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Hurdles to suing for copyright violations

Mar 04, 2010 Hurdles to suing for copyright violations

A real tension exists between the First Amendment and the Constitution’s protections of intellectual property.

Art. I, § 8 of the Constitution empowers Congress to "promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

The First Amendment provides that "Congress shall make no law abridging the freedom of speech…"

In 1992, federal trial Judge Pierre Leval recognized, as follows, the tension between the First Amendment intellectual property protections:

"Even if there was some likelihood of confusion, I would still conclude that New York’s cover did not violate Yankee’s trademark rights. This is because the First Amendment confers a measure of protection for the unauthorized use of trademarks when that use is a part of the expression of a communicative message.

"Because the trademark law regulates the use of words, pictures, and other symbols, it can conflict with values protected by the First Amendment. The grant to  one person of the exclusive right to use a set of words or symbols in trade can collide with the free speech rights of others. When another’s trademark (or a confusingly similar mark) is used without permission for the purpose of source identification, the trademark law generally prevails over the First Amendment. Free speech rights do not extend to labelling or advertising products in a manner that conflicts with the trademark rights of others. In these circumstances, the exclusive right guaranteed by the trademark law is generally superior to the general free speech rights of others. See Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).

"However, when unauthorized use of another’s mark is part of a communicative message and not a source identifier, the First Amendment is implicated in opposition to the trademark right. In recognition of this potential conflict, the Second Circuit has construed the Lanham Act narrowly when the unauthorized use of the trademark is for the purpose of a communicative message, rather than identification of product origin. Thus, where the unauthorized use of a trademark is for expressive purposes of comedy, parody, allusion, criticism, news reporting, and commentary, the law requires a balancing of the rights of the trademark owner against the interests of free speech. See id., 875 F.2d at 998; Cliffs Notes, 886 F.2d at 493-95." Yankee Publ’g, Inc. v. News Am. Publ’g, Inc., 809 F. Supp. 267, 276 (S.D.N.Y. 1992).

When people call me about copyright infringement help, I say that I will be interested in defending the alleged infriger, and not the alleged victim of copyright infringement. That is not to say that I encourage people to run roughshod on others’ intellectual property. It is to say, however, that I worship at the altar of the First Amendment, and believe that if the First Amendment is to have sufficient meaning, it is more important to overprotect free expression than to underprotect it.

In the foregoing regard, when defending against a copyright infringement lawsuit — as with defending against all lawsuits — it is critical to analyze arguments for dismissing the lawsuit on procedural grounds. The Supreme Court on March 2, 2010, addressed the extent to which courts may consider copyright infringement lawsuits filed by people who have not registered their intellectual property with the federal government. From my initial reading of the opinion, the Court refused to permit non-registration as an automatic bar to suing alleged copyright infringers. The opinion goes into much greater detail than that, here. Reed Elsevier v. Muchnik, ___ U.S. ___ (March 2, 2010).

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