TheExpressive

Three Days in January that Made Copyright History

2012-01-27T12:06:00.000-06:00

Three days in January 2012 witnessed some of the most important events in recent history in the world of copyright.

On January 18, the Supreme Court issued Golan v. Holder, which held that Congress is empowered remove works like the symphony classic Peter and the Wolf from the public domain in the United States, preventing orchestras, musicians and others from using these works unless they get permission and pay a license fee to the copyright holders.

On the same day, the technology community mobilized millions of people to voice their disagreement with SOPA and PIPA, two bills supported by the entertainment industry that were designed to fight online piracy. After blackouts by Wikipedia and protests encouraged by tech giants like Google, by January 19 most members of Congress had withdrawn their support for both bills.

On January 20, the United States arrested Kim Dotcom. He was arrested in Auckland, New Zealand for a file-sharing site called Megaupload.com that was based in Hong Kong. The site allegedly generated over $175 million by illegally copying and distributing music, movies and other copyrighted material without authorization.

What does all of this tell us? Three important things.

First, protection of our country’s intellectual property relies on international cooperation. For us to arrest Mr. Dotcom, who is alleged to have stolen millions from American content creators, we needed the help of authorities in Hong Kong and New Zealand. Which is where Golan v. Holder comes in: no one likes hearing that Peter and the Wolf and other classics have fallen out of the public domain and back into exclusive ownership, but for our country to benefit from international copyright treaties, we also must abide by them. International treaties are what prompted Congress to pull certain works out of the public domain, and what prompted the Supreme Court to reach the conclusion it reached in that lawsuit.

Second, if we didn’t recognize it before the rise and fall of SOPA and PIPA, there’s no denying the tension between content creators and content providers; between the entertainment industry and the technology industry. Our technology is intertwined with our entertainment and our content, so we need these camps to work together. Unfortunately for now, the tension is insurmountable: technology camps want free flow of information while content creators want protection for their original works. Ultimately, these two teams will have to reach a compromise, and Congress cannot ignore the need to protect American intellectual property from online international piracy, like the theft allegedly coordinated by Mr. Dotcom.

Finally, the online protests of SOPA and PIPA mobilized a new segment of concerned citizens. Google claims it gathered over seven million signatures in 24 hours in opposition to the bills. The implications of that statistic are at the same time impressive, intimidating and infinite.

Recent Interview on TV about Recapturing Copyrights

2011-10-21T11:32:00.000-05:00

Recently my law partner, Stephanie Taylor, and I were interviewed by Jesse Goldberg, on his show, “Mind Your Own Music Business.” Following up on an article that I wrote for The Tennessean, we discussed copyright recapture rights.

This is a very important issue right now for any authors and heirs of original works who transferred rights in their copyrights in the past under the 1976 Copyright Act, which affects works first published on or after January 1, 1978. Thirty-five years after the initial transfer, a five year window opens up during which the authors/heirs may provide notice of their desire to recapture the copyrights that they previously transferred. To make it more complicated, authors and heirs must provide notice of their intent to recapture no earlier than ten, and no later than two, years prior to the notice being effective. Thus, for those authors wishing to recapture copyrights that they transferred in 1978 (for which the five year window opens up in 2013 and runs through 2018), the minimum two-year notice prior to the five year window is right now in 2011.

We discussed a variety of issues, many of which have not made their way to the courts yet, but surely which will require litigation. These included whether sound recordings are considered works for hire, and thus not eligible for recapturing; whether session musicians, producers, sound engineers, and others might qualify as authors; and the gap grant problem for those authors who entered into contracts transferring their copyrights pre-1978, but who didn’t create or publish their works until after January 1, 1978. We also discussed how Nashville courts likely will be called on to decide some of these significant legal issues in the coming years, given Nashville’s importance in the entertainment, publishing, and technology industries.

As soon as the show airs on TV and is up on the web, I'll update this post and provide links.

Celebrating Two Years of WaterCooler: Young Entrepreneurs Networking in Nashville

2011-09-19T09:56:00.001-05:00

Two years ago, I was talking with my friend Wade Munday about how I wanted to start a fun, informal, monthly event for young entrepreneurs in Nashville to meet each other. The goal was to provide networking opportunities and to learn about interesting topics or hear from speakers within our own age range (20s through 40s). He helped me come up with the name WaterCooler, which sounded a lot better than CornerOffice and other names that we considered. Then he moved to Boston for a year before coming home and getting married.

My friend Renata Soto, who runs Conexión Americas, graciously agreed to co-chair and co-host these events with me. Our first speaker was Kimberly Pace of Owen Management School at Vanderbilt University, who talked about personal brands: how each of us creates a personal brand with every action or inaction that we take. We hosted the first one at Cantina Laredo, which had awesome guacamole and margaritas, but didn’t have the best acoustics. We later moved to 1808 Grille at The Hutton Hotel, which provided a rock star environment, but was too small for our growing crowds. Then we moved to Miro District. We decided it was time to take the show on the road.

During that time, we hosted some amazing speakers, ranging from Becca Stevens, who talked about her work with former prostitutes at Magdalene and Thistle Farms, to Clint Smith of Emma, Laura Creekmore, who gave an overview of social media (which now seems like it was eons ago), and Alan Young of Armor Concepts, whose products I see on billboards all around the city.

Our first field trip was to Yazoo Tap Room, where Linus Hall and Neil McCormick gave everyone a tour of their brewery and free tastes of Yazoo. That event turned out to be our most popular yet, and it showed us that WaterCooler was good not only for participants (who, in that case, reaped free beer) but also for the hosts whose businesses we showcased, because it gave them an opportunity to connect with their audience and further build brand loyalty. I know, for myself, that I buy a lot more Yazoo beer now than I did before, because I heard Linus’ story and know how fresh it is, in addition to merely wishing to support the local economy.

From there, we realized that our niche was really in focusing on locally-owned businesses and entrepreneurs, and not just hearing from a variety of speakers in our age range. We went to Oliver & Sinclair Chocolate Factory, which was so jam packed that we had to turn people away at the doors for fear of overcrowding/fire marshals. We also visited Corsair Distillery and heard from Darek Bell and his partner. More recently, we toured CentreSouce, then walked down the street to City House for drinks.

Our hope in doing this, in hosting and starting WaterCooler, was to build connections, for ourselves, and with each other. We want folks to come whenever they’re inspired by the topic or have an interest in the location or the host or the product. But we didn’t want to do anything that required people to sign up for one more commitment. Everyone has enough of those already. Because of that, we don’t have an official membership, and we don’t ask people to pay dues.

We know that we are achieving our goal, because we have made connections with you resulting in new clients for our businesses/practices, new donors for our non-profits, new jobs, and more generally new friends. And we know that you have done the same. Emma has gotten new clients because one person who attended was impressed with Clint Smith's story. And at least one person has gotten a new job because of a relationship she made while trying to attend our event at Olive & Sinclair. These are the sorts of things we want to happen with WaterCooler. If you have more examples of good connections that you’ve made, or if you have interesting locally-owned businesses based in Nashville that you want to highlight, please let us know. These are the stories that we want to help you tell.

Using Technology to Tap into New Sources of Revenue: Highlights of Technology Panel at Bone McAllester Norton

2011-09-07T09:50:00.000-05:00

Recently my law firm hosted a panel on technology. It was a packed audience, and more guests showed up than rsvp’d, showing us that this was a topic that people really want to know more about. Usually law firms invite clients and friends to hear about risks or changes in the law. This event was all about business opportunity.

Since the beginning of 2011, I’ve given 1-2 speeches a month on the legal issues involved in using social media. These talks typically have revolved around social media as a marketing tool, but not necessarily linked directly with creating new revenue. At our tech panel, we wanted to focus instead on how companies and individuals can use technology to create new streams of revenue. How can they tap into new revenue sources by creating their own apps, games and contests? And what is on the horizon that none of us has even contemplated?

We invited an expert panel, comprised of David Owens of Vanderbilt University Owen Graduate School of Management, Nicholas Holland, CEO and Founder of CentreSource, and two of our clients, Parker Polidor, CEO and Co-Founder of Cell Journalist and Carter Hopkins, CEO and Co-Founder of City Streak, LLC. Our audience was made up of leaders of financial institutions, educational institutions, technology companies, start-ups, developers, and venture capital firms. We asked our panel and our audience to focus on three things: (1) using technology to create new revenue streams, (2) tapping into the growing technology sector here in Nashville, rather than shipping assignments out of state to Silicon Valley or Texas, and (3) using our panelists’ stories as inspiration.

David Owens kicked off the discussion by talking about how companies that develop technology these days are recruiting high school students and high school graduates rather than college graduates, because young people are so connected with technology these days. He talked about how younger people are physically developing stronger hands, fingers and forearms as a result of constantly using Smartphones, and how marketing firms are beginning to place signs and advertisements at foot level and knee level in stores, rather than overhead, because our bodies are getting used to looking down at a hand-held device all day, rather than looking up. These are just some of the physiological and physical changes that are taking place from an evolutionary perspective, based on our recent adoption of certain technological devices.

Nick Holland did a great job providing an overview of how businesses can tap into technology from a variety of perspectives and in order to accomplish multiple goals. His company is one of the fastest growing technology companies in America, and its based right here in Nashville. Already as a result of our panel, members of the audience have hired CentreSource to help them with their needs. This is great for them, for CentreSource, and for Nashville.

Parker Polidor shared his company’s amazing story, which deserves far greater recognition in Nashville than it currently has. Cell Journalist is one of the biggest connectors and providers of user-generated content (UGC), such as videos of the floods captured from the Northeast over the past few weeks on individuals’ cell phones, which they then upload to various local and national news stations across the country. As a direct result of the panel that we hosted, Cell Journalist was approached by one of the nation’s largest media conglomerates and is in the process of negotiating additional work.

Finally, Carter Hopkins, who was the youngest person in the room, and had just graduated from college at SMU in May 2010, captivated the audience by telling his story of how he and his business partner invested just over $10,000 to start this company, which already has thousands of fans and followers on Twitter and Facebook. His company is similar to a combination of The Amazing Race and Groupon, which lets its target audience of individuals in college and recent graduates go on scavenger hunts in urban locations around the country. They hunt for prizes and the game is based on speed and skill. They also realize that they are in a unique position to help companies promote their products and services by incorporating them into the scavenger hunt as clues. One of my take-aways from the morning was a conversation after the event with one of the older attendees, who said how inspired she was by Carter’s presentation. She said it got her wheels spinning and that she is already thinking about new ways she can incorporate similar concepts into her own app.

Congress Should Take up Conyers' proposal to Clarify Copyright Law

2011-08-29T13:30:00.002-05:00

Today's New York Times reports that Rep. Conyers is calling on Congress to revise the Copyright Act to clarify that recording artists are entitled to recapture ownership over their copyrights in sound recordings. As the article explains, and as I referenced in my last blog post, questions exist whether transfers in copyrights in sound recordings (like other works) may be terminated, or whether they are "works made for hire," disqualifying them from being recaptured/terminated.

The article indicates that the big four record labels and their allies in Congress may prefer to ignore the issue and let the courts decide it. While such strategy would undoubtedly provide job security for us copyright litigators, it seems to make little sense for anyone else. This is an issue that Congress can and should decide now, putting recording artists in the same camp as every other type of author, with all of the same rights.

Regaining Ownership over Copyrights

2011-08-23T15:23:00.001-05:00

The Tennessean recently published my article on recapturing copyrights. You can see a copy of it here or read what I wrote here:

If they’re not scrambling yet, Nashville songwriters, recording artists, publishing houses and labels soon will be as they jockey to control copyrights. Starting this year, authors can begin to give notice to terminate the transfer of any copyright that was published on or after January 1, 1978.

Generally, whoever owns the copyright owns the right to distribute, sell and reproduce the work in question, whether it be lyrics or music to a song, sound recordings, motion pictures, manuscripts, software, architectural designs, or photographs. When an author transfers ownership, he or she loses those rights. But by terminating the transfer, authors redirect royalty streams away from the current owners (labels, publishers, and so forth) and back to the original authors.

A five year window opens up 35 years after publication, allowing authors to terminate transfers they made in the past. For those works published in 1978, the first opportunity to terminate the transfer will be in 2013. (For works published or registered prior to 1978, different rules apply, but authors can still recapture their copyrights.) The Act requires authors to provide at least two years notice, so those who want to terminate their 1978 transfers in 2013 must send notice in 2011.

Historically, when working to get established, authors (be they poets, songwriters, filmmakers or sculptors) have had little leverage with their publisher or label. In exchange for receiving financial advances and getting published, young authors often must transfer ownership of the copyright in the work to the publisher/label. For example, Garth Brooks currently has a lot more negotiating power than newer artists because he has a track record of producing huge hits.

Recognizing the uneven bargaining power that authors possess when first trying to make it big, Congress leveled the playing field by giving them the ability to recapture the copyrights they transferred to the publisher/labels 35 years ago. Whether an artist’s record contract says he has created a work made for hire, or whether she has signed a contract promising never to terminate the transfer, it doesn’t matter because the right to terminate transfer is irrevocable.

Congress left open many unanswered questions that courts across the country will have to answer. With Nashville’s stature in the music and publishing industries, as well as our growing technology community, this has the potential to wreak as much havoc on business as the switch from vinyl to digital. Given the impact of this law on our own community, I feel certain that Nashville’s federal courts will be in the center of this storm.

The rules in this area are complicated, even to many lawyers. They are highly technical and require jumping through many hoops. Once the window to recapture closes, it generally closes for good. Authors who are interested in recapturing their copyrights should start working on this right away, take this into account when writing their wills, and enlist professional help from a lawyer in this field.

Entertainment Industry's New Copyright Alert System May Create New Form of Evidence in Copyright Infringement Lawsuits & Lead to Higher Damages

2011-07-21T13:58:00.000-05:00

It was big news earlier this month when many of the big entertainment companies entered into an agreement with Internet service providers (ISPs) regarding efforts they will take to self-regulate and self-police copyright infringement. The name of this plan is the "Copyright Alert System."

According to the Wall St. Journal and the Center for Copyright Information, the plan has six steps, from the mildest (in issuing warnings), to the intermediate (in requiring users to acknowledge that they received notice), to the most severe (in slowing down the speed at which alleged infringers may access the Internet).

As a copyright lawyer who goes to court to resolve disputes, I am most interested in the intermediate step. It strikes me that if users are forced to acknowledge that they have received a warning that their conduct may constitute infringement and yet they proceed forward anyway, the fact that they acknowledged such warning may be used against them in a copyright infringement action. The ISPs will not be releasing the identity of these users voluntarily. But a court can always grant permission to subpoena material showing that they took this intermediate step. This new policy may be opening up a whole new world of evidence of willfulness that can be used against people who knowingly infringe on others' copyrights. And willful infringement entitles copyright plaintiffs to increased money damages.

"Always On," Consumers Expect Businesses to Embrace Technology Even More

2011-07-19T11:01:00.000-05:00

In this new iPhone world, where consumers can download an app at the press of a button, businesses must embrace technology or risk being left behind. When I say embrace technology, I'm not talking about just having an Internet presence or just using social media for marketing. I mean using technology to create new apps, tools or games that let you instantly connect and engage with your customers.

Brian X. Chen, a writer for Wired Magazine, was recently interviewed on NPR's Fresh Air from WHYY. Here's a link to the story and the interview. In the interview, he discussed his new book, Always On: How the iPhone Unlocked the Anything-Anytime-Anywhere Future -- and Locked Us In.

From a business perspective, the most fascinating part of the book is Chen's comment on how consumers' expectations have changed in light of the way the iPhone lets them unlock worlds of knowledge in the swipe of their phone screen. In an excerpt from his book, he writes: "The iPhone changed our standards for what we expect from technology, and as a result, businesses are being forced to give us more for our money. We don't want seven pieces of hardware to perform seven different tasks; we want a single gadget capable of doing anything-anytime-anywhere. Soon, manufacturers will no longer be able to sell single-function gadgets lacking an internet connection because those gadgets will soon be obsolete. Consequently, a large number of companies and industries find themselves threatened because a downloadable app can easily replace nearly any dedicated, single-use product."

How is your business using technology to satisfy consumer expectations? What app could you develop to keep your customers engaged? Are you thinking from the mindset of a customer who owns an iPhone, and who expects information immediately? No matter your industry -- entertainment, publishing, banking, technology, professional services, arts, health care, environmental -- customers want more from you, and they expect it in the form of instantly accessed technology.

Privacy? Anyone Remember What That Is?

2011-07-14T15:19:00.000-05:00

Does privacy really exist any more? Sure it does, but sometimes it's easy to forget.

Take the story's in today's Tennessean: "Nashville Residents Take on Google Wi-Spy, Join Privacy Lawsuit." Google is accused of tapping into wireless networks while it drove by individuals' houses to capture a copy of their homes for placement on Google Earth. According to the article, the wire tapping had nothing to do with capturing images of the homes; rather, it was done to improve Google's LBS -- location based services.

What's LBS? It's new technology that allows us consumers to get more accurate information at our fingertips when we log into a new app. For example, when you go to TripAdvisor's App, if you allow it to track your location, it can send you a map showing you restaurants, parks, hotels, and music venues -- all tailored to your location. When I go on vacation this fall, I can open up my iPad, tap on the app, and it will move with me, knowing I'm in another location, and providing me with the same instant information -- I don't have to key in the location, because the app does it for me.

Are there privacy concerns in this? Of course there are. And that's ignoring Google's alleged wire tapping. The concerns are that we give up some privacy when our smart phones know our location. Who else knows our location? Surely someone's finding a way to sell that information and make money -- this is called "monetization."

As I explained while recently speaking on a panel at Lipscomb University, our free Internet, and our incredibly tech savvy tools, are not truly free, even though they appear to be. They come at a price and, as a society, we're just beginning to see what that price is: our privacy.

The lawyers at Covington & Burling have compiled a great summary of privacy bills pending before Congress. As Congess wades through these bills, it is faced with the same tensions we all face: how much privacy are we willing to give up in exchange for the luxuries of information technology? To protect our privacy, we may decide it's time to pay to protect ourselves, and we may begin to realize that things that seem too good to be true (an Internet without a price tag) really might be.

The Next Tidal Wave in Social Media: Video, Apps, QR Codes and Location-based Software

2011-06-16T13:51:00.000-05:00

Video, apps, QR Codes and LBS (for location based software, not pounds) are about to be the next tidal wave in social media. It's not that Facebook, Twitter and LinkedIn are losing any prominence (yet), but more and more businesses are waking up to see new ways to connect with their audiences. When law firms and banks (conservative by nature) start adding video to their home pages, you know something's catching on.

As these forms of social media become more popular, they raise new issues for the law to grapple with. Who owns the content? Did you get permission to include an image of that person or that song in your video? Have you informed your users that you plan to sell information about their visiting patterns whenever they view your site? Thoughts for businesses, legislatures and the courts to consider...

Video: Protecting Your Family & Your Reputation when Using Social Media

2011-05-01T12:48:00.001-05:00

I was recently invited to speak on "Digital Citizenship and the First Amendment" at The Leadership and Civility in a Digital Age speaker series, presented by Lipscomb University’s Nelson & Sue Andrews Institute for Civic Leadership and Department of Communication and Journalism and by Centerstone. My friend Debi Tate, a former commissioner on the FCC, invited me to join First Amendment scholar Gene Policinsky on the panel.

Typically when I speak on legal issues in social media, it is to an audience of business leaders or marketing professionals. Last night was an opportunity to look at these issues from the perspective of the individual consumer and citizen. With that in mind, I titled my talk "Protecting Your Family & Your Reputation when Using Social Media." We had a great crowd and a good conversation. For a link to the video, go here .

WaterCooler goes to Corsair Distillery for Exclusive Tasting & Tour

2011-05-01T11:33:00.000-05:00

If you missed the last WaterCooler, you missed a great event! Nashville's only distillery, Corsair, gave us a behind-the-scenes tour of how they make and distill what is quickly becoming one of the most sought-after small batch liquors in the U.S. when they hosted us in April 2011.

Located in Marathon Village, which used to house Yazoo Brewery, Corsair had to work mighty hard to even get up and running in Tennessee.

Darek Bell

Because Tennessee's laws and Nashville's laws were so onerous, Corsair actually began in Bowling Green, Kentucky. Only after they were able to convince the state and local lawmakers to allow them to "manufacture intoxicating liquors" were they able to come back home.

As part of a private event for WaterCooler, co-owners Darek Bell and Andrew Webber showed us around, told the story behind Corsair, and gave us samples in their tasting room. The Tennessean just reported that members of the public won't get this same opportunity until the laws are changed.

Andrew Webber

To join the invitation list and receive news about upcoming WaterCooler events, shoot me an email. Thanks to everyone who showed up. See you at the next on on May 9 at Conexion Americas!

Here are some photos from WaterCooler at Corsair:

Music & Margaritas: Preview Party for Conexion Americas' Annual Breakfast

2011-04-22T14:47:00.000-05:00

How lucky was it to stumble upon the first night of incredible weather in early April when we held a garden party kicking off the annual breakfast for my favorite non-profit in town Conexion Americas?

We called it "Music & Margaritas."

Everyone expected a good margarita and some great conversation, but no one expected to hear "Rumba," the number one band in Nashville's corporate band challenge, hosted by the Arts & Business Council! When my friend Leon said he would take care of the music, we thought he meant he and another guy would bring their guitars, but he showed up with an entire Latino rock band. Incredible.

Conexion Americas serves as a bridge between the established community in Nashville and the recently-arriving Latino community. Its mission is to promote the social, economic and civic advancement of Latino families in Middle Tennessee. It was a great chance for friends to learn about the amazing work of Conexion Americas, and a great opportunity for Conexion Americas to make some new friends.

Mark your calendars for the annual breakfast on May 26 at 7:30am at Loews Vanderbilt!

Here are some photos from Music & Margaritas:

Want to Limit Liability Against Copyright Infringement Claims when Hosting User Content on your Website?

2011-04-08T07:08:00.001-05:00

If you host a website that invites the public to submit content, often called UGC (or User Generated Content), you may want to read the recent summary judgment decision in Arista Records LLC v. Myxer Inc. and stay tuned to the final outcome at trial. Website hosts that allow UGC run the risk of being sued for copyright infringement, among other claims, because users sometimes submit material whose copyright belongs to someone else. If a copyright owner sues you for copyright infringement in your role as a website host, one of the most common defenses asserted is that the web hosting is protected under the DMCA (Digital Millennium Copyright Act).

On April 1, 2011, a federal court in California issued the above decision in a case pitting content owners against website hosts. UMG Records and other music companies sued Myxer and its principals for copyright infringement because Myxer hosts a website that invites the public to upload music and then download it as ring tones on cell phones. Myxer doesn't pay UMG anything, and UMG argues that it loses money every time a ring tone is downloaded through Myxer.

Myxer asserted two primary defenses: that its use was fair use and that it was protected by the DMCA's "safe harbors." On summary judgment, the court rejected Myxer's fair use defense, finding that converting the songs into ring tones did not qualify as a "transformative" use and finding that Myxer's business model likely cut into UMG's market.

But the court kept alive Myxer's DMCA defense. It found that genuine issues of fact existed regarding Myxer's implementation of a DMCA policy and regarding the speed with which it removed allegedly infringing material. Now it will be up to Myxer to prevail on this defense at trial.

Just like Myxer is hoping to do, businesses that allow the public to post content on their websites may limit their liability against copyright infringement lawsuits by following some steps under the DMCA. As a ground rule, if you create or direct content on your website that infringes on another's copyright, you can't turn to the DMCA for help. But if all you do is host content created by others, to get the benefits of DMCA protection you need to (1) adopt a DMCA policy and communicate it to your users, (2) appoint a DMCA agent, (3) follow the DMCA steps of quickly responding to accusations of hosting material that infringes another's copyright, (4) permanently remove repeat infringers, and (5) receive no financial benefit directly attributable to any infringing activity on your site.

To read more about how to protect your business under the DMCA, check out this great resource from the EFF (Electronic Frontier Foundation), or contact an attorney with experience in copyrights and intellectual property law.

Griffin Technology Hosts WaterCooler

2011-04-05T06:48:00.001-05:00

WaterCooler is a monthly networking event for "young" entrepreneurs. (I take liberty with use of the word "young" since my co-founder and I are pushing 40, and since we'd like to stay involved for a while. With that in mind, we include anyone in their 20s, 30s and 40s.) We started this fun venture in September 2009 and highlight a different local business or expert each time. Lately we've been enjoying the field trips, visiting Yazoo Brewery, Olive & Sinclair Chocolate Co., and (coming up on April 18) Corsair Distillery. It's a casual way to meet others who are active in the business, cultural and philanthropic worlds of Nashville. Hopefully connections will be made at WaterCooler that spur new entrepreneurial and community collaborations. If you'd like to be added to the list, email me at szralek@bonelaw.com.

Griffin Technology graciously hosted us on April 23. Jackie Ballinger, its Marketing and PR guru, welcomed each guest and provided us with an incredible array of food and drink. Also greeting guests as they arrived was this VW bus, which employees use for impromptu meetings, and which Griffin has traveled in for marketing at SXSW and Bonnaroo, to name a few:

Photo courtesy of Griffin Technology

Mark Rowan, Griffin's President, spoke about its background, its international reach and its commitment to Nashville.

Photo courtesy of Griffin Technology

It was clear that Griffin is a dominant player in the global tech scene, and we're lucky to have it right here in our own backyard.

After, Jackie led us on a tour of their new work space. We saw the wall of awesome accessory covers, the vending machine stocked with beer, and the work station decked out in action figures -- none of which is a regular feature where most of us work:

In the highest form of flattery (jealousy), everyone decided to ditch their current job and apply to work at Griffin.

Here are some photos of the event:

Two Easy Ways Social Media Experts can Improve Philanthropy

2011-04-01T06:07:00.005-05:00

Many people are ashamed of their birthdays, ashamed of growing older. Not my mom -- she's lived a rich life and dedicated it to serving others. We're having a birthday party for her soon, and 40 or 50 friends will be there to help her celebrate. That's because she's given of herself and made deep connections in her community. Happy birthday, Mom! My mother, my father and countless others are examples of how selfless acts of community involvement provide unbelievable personal returns.

I had lunch yesterday with the Head of Cabedge himself, Chris Blanz. (That's the best job title I've ever seen!) We had a lot of fun and let a ton of ideas fly all around the room. One of the best issues we discussed was: "How can social media experts/users get involved in the philanthropy of our city?" Here's two easy ways:

1. Use social media to spread the word about non-profits. You do this all day every day about other topics, any way. For many of you, social media is your job. Find those non-profits in town that interest you, follow them, and help spread the word about their events and needs. Big fundraiser coming up? Think of how many extra people might attend all because you tweet about it. Cool People Care has a great resource that lets you follow and friend your favorite non-profits. Facebook has a Causes app to raise funds and awareness of your favorite charities, and SixDegrees.org lets you place donation links on your social networks that directs funds to the charity of your choice. Easy stuff. Big results.

2. Join the board/volunteer your skills with a non-profit. This is where face-to-face human interaction is invaluable. Here in Nashville I'm on the board of an organization that I love, where the time I spend feels like sheer fun: Conexion Americas, which serves as a bridge between the recently arriving Latino community and the community of people who have been here a while. Every non-profit needs help from social media experts to help build bridges to the people they serve and to funders, friends and decision-makers. These boards need your expertise. Choose one that interests you. Don't have any experience on a board? Then call the CEO and say you want to volunteer for a year. I promise they'll plug you in. If you're under 40, apply for the Young Leaders program, which trains you how to sit on a board. Or contact Hands On Nashville, which offers similar classes.

It Takes only one Explitive in a Tweet to Lose your Job

2011-03-11T09:29:00.003-06:00

Chysler did exactly what it should have done: immediately terminated its relationship with its social media agency New Media Strategies after the agency used the F-Bomb in a tweet on Chrysler's behalf. Here's the tweet (with my redactions): "“I find it ironic that Detroit is known as the #motorcity and yet no one here knows how to f****** drive.” Even more ironic is that Eminem (who cusses like a sailor) is Chrysler's new spokesman. (Props to him for an awesome Superbowl ad!) Still, this was not exactly the image Chrysler was going for.

As reported in Automotive News, the social media agency immediately fired the employee. And Chrysler is ending its relationship with the agency on account of the tweet. No surprise here on either move.

Michael Humphreys said it best in his Forbes blog: "Twitter is not a private room. It's not a quiet corner in a public square. It is THE public square."

Opportunities Abound at PodCamp Nashville

2011-03-09T17:09:00.000-06:00

PodCamp Nashville used to be a best-kept secret. Not any more.

If you're want to find your voice and find your audience, if you want to build your brand and link to potential customers throughout the world, if you want to speak your mind by creating online documentaries or podcasts, or if you want to meet other people interested in your world and your community, sign up. PodCamp Nashville will be held downtown at Cadillac Ranch on Saturday, March 26. And it's Free.

People from all industries and skill-sets (and I mean All) will be there. Over 400 have signed up to attend so far.

There's no doubt that PodCamp is a chance to network. I got introduced to PodCamp and its sister, BarCamp (held in the fall), through a friend at work. I've met some incredible Nashvillians in the music, entertainment, marketing, technology and digital fields; made some good friends; and developed some clients.

But more than that, it's a chance to learn from some of the best and brightest in our community. Where else can you hear all these great luminaries under one roof? Kate O'Neill will talk about how blogging made her a better leader; Courenay Rogers will talk about "The Power of Digital Stalking," (she says we all do it); Jake Jorgovan will discuss "How to Effectively Utilize YouTube." And I'm excited to hear Raj Menon talk about how to launch a podcast.

I can't wait to hear David Corrigan explain how to "Mak[e] your Mobile App idea a Reality." I came up with about 20 ideas the other day on my drive into work (I'm sure 15 of them have already been invented), but I'm eager to hear what to do the next time creativity hits!

As one of the only lawyers speaking that day, I'll be leading a session with marketing guru Taylor Vick. She and I are teaming up to talk about how businesses can accomplish their marketing goals through social media without running into trouble. When clients come to me with a crisis involving online communications, it often takes a tag-team approach between legal solutions and SEO know-how. Taylor and I will use some specific case-studies to frame our discussion, highlight the issues that can help businesses and bloggers avoid liability, and give some pointers along the way. Quoting Shakespeare, we titled our session: "Kill All the Lawyers: The Legal & Marketing Aspects of Using Social Media." We'd love to have you join us and add to the conversation.

Spread the word. And sign up!

Video of Recent Presentation on Legal Issues in Social Media

2011-02-22T15:45:00.000-06:00

In late January, Indie Connect asked me to speak with professionals in the music industry about the pressing legal issues in social media. It was an honor being with them. They were kind enough to capture a video of the presentation, which you can watch here.

If you'd like me to come speak about Social Media Law with your business or group, email me at szralek@bonelaw.com.

Last week I spoke on social media legal issues to the Tennessee Bar Association. Yesterday, the Nashville Business Journal selected me to be one of four panelists at an upcoming presentation on social media to the business community. And in late March, I'll be co-presenting with Taylor Vick of Point3 Media on the collaboration needed in social media between legal and marketing; we'll be at PodCamp in Nashville. Our title is "Kill All the Lawyers: Marketing through Social Media the Legal Way." Sign up to attend -- it's free, and there will be incredible sessions on social media all day long.

Best Practices for Businesses: Tip #1: Adopt a Social Media Policy

2011-02-16T17:35:00.001-06:00

According to a February 14, 2011 article on Mashable.com "social media is predicted to see one of the biggest increases in online marketing spending this year." With that in mind, businesses need to adopt and implement a social media policy. In fact, they should implement two policies: one for all employees, and another for those employees responsible for official social media communications on behalf of the business.

Some businesses may say that there's no need to have a social media policy because they aren't officially engaged in social media. Even if a business doesn't officially participate in social media, you can bet its employees are on Facebook or Twitter. They're definitely using social media after work, but probably using it during working hours, too. Their unofficial use of social media makes it important for businesses to set some guidelines.

Businesses should consider adopting two separate policies:

1. A social media policy for ALL employees. Businesses should provide all employees general guidelines on certain matters, for example: keeping business matters confidential, affirming that employees should have no expectation of privacy for anything posted on a publicly-accessible site, and reminding employees that they should clarify that any opinion expressed is made in their individual capacity, not on behalf of their employer. In light of a recent NLRB settlement with a Connecticut ambulance company who discliplined an employee for making negative comments about her employer on Facebook, businesses should be very reluctant to limit employees' right to discuss the terms of their employment (like wages and conditions). Businesses should adopt this policy even if they do not officially engage in social media as a company.

2. A policy for employees responsible for official social media communications of the business. Those employees responsible for communicating on behalf of the company through social media need guidelines. They need to know what is acceptable language, how to respond to negative reviews of the business, and their responsibilities when inviting user generated content. There are laws governing marketing to minors and regulations requiring disclosure of any material connection between a blogger and a business. These are just a few of the items a business should consider when crafting its social media policy.

Olive and Sinclair's Experience: Secrets to Success for Any Business

2011-02-08T09:59:00.006-06:00

On January 31, 2011, I sat down to talk with Scott Witherow, owner of Olive and Sinclair Chocolate Co. , which makes the South's best chocolate.

Olive & Sinclair's Exclusive with Williams-Sonoma

Later that night, he hosted WaterCooler, a monthly networking event for young entrepreneurs that some friends and I co-founded in August 2009. We had a jam-packed crowd of over 40 people. Everyone, it seems, wants to learn more about this company. (For another great write-up on the tasting, check out the recent post on Nashville Foodies' blog, or see Gwyneth Paltrow's blog "Goop," which highlighted O&S.)

Begun just 13 months ago in September 2009, Olive and Sinclair’s growth has been as viral as a posting on Facebook or Twitter. O&S has already gained an exclusive contract with Williams-Sonoma for some of its products, and the demand for its chocolate grows every day.

We met after work at the office of O&S, which doubles as factory, research and design center, marketing headquarters, and nerve-center for all things chocolate in Nashville. Before everyone from WaterCooler arrived, Scott offered me a sneak-preview sample of an upcoming chocolate he plans to launch in the coming weeks, something he’s collaborating on with Benton’s Smoky Mountain Country Hams. To top it off, he offered me the perfect pairing of a Terrapin Moo Hoo Chocolate Milk Stout, which also has O&S chocolate in it. Talk about a rich combination. This was better than any of the after-school snacks I ate as a kid!

Here’s my take-away from talking with Scott, and what I think are some of the biggest secrets of his success. To be honest, I think these are some of the best keys to any modern business’s prosperity:

1. Authenticity: Olive & Sinclair offers an authentic story and product.

2. Collaboration: O&S collaborates with Terrapin, Drew’s Brews, Williams Sonoma, Bongo Java, and even non-profits like Saddle Up.

3. Embracing Social Media: Scott told me they couldn’t have had this massive growth and success without using social media. Only a 13 month old company, O&S has already grown to over 500 retail and wholesale customers.

O&S Red Hot Hearts for Valentine's Day

Here’s the best parts of my conversation with Scott:
Zralek: Thank you for the Terrapin Moo Hoo Chocolate Milk Stout…awesome! You were saying that social media has without questions helped your business…tell me how.

Witherow: Obviously it allows us to communicate with anybody out there that’s interested in Oliver & Sinclair. But because we’ve also been blessed with some pretty ridiculous—in a good way—articles. It’s allowed for people to actually kind of let us have a face. We were doing a lot more on Facebook and blogging before we ever even had a website. So that was a big part of it.

ZRALEK: Part of what I find in my work representing businesses as a lawyer is that, when people who are older than us (both in our 30s) are running companies, they often question the value of social media.

WITHEROW: Yeah.

ZRALEK: And to me, companies like yours are a prime example of how social media can help fuel the explosive growth you’ve experienced.

WITHEROW: I think for me and the company, I think that we all just believe in this product. We’re not…we don’t necessarily get into chocolate as like a monetary thing, you know, to make like a bazillion dollars. So it started off with just kind of loving the idea of being able to make chocolate. And then for me it was—I want to make chocolate personable and…I don’t know what this sounds like. But I think that we were successful in making it approachable and, again I don’t mean it arrogantly, but I think we do make a good product, and I think that social media is hugely important as long as you have a good product.

ZRALEK: I agree.

WITHEROW: But I think…

ZRALEK: If you’ve got nothing behind it, it doesn’t matter.

WITHEROW: Yeah, if it’s all this kind of chutes and ladders then you’re only going to go so far with it. But I think that—it’s been great even getting feedback, good and bad. I mean there have been people that have shot me a message on Facebook saying something was up or they noticed something and, like we had one customer who got a chocolate bar that wasn’t up to their standards of what they thought O&S was. And so she Facebooked me and, with the a batch number that we include on every bar, we found out where she bought it. It was poor product placement and it was such an old bar…I mean such an old bar that it shouldn’t have been on the shelf. So we had to go in and make sure that they were off the shelf and that our batch numbers are—they’re done for a reason. So that’s a great part to me.

ZRALEK: So this beer that you’re letting me taste, what’s the best chocolate that goes with it?

WITHEROW: [Handing me a sample of an upcoming release where O&S is collaborating with Benton’s Hams.] It will be a little while before it’s out.

ZRALEK: So what is that that I just tasted?

WITHEROW: It’s a smoked nib.

ZRALEK: From Benton’s Farm…they’re teaming with you?

WITHEROW: Yeah, we’re kind of teaming up for a little project. Hopefully we’ll see it through.

ZRALEK: And what’s that made of…it’s so good. Is there some bacon in there?

WITHEROW: No, [it’s just] nibs [that] are smoked by Alan down in Madisonville.

ZRALEK: So it’s more of the smoked flavor than the bacon.

WITHEROW: Yeah, there is no bacon in there really because it’s just…it’s Alan good quality smoked [flavor]…

ZRALEK: Wow it tastes good. . . .

Tasting of Various O&S Chocolate

ZRALEK: [W]hen did you decide to start this [company]?

WITHEROW: That was somewhere 2008 sometime, I think.

ZRALEK: What were you doing before Oliver & Sinclair?

WITHEROW: Just working in kitchens here in town. At the time I was a pastry chef at F. Scott’s.

ZRALEK: I didn’t know that.

WITHEROW: Yeah, I was there for about three years

ZRALEK: Did you go to culinary school somewhere?

WITHEROW: Yeah I went to Le Cordon Bleu.

ZRALEK: So you don’t recommend just anybody deciding to start their own chocolate shop? Having a little training comes in handy?

WITHEROW: Yeah but I didn’t learn how to make chocolate in culinary school. They didn’t guarantee me that. It’s more of working with chocolate. And I always try telling people it’s kind of like people that really like craft beers tend to start home brewing at some point. And I worked a lot with chocolate so I learned how to make my own chocolate. And I just started doing it.

ZRALEK: Where did you sell to first? Who was your first buyer?

WITHEROW: Mitchell’s Deli. [Mitchell’s, the best deli in Nashville, is literally upstairs from Olive and Sinclair.]

ZRALEK: Are you selling primarily in Middle Tennessee?

WITHEROW: No, we’re nationwide and in Canada.

ZRALEK: So you started in ’08, it’s now January 2011…

WITHEROW: Well, I say we started in ’08. I started experimenting in ’08 and making test batches.

ZRALEK: So when was your first sale?

WITHEROW: September of 2009.

ZRALEK: Wow. You’re a young company.

WITHEROW: Yeah. We’re a year and three months.

ZRALEK: That’s great. . . .

ZRALEK: [O]bviously you wear a lot of hats. I assume that you [serve as] creative director, HR director, CEO, chief culinary designer and are you also making house calls to these places or do you send somebody else out there for you?

WITHEROW: We don’t call on anybody. We don’t approach someone in hopes that they’ll sell our chocolate. Maybe the first two months some of that went on, maybe three, probably two. But we really tried to slow down after that. We did some here and there during brief interims where we kind of thought it was getting quiet and you start to get kind of nervous as a new company or whatever. And you think well we need to pick up the phone and start cold-calling. But I think that we’ve all really found that just holding tight and just getting the product out there and in other ways. Yeah, that’s kind of how we do it.

ZRALEK: Let me ask you who you’ve teamed up with in terms of making chocolate. So you’ve teamed up with Benton’s Hams.

WITHEROW: Yeah, with Alan. And that’s a new something.

ZRALEK: So that’s on its way. Who else have you teamed up with if anybody?

WITHEROW: Well we teamed up with Terrapin, you know, for the Moo Hoo. And we look at all the local guys. I called the Yazoo boys [Linus Hall and his team] and made sure that [they didn’t mind] cause they’re the home team, so…
ZRALEK: Have you done anything with a coffee company yet?

WITHEROW: Yeah, we do stuff with Bob Bernstein [at Bongo Java] in our normal coffee line. And then we do a line that’s exclusively at Williams-Sonoma [and one] that we do with my buddy Drew [of Drew’s Brew’s]. And it’s a totally different chocolate and a totally different roasted coffee. So it’s kind of a new interpretation of that.

ZRALEK: Okay, one last question…

WITHEROW: Yazoo as well. I gotta say we have teamed up with Yazoo…

ZRALEK: …and you’re drinking Yazoo as we’re talking.

WITHEROW: Yeah.

ZRALEK: So a good loyal follower.

WITHEROW: Yeah, I’m a big fan.

ZRALEK: Who do you see as your main competitor and who do you see—that’s probably a bad term—but who do you see as…is there any other chocolatier in the US that you think does a really good job like you do?

WITHEROW: I don’t want to look at them as competition. I guess in a way I kind of have to. But…

ZRALEK: Who else is a local chocolatier that you like?

WITHEROW: Well, just to…we’re not really chocolatiers. We don’t make truffles, we don’t…

ZRALEK: Chocolate company…what’s the right word?

WITHEROW: We’re chocolate makers. We import beans [then roast them and temper them].

ZRALEK: So who else does it like you do?

WITHEROW: Nobody in Tennessee.

Imported Cocoa Beans at O&S

***********************************

Anonymous Online Defamation: Fighting Back to Protect Yourself & Your Business

2011-01-20T12:00:00.001-06:00

With the explosion of social media, businesses and individuals are becoming daily victims of anonymous online defamation. With tools like Twitter and Topix, now everyone has a megaphone to say whatever they want to the widest possible audience. Many say this is freedom of speech at its best. But as with anything, this freedom comes at a high price.

Putting bloggers on equal footing with traditional journalism has many upsides, but now we are beginning to see the downsides, as well. Online reviews of restaurants and movies, for example, are often helpful. Generally, those reviews state opinions rather than facts, such as: “This movie was terrible,” or “This restaurant has the best food.” Opinion cannot constitute defamation. But websites today also allow patients to review doctors, students to review teachers, and customers to review everything from i-Pads to car repair service. When these reviews include untrue facts, they may constitute defamation. For example, a review expressing a diner’s opinion about how food tastes is mere opinion and does not constitute defamation, but a review claiming that a restaurant had a health department rating of 65 when the actual rating was 97 is an untrue fact that likely could serve as the basis of a defamation claim.

Sometimes the negative comments are minor and the best advice is to brush them off. But other times the comments are serious and deserve a stronger response, such as when they indicate you committed scandalous or criminal conduct, that you are untrustworthy, or that you have committed malpractice. These comments can damage your reputation and harm you economically if they steer business away from you. When that happens, especially if it happens more than once from the same person, you may have grounds to assert a claim of business interference, and not just defamation.

One of the biggest challenges with the Web 2.0 is the fact that most online reviews and comments are made anonymously. If that’s the case, how can you protect yourself? How can you even find out the identity of the poster?

Fortunately, victims are not without recourse. Most people think that they can say whatever they want online and that no one will ever know who said it. This is incorrect. There are ways to find out the identity of online posters, but you need to act quickly since Internet service providers (ISPs) often destroy records of online activity after 180 days.

If you find that you are the victim of disparaging comments made online, you won’t get very far suing the website that hosts the comments (known as user generated comment or “UGC”). Hosting websites are immune from liability related to UGC under Section 230 of the Communications Decency Act. But you can have your attorney send a cease & desist letter to the website demanding that the comments be removed. Sometimes websites comply; other times their terms & conditions do not allow them to comply without a court order.

When you want to find the identity of the anonymous poster, and not just have the comments removed, you can also file a “John Doe” lawsuit against unknown defendants, empowering you to subpoena the host website for the IP address of the person posting the comments. From there, you can determine the ISP. Because the Cable Communications Policy Act of 1984 prohibits ISPs from disclosing personally identifying information about Internet users to non-governmental entities without a court order, the next step is to obtain a court order allowing you to subpoena the ISP for the identity of the poster. Recently, a court in Nashville refused to allow an anonymous poster to hide his identity, and allowed the victim to move forward with its subpoena of the ISP.

Finally, responding to anonymous online defamation often requires a multi-faceted approach. Recently, one of my business clients found several comments online that accused its employee of criminal and scandalous conduct. Given the context, the client needed legal advice on not just the social media issues, above, but also with employment law issues. If defamatory comments are made that threaten to damage your reputation and your business, don’t just sit back and take it. Instead, consider your options in fighting back.

Relaunching TheExpressive Blog to Focus on the Entrepreneurial & Community Spirit of Nashville

2010-12-12T16:26:00.001-06:00

What a great Sunday! Big white flakes of snow are falling outside my window, the Christmas tree is lit and our baby is napping upstairs. I mention the baby napping for two reasons: first, it's amazing having a baby in my life; and second, it gives my wife and me a few minutes off.

In these few minutes before our baby wakes up, I'm excited to tell you that TheExpressive is re-launching. Instead of focusing on the law, this blog will highlight the incredible entrepreneurial and community spirit we have in Nashville.

People hear "Nashville" and they think Grand Old Opry, HCA, Vanderbilt/Fisk/Belmont or the Titans. (Well, they think of the Titans when they're playing well, which isn't lately.) But that talent is in so many other places, too. It's in restaurants like Burger Up, the coffee beans of Drew's Brews, the books by Alice Randall, and the businesses like Emma and Griffin Technology. That spirit is also in our non-profits like Conexion Americas and Community Food Advocates; in our art galleries like Zeitgeist; and our drop-in clinics like United Neighborhood Health Services.

A year and a half a go, I started something called WaterCooler with a friend, Renata Soto. We meet once a month to hear from young entrepreneurs. We've had a lot of fun, and met some inspiring people: Chris Ferrell of SouthComm spoke on the changing media landscape; Nashville Captial Network's Sid Chambless spoke on the availability of venture capital funds; Laura Creekmore spoke on social media; Linus Hall gave us a tour of Yazoo Brewery; and Becca Stevens introduced us to two women who graduated from her program at Magdalene House after surviving on the streets as prostitutes.

Tomorrow, we're headed to Olive & Sinclair to tour Nashville's own chocolate factory and hear the story of founder/chocolatier Scott Witherow. Olive & Sinclair is a great example of all of the above: people with a vision who take a risk, enjoy great success, and benefit their communities in many different ways. Their stories are inspiring to me and I hope you find them inspiring, too.

Stories like these are the ones I plan to highlight in this blog. I hope to feature a different entrepreneur or community leader each week. Hopefully, by finding what inspired and motivated them, we can learn something to apply to our own jobs, neighborhoods and community groups.

I hear the baby -- she's awake and I've had my break. Back to my most important job and favorite pastime... fatherhood.

Ninth Circuit Offers Best Guidance on Issues of Copyright Registration Requirement to Initiate Litigation

2010-08-03T16:35:00.000-05:00

On March 2, 2010, the Supreme Court issued its decision in Reed Elsevier v. Muchnick. In that decision, the Court clarified that Section 411(a) of the Copyright Act "does not restrict a federal court's subject-matter jurisdiction." Instead, Section 411(a) is merely a "precondition to filing a claim." Importantly, the plurality explicitly declined to address "whether Section 411(a)'s registration requirement is a mandatory precondition to suit that . . . district courts may or should enforce sua sponte by dismissing copyright infringement claims involving unregistered works." Instead, the Court left that issue unresolved.

Picking up where Reed Elsevier left off, the Ninth Circuit specifically addressed that issue in a decision on May 25, 2010, namely what it means to "register" a copyrighted work. See Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, 606 F.3d 612 (9th Cir. 2010). The Cosmetic Court issued a thoughtful decision that concluded "registration" under 411(a) is accomplished upon mere "receipt by the Copyright Office of a complete application." In so holding, the Ninth Circuit adopted what many courts refer to as the "application" approach, rather than the "registration" approach.

The Cosmetic Ideas decision provides the best analysis on the issue to date. In amplifying the sound reasoning of La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-04 (10th Cir. 2005), the Cosmetic Ideas opinion examined the plain language of Section 411(a), the Copyright Act as a whole, and even the purpose of the Act. It found the plain language unhelpful in defining "registration," and it found five sections of the broader Copyright Act to be instructive, but not clearly supporting either the application approach or the registration approach. In examining the purpose of the Copyright Act, the court concluded that "the application approach better fulfills Congress's purpose of providing broad copyright protection while maintaining a robust federal register."

Specifically, the Cosmetic Ideas Court noted that the application approach offers these benefits over the registration approach: (a) "avoids unnecessary delay in copyright infringement litigation . . . [g]iven that copyright owners will ultimately be allowed to proceed regardless of how the Copyright Office treats the application"; (b) "avoids delay without impairing the central goal of copyright registration"; and (c) avoids the "worst-case scenario" under the registration approach, which "could cause a party to lose its ability to sue."

One benefit of the application approach that Cosmetic Ideas missed is that it puts U.S. works on equal footing with non-U.S. works. Under the Berne Convention, foreign works may not be subject to registration formalities prior to initiating litigation. The registration approach actually treats non-U.S. works better than U.S. works, because it requires owners of U.S. works to wait for registration prior to filing an infringement action. By adopting the application approach, U.S. works are given equally favorable treatment.

Look for the Cosmetic Ideas opinion to be the new road map for courts across the country as they grapple with deciding whether to adopt the application or registration approach. More courts should follow the analysis in Cosmetic Ideas and reach the same conclusion.

Finally, many of the courts that adopted the registration approach did so while dismissing the complaint before them for lack of subject matter jurisdiction. That is, many of them held that since 411(a) required a copyright plaintiff to obtain registration prior to filing suit (i.e., the registration approach), the court lacked subject matter jurisdiction. See Specific Software Solutions, LLC v. Institute of WorkComp Advisors, LLC, 615 F. Supp. 2d 708, 716 (M.D. Tenn. 2009). As Cosmetic Ideas notes in note 4, however, many of these cases have been abrogated, in part, by Reed Elsevier. Knowing that should help lawyers and litigants who are seeking to persuade courts to abandon the registration approach and adopt the application approach instead.

Artists' Rights & the Law

2010-02-28T16:26:00.001-06:00

I had a good conversation with sculptor John T. Unger on his Internet radio show, Art Heroes, on February 25, 2010. John is a client of mine who creates artisinal firebowls. He's also a big proponent of social media and uses it to market his art and create an online community of artists. In 2009, I had the privilege of representing John in a federal court lawsuit over his copyrights and trade dress in the firebowls when unauthorized replicas of his bowls began appearing on the market.

In our conversation on Art Heroes, we talked about "Artists' Rights and the Law." John began by asking me to discuss the difference between rights under copyright, trademark, trade dress and patent law. We talked about the benefits conferred on artists who register their works (such as the right to recover statutory damages in court, the right to attorneys fees under copyright law, and the presumption of validity that accompanies registrations). We also talked about how for most artists, copyright provides the longest amount of protection (life of the artist plus 70 years), compared with trademark (10 year periods open to renewal) and design patents (14 years). Applying for copyright registration is also more affordable ($35 filing fee) than applying for trademark registration ($335 filing fee per class), both of which are significantly more affordable than applying for a patent ($5,000-$10,000 including attorney fees).

We also talked about when an artist may use, rely on, critique or "sample" other artists' work. Copyright protection confers exclusive rights on authors, but an exception to this exclusivity is the doctrine known as "fair use." For most artists, the question comes down to whether their newer work that borrows from earlier work is "transformative." I'll blog more on Fair Use in the future.

We also talked about something known as "Recapture Rights" or "Termination of Transfer Rights," which highly impacts literary authors and singers/songwriters, among other artists. Often when young or budding artists are getting established, they transfer their copyright rights to publishers or others in exchange for securing a book or record deal. Realizing the inherent inequities of this draconian step, Congress gave artists the right to "recapture" their copyright rights for five year periods. For works created Jan. 1, 1978 to present, recapture rights kick in after first 35 years for a 5 year window from year 35 to year 40 (the earliest this would apply is 2013). For most works created prior to Jan. 1, 1978, the recapture period is between 56^th and 60^th years, and artists get a second bite at the apple between years 75 and 79. Artists get the remainder of the copyright term if they provide notice of termination of transfer during these five-year periods. Don't forget: recapture rights are "use it or lose it" rights -- if you miss the five-year window, you're out of luck. I'll blog more on Recapture Rights in the future, too.

John asked me what I thought about Myows.com, an online service that provides a central repository for artists' online works. Myows stands for "My Original Works," and, which it is still in its infancy, looks like a great supplement to copyright registration. Myows.com provides a time-stamp on all online works, down to the minute, which could be useful in establishing priority in copyright infringement suits. To the extent Myows.com offers legal advice, I found several statements that were inaccurate and hope, instead, that Myows will delete these pages. Major upside: Myops is FREE.

John hosts different people every week to talk about art and artists' rights. Check out his next show this coming Thursday at 9pm Central. Future guests are scheduled to talk about licensing rights and becoming famous as an artist without leaving your day job.

The More Interactive Your Website, the More Likely Your Business Can Be Forced to Defend Lawsuits in Other States

2009-10-01T12:51:00.000-05:00

Businesses need to be intentional about how interactive they allow their websites to be, since they can be forced to defend themselves in lawsuits filed in another state if they actually make sales in other states through their websites. In a decision issued August 28, 2009, federal Judge Aleta Trauger held that the U.S. District Court for the Middle District of Tennessee had no personal jurisdiction over the Denver-based defendant that had been sued for trademark infringement and unfair competition in Nashville, despite the defendant having a fully interactive web page from which Tennessee residents could order services. Capital Confirmation, Inc. v. Auditconfirmations, LLC, No. 3:09-0412 (M.D. Tenn.). My law partner and I served as local counsel for the defendant, along with Bobbee Musgrave of Denver.

For many reasons, it is almost always preferable to defend a lawsuit in your hometown or home state. In today's environment, where almost every business has a website, many businesses would be surprised to learn they can be forced to defend themselves in a lawsuit in another state, depending in part on how interactive their website is. Fully interactive websites are those that allow customers to order goods and services from the site.

In general, the law requires plaintiffs to sue defendants where they reside or have their principal place of business, or where the acts giving rise to the lawsuit occurred. But where defendants "purposefully avail" themselves of the benefits of another state, they can be forced to defend in that other state. Before the Internet, defendants who sold their goods and services in person typically did so locally, and could not be sued in other states. The Internet, however, has allowed businesses of all sizes to expand their reach without ever physically leaving their home state. Businesses with a robust Internet presence may unwittingly be at risk for defending against out-of-state lawsuits.

In the Sixth Circuit (the appeals court that covers Tennessee, Kentucky, Ohio and Michigan), a website's interactivity is measured on a sliding scale. At one end are "passive sites that only offer information for the user to access." At the other end are "active sites that clearly transact business and/or form contracts." In the middle are "hybrid or interactive sites that allow users to exchange information with the host computer," and these middle cases must be evaluated on an individual basis. See Neogen Corp. v. Neo Gen Screening, Inc., 282 F.3d 883, 890 (6th Cir. 2002).

Following well-established Sixth Circuit precedence, Judge Trauger's decision makes clear that an interactive website by itself is insufficient to be haled into federal court in Tennessee. As she explained, suing an out-of-state defendant in Tennessee requires "something more" than merely an interactive web page.

In Capital Confirmations, the defendant's web page was fully interactive, but it had no legitimate sales into Tennessee. The plaintiff had posed as a non-existent individual named "Frank Jepson," purporting to enter into a transaction on the defendant's web page from within Tennessee. The court considered these transactions to be illegitimate. The only other interaction with Tennessee was from a request that was aborted before any payment was made by the customer, so the court considered that interaction to be incomplete and of no impact. The mere fact that a Tennessee resident could theoretically purchase goods or services over the defendant's web page is insufficient to hale the defendant into Tennessee.

The lesson to be learned from this decision is that businesses need to be intentional about the level of their web pages' interactivity. One upside of the Internet is the ability to sell and market all across the country, not to mention all over the world. The downside is that sales in other states can create jurisdiction in courts far from home. One step businesses can take to minimize the chance of being sued by their customers out of state is to include a provision in all contracts that sets the exclusive jurisdiction in the place where the business is headquartered. But such a provision will not work in suits by non-customers. Instead, businesses need to gauge their appetite for defending lawsuits in other states before selling goods and services there, whether through the Internet, over the telephone, through distributors or in person.

In Long-Awaited Move, President Obama Appoints IP Czar

2009-09-30T17:18:00.001-05:00

In a long-awaited move, President Obama has nominated the US Intellectual Property Enforcement Coordinator, otherwise known as the "IP Czar." This position was created with the enactment of the PRO-IP Act, which former President Bush signed into law on October 3, 2008. He deferred nominating anyone for the IP Czar position until the Act received partial funding, which did not occur until 2009, and until the next president took office.

On September 25, 2009, President Obama nominated Victoria Espinel , who currently serves as a visiting assistant professor at the George Mason University School of Law. Her nomination awaits confirmation by the Senate.

Some are calling Ms. Espinel the Copyright Czar, but that title is too narrow, since her role stretches beyond mere copyright issues. She will chair the newly created IP Enforcement Coordinator advisory committee, comprised of representatives from multiple federal departments, and her primary responsibility will be to coordinate efforts across the entire federal government to protect American intellectual property in all its forms.

You can read more about the expected role of the IP Czar in the context of IP reform, in an article entitled "The PRO-IP Act: Another Weapon Against a Failing Economy," which Dylan Ruga and I wrote, and which the American Bar Association published in the January/February 2009 issue of Landslide.

Middle District of Tennessee adopts Narrow Approach to Copyright Registration -- for the Time Being

2009-09-05T12:48:00.000-05:00

A split exists among the various federal circuits in the United States over what is required before a plaintiff may file a lawsuit asserting copyright infringement. Recently, the Middle District of Tennessee issued a reported decision that adopted the “narrow approach.” Specific Software Solutions, LLC v. Institute of Workcomp Advisors, LLC, 615 F. Supp. 2d 708 (M.D. Tenn. 2009). Thus, for the present time, copyright owners in the 32 counties comprising Middle Tennessee must actually have received a determination from the Copyright Office as to the registrability of their works before they may sue another party for infringement in this judicial district.

The question before the court in Specific Software was, “What constitutes registration?” The Copyright Act states at 17 U.S.C. Section 411(a), and the Sixth Circuit has held, that registration is a prerequisite to filing a copyright infringement suit. But the Sixth Circuit has not decided what constitutes “registration” under this provision of the Copyright Act, and courts across the country have reached different conclusions.

The “narrow approach” holds that registration is not considered complete until the Copyright Office reaches a determination on the merits of the application and either accepts it or rejects it. Some of the courts that follow the narrow approach include: the Western District of Michigan, the Central District of California and, for now, the Middle District of Tennessee.

The “broad approach” holds that registration is not dependent upon any consideration or action by the Copyright Office. Instead, courts following the broad approach generally consider the registration requirement to be satisfied upon the plaintiff’s submission of the following to the Copyright Office: an application, deposit copy of the work and required fee. These courts note that the Copyright Office’s eventual acceptance or rejection of the application has no bearing since the Copyright Act explicitly allows a plaintiff to initiate suit for infringement even when the application has been rejected. Some of the courts that follow the broad approach include the District Court for the District of Columbia, the Middle District of North Carolina, the Fifth Circuit and the 10th Circuit.

In adopting the narrow approach, the Specific Software Court noted that those courts adopting the broad approach have “correctly recognized that there is something ‘uneconomical’” about dismissing a complaint simply because a plaintiff does not yet have a certificate of registration, especially since the plaintiff is allowed to sue even if the Copyright Office ultimately rejects the application and denies registration. 615 F. Supp. 2d at 715-16. But the court was constrained by its interpretation of the Copyright Act, as currently worded, and settled on the narrow approach. Id. at 716.

Across the country, this issue is far from settled. Presently pending before the Supreme Court is the case Reed Elsevier, Inc. v. Muchnick, which, among other issues, raises the question of how “registration” should be defined under the Copyright Act in relation to initiating a suit for infringement. It is set for oral argument on October 7, 2009. Expect to see more clashes among the circuits until the Supreme Court issues a decision in that case. Depending on how the Supreme Court comes out on that issue, the holding in Specific Software may or may not be overruled.

In my own role as Vice Chair of the American Bar Association’s Copyright Litigation Committee, I am helping lead a working group that has examined this precise issue. For a number of reasons, we are recommending that the Copyright Act be amended to adopt the broad approach. Among other reasons, the broad approach is consistent with the fact that, under the Copyright Act, copyright owners enjoy protection from the moment they create their work, regardless of whether they ever register their work. Amending the Copyright Act to adopt the broad approach would also put the United States on equal footing with other Berne Convention countries, and abolish the higher burden currently placed on United States works, as compared with non-United States works.

For the present time, plaintiffs who need to sue for copyright infringement but who have not yet obtained either registration or rejection from the Copyright Office should consider suing in one of the courts that has adopted the broad approach. Many times, plaintiffs have a choice in where they file suit. They can sue either where the defendant resides or has its principal place of business. But they can also sue where the transaction giving rise to the lawsuit occurred. These are often two different states. And as I discussed in my last post, many courts will exercise personal jurisdiction over defendants who make significant and repeated sales into a specific state, even through the Internet. For now, plaintiffs who do not yet have a determination from the Copyright Office in hand should weigh all their options and bring suit in one of the states following the broad approach.