvements belong to it and the IP owner has no rights. The licensor believes that the improvements are not subject to the license. This situation happened in Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115 (9th Cir. 1999). In this case, Microsoft was found to have violated the terms of its license agreement with Sun Microsystems, leading to a legal battle over Java technology.
Trademark Dilution
Trademark dilution occurs when the use of a trademark, even by the owner, diminishes its uniqueness and distinctiveness. This can happen if the owner uses the trademark in a way that confuses or misleads consumers, thereby weakening the brand’s identity.
Example: A fashion brand known for high-end luxury goods decides to launch a budget line of products under the same trademark. If this new line damages the perceived exclusivity and quality of the original brand, it could be seen as diluting its own trademark.
Statute Reference: Trademark dilution is addressed under the Federal Trademark Dilution Act of 1995 (FTDA) and its subsequent amendments under the Trademark Dilution Revision Act of 2006 (TDRA), codified at 15 U.S.C. § 1125(c).
Copyright Issues – Celebrities Who Use Pictures On Own Social Media
When celebrities use on their own social media pictures taken by others, it can raise significant copyright issues. Here are the key legal aspects to consider:
Ownership of Copyright
The fundamental principle of copyright law is that the creator of an original work automatically owns the copyright. For photographs, the photographer usually holds the copyright from the moment the picture is taken. This means that unless there is an agreement stating otherwise, the celebrity does not have the right to use the photograph without permission from the photographer.
Example: If a professional photographer takes a picture at a public event, they hold the copyright to that image. Even if the picture features a celebrity, the celebrity does not own the copyright unless it has been explicitly transferred to them.
Example: a potential political candidate is at a rally and gets shot in the ear. Triumphantly, the candidate pumps his fist in the air, with a photographer taking an iconic photo of the fist in the air and the bloody ear. The candidate cannot use that photo on his own campaign works or social media without authorization.
A celebrity may believe, wrongfully, that the photo snapped of the celebrity belongs to the celebrity. But the paparazzi have rights too. Paparazzi now scrutinize celebrities’ social media accounts, poised to file lawsuits as soon as an unauthorized photo is posted. These legal actions can seek significant settlements, often ranging from tens to hundreds of thousands of dollars. The tactic is simple: snap the photo of a celebrity, wait for the celebrity to post it, and then the paparazzi photographer sues for copyright infringement.
Under § 102(a) of the Copyright Act of 1976, copyright protection extends to “original works of authorship fixed in any tangible medium of expression.” While photographs of celebrities might not seem to qualify as “original” or “expressive” works, courts typically deem them original due to the “creative choices, including … their lighting, angle, and focus.” Consequently, these celebrity photos are protected under copyright law. Although most paparazzi photos are considered original works and thus have copyright protection, the Supreme Court in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC ruled that authors must register their works with the U.S. Copyright Office before filing a copyright infringement claim. Once an author receives copyright registration, they can bring infringement claims for alleged violations that occurred before the work was registered.
Fair Use Doctrine
Some uses of copyrighted material can be considered “fair use” under U.S. law (17 U.S.C. § 107). Fair use includes uses for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. However, social media posts by celebrities often do not qualify as fair use, especially if the use is commercial in nature or if the entire photograph is used without transformation. The Fair Use defense includes various considerations:
- the Purpose and Character: Non-commercial uses and transformative uses (those that add new expression, meaning, or message) are more likely to be fair use.
- Nature of the Work: Published works are more likely to be subject to fair use than unpublished works.
- Amount and Substantiality: Using a small, less significant portion of a work is more likely to be considered fair use than using the whole work.
- Effect on Market: Uses that do not harm the market for the original work are more likely to be considered fair use.
Licensing and Permission
Celebrities can avoid copyright infringement by obtaining a license or permission from the photographer. This can be a formal agreement or an informal consent. Licenses can be exclusive or non-exclusive and can cover specific uses or be more general.
Example: A celebrity who wants to post a professionally taken photo on Instagram should reach out to the photographer to obtain permission. The photographer might grant a license for a fee or allow use for promotional purposes.
Right of Publicity
Apart from copyright issues, celebrities also have to consider the right of publicity, which protects against unauthorized commercial use of an individual’s likeness. This is especially relevant if the photograph in question is used in a manner that implies endorsement or association with the celebrity.
Statute Reference: The right of publicity is governed by state laws in the U.S., such as California Civil Code § 3344, which provides for statutory damages and remedies for unauthorized commercial use of a person’s likeness.
Legal Precedents and Cases
Several legal cases highlight the importance of respecting photographers’ copyrights: BWP Media USA Inc. v. Gossip Cop Media, LLC, No. 16-00364 (S.D.N.Y. 2016): This case involved a media company that used copyrighted photographs without permission, leading to a lawsuit and highlighting the importance of obtaining proper licenses. Also, Barcroft Media, Ltd. v. Coed Media Group, LLC, 297 F. Supp. 3d 339 (S.D.N.Y. 2017): The court found that using copyrighted photos without permission for commercial gain, even with attribution, constituted copyright infringement.
Potential Consequences of Infringement
If a celebrity uses a copyrighted photograph without permission, they may face several consequences: Cease and Desist Orders; damages; and legal fees.
Inconsistent IP Management Across Jurisdictions
Global businesses often hold IP rights in multiple jurisdictions, each with its own set of rules and regulations. Inconsistent use or management of IP across these regions can lead to complications where actions permissible in one jurisdiction might infringe on rights in another.
Example: A multinational corporation patents an innovative technology in the United States but fails to secure the same patent in the European Union. If the corporation starts using the technology in Europe without securing the necessary rights, it could be seen as infringing on potential IP rights within that jurisdiction.
Statute Reference: The European Patent Convention (EPC) governs patent law in Europe and sets the legal framework for patent application and enforcement across member states.
Overstepping Boundaries of Joint Ownership
In cases where IP is jointly owned, each owner typically has specific rights and limitations regarding the use of the IP. Unilateral decisions or actions that go beyond these agreed-upon terms can lead to internal disputes and claims of infringement among the co-owners.
Example: Two inventors jointly own a patent, and one of them licenses it to a third party without the other’s consent. This action could lead to a legal dispute, with the non-consenting owner claiming that the other infringed upon their joint ownership rights.
Case Reference: Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661 (1990). This case dealt with the complexities of patent rights and the implications of joint ownership and licensing without mutual consent.
Practical Tips and Preventive Measures
To avoid the pitfalls of self-infringement, IP owners should:
- Carefully Draft Agreements: Ensure that licensing agreements and joint ownership terms are clear, detailed, and meticulously followed.
- Maintain Consistency: Apply IP management practices uniformly across all jurisdictions where rights are held.
- Monitor Use: Regularly review and monitor how IP is used internally and externally to ensure compliance with all relevant agreements and laws.
- Seek Legal Counsel: Consult with IP legal experts to navigate the complexities of IP law and avoid inadvertent infringement.
Conclusion
Infringing your own intellectual property is a complex issue that can arise from various legal missteps and management oversights. By understanding these potential pitfalls and taking proactive measures, IP owners can better protect their valuable assets and maintain the integrity of their rights.
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About Upadhye Tang LLP
Upadhye Tang LLP is an IP and FDA boutique firm concentrating on the pharmaceutical, life sciences, and medical device spaces. We help clients with navigating the legal landscape by helping on counseling and litigation. Clients call us to help move drug and device approvals along and to represent them in IP and commercial litigation. Call Shashank Upadhye, 312-327-3326, or by email: shashank@ipfdalaw.com, for more information.
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