Spanish explorer Ponce de Leon tried to cheat
one of the two inevitables of life- death and taxes.
After hearing enough unsubstantiated rumors to satisfy
a few Big East newspaper standards, he wandered
around Florida looking for a Fountain of Youth.
Ponce wasn’t the first, nor was he the last,
to look for longevity. Owners of intellectual property
frequently wish for a Fountain of Youth to extend
the life of their copyrights or patents.
Dwight D. Eisenhower wrote a book about World War
II entitled Crusade in Europe. Even when converted
to 2003 dollars, it’s a safe bet that his
advance was somewhat lower than the 8 million dollars
paid to former first lady Hillary Clinton. Eisenhower’s
publisher, Doubleday, obtained a copyright on the
book and licensed the TV rights to 20th Century
Fox, who produced a copyrighted TV series.
Back then, copyrights had to be renewed. In the
1970’s, Doubleday renewed its copyright on
the book by paying the appropriate tax. Fox, for
some reason, let its copyright die a natural death.
About a decade later, Fox licensed its rights to
New Line for the burgeoning video market.
In the 1990’s, a company by the name of Dastar
wanted to expand beyond its market of musical CDs
into video. Anticipating a renewed interest in the
war on the fiftieth anniversary of peace, Dastar
produced a video set called Campaigns in Europe.
Dastar copied and edited Fox’s original TV
series. Not only did Dastar copy, it sold to discounters
such as Costco and Sam’s club, which drastically
lowered the price. Selling to discounters is guaranteed
to bring on the wrath of any intellectual property
owner.
Sure enough, Fox sued to enforce the copyright in
the book and tried to resurrect some kind of protection
in the original TV series. The case wound up before
the Supreme Court. Unlike its last intellectual
property case, which involved Victoria’s Secret
lingerie, one can almost detect a more relaxed court
as it contemplated war videos.
Fox had to be worried because even though the Dastar
video series is based on the book and the book still
has a copyright, much of the Dastar video used public
domain clips. So, to bolster its case, Fox presented
the unique theory that, even though its copyright
on the TV series expired, it had developed trademark
rights to the series. In other words, Dastar unfairly
competed because the public would think that the
Dastar series was really produced by Fox.
A more traditional trademark infringement case involves
products, such as hot dogs. Imagine going into a
grocery store and looking for Armour hot dogs. Sitting
next to the packages of Armour are succulent packages
of Amour, for hot dog lovers. Trademark are indicators
of origin or source, whether the source is the actual
manufacturer or the seller (think Craftsman tools,
sold by Sears but manufactured by someone else).
Because customers would likely to be confused and
think Amour dogs were related to Armour dogs, Bingo!
you have a trademark infringement case.
But applying trademark law to videos and books?
Although it sounds nuts, when you think about it,
Fox’s approach isn’t all that crazy.
Some authors have tremendous brand name appeal;
J. K. Rowling, Anne Rice, James Patterson to name
a few. Would you knowingly buy a Harry Potter book
from another author? Maybe, but not solely by its
cover. Instead you’d wait until after the
reviews came out to say the quality was the same
as an original J. K. Rowling. Reviews aren’t
needed for brand name authors.
Fox also relied on a fairly common practice of using
trademark law to extend design patents. For example,
when a perfume maker creates an unusual bottle shape
for its new perfume, trademarking the shape takes
time. Customers have to come to recognize and affiliate
that shape with that perfume. A bottle of Chanel
No. 5’s boxy shape and cut-diamond like top
stopper is widely recognized due to years of advertising.
To keep competitors from copying a product shape
while trademark rights are incubating, a company
can obtain a design patent and lock up the rights
in the design for 14 years, which is plenty of time
to obtain a trademark. Like diamonds, active trademarks
are forever.
Alas, the court didn’t buy into the concept
of extending copyrights via trademarks. The court
said that the source in unfair competition does
not encompass the source of the ideas contained
in the videos or books; instead the source is the
producer of the actual book or video. In other words,
it’s still difficult to trademark an author’s
name.
Overlying all of this is another Supreme Court case
decided last fall. That case challenged the recent
20 year extension of copyright protection. Copyrights
are now good for the life of the author plus 70
years. The court’s decision upheld the extension
as lawful, much to the delight of businesses who
have large copyright portfolios nearing death. Disney
is one beneficiary frequently mentioned. All of
which goes to prove what lobbyists have known for
years, that when it comes to elective office, legislators
like that Fountain of Youth too. Originally Published in the Fort Worth Businss Press |
