The Myth About Practicing IP

I was recently visiting a relative in the hospital when the attending physician struck up a conversation with my family.  When he found out that I am an attorney, he asked about my area of practice.  I told him that I practice product liability defense and intellectual property litigation.  He then asked me the following question, a variation of which has been posed to me dozens of times over the past five years:  “What type of engineer are you?”

I am an English major, and I practice IP litigation.  Not only do I not have a science background, but I made a concerted effort to avoid science classes in college.  Law schools precipitate a myth that you can’t practice IP without a science background.  It’s a myth because it’s not true.  I’m proof.  (Disclaimer:  it is true that you can’t prosecute patents before the U.S. Patent and Trademark Office without a science background.  But patent prosecution is only one part of IP.)

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The Copyright Act: Standing and “Right to Sue” Assignments

The symbol representing a copyrighted work, which is the letter "C" within a closed circle.Every now and then, plaintiffs attempt to leap into the shoes of a copyright holder by obtaining permission from the copyright owner to sue an alleged third party infringer.  But these type of bare “right to sue” assignments in many instances fall short of what is required under federal law.

Enforcement Action Rights under the Copyright Act

According to the federal Copyright Act, only “[t]he legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.”  17 U.S.C. § 501(b) (emphasis added).

The Copyright Act lists the following exclusive rights of the owner of a copyright:

(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

17 U.S.C. § 106. But “a person holding a non-exclusive license is not entitled to complain about any alleged infringement of the copyright.”  HyperQuest, Inc. v. N’Site Sols., Inc., 632 F.3d 377, 382 (7th Cir. 2011).  In order words, to have the requisite standing to sue, a plaintiff must exclusively own one of the enumerated rights listed above.  Consequently, enforcement actions are limited to the specific rights exclusively owned.   For example, a plaintiff who owns the exclusive rights to perform a literary work can only sue to enforce that specific rights. Such a plaintiff, cannot go after alleged infringers making unauthorized copies of the literary work.

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Cosplay Wars: The Legal Implications of Fan Costume Competitions

This past weekend, I attended the annual Milwaukee Mighty Con, a local comic convention.  While there, I watched one of the cosplay competitions where competitors dressed in fantastical recreations of iconic characters such as Star Wars’ Kylo Ren.  Yet while observing the competition and enjoying the efforts of the competitors, I pondered the legal implications of these derivative works.

But first, a little backTwo people dressed in costumesground information is in order.  The term “cosplay” was created by Takahashi Nobuyuki in 1984. Nobuyuki attended a science fiction convention in Los Angeles, and he was so impressed with the fans’ costume competition that he wrote about his experiences upon returning to Japan. Yet, no word in the Japanese language accurately represented the costume competition Nobuyuki saw. To remedy this predicament, Nobuyuki combined the Japanese equivalents of “costume” and “play” to describe what he saw.  This created the word “kosupure,” which in English roughly translates into cosplay. Today, this term universally refers to a fan’s wearing of costumes, props, and accessories to represent a character often originating from video games, comics, movies, and TV shows.  By extension, the individual who imitates the character is known as a cosplayer. Now, some cosplayers, like the competitors at Milwaukee Mighty Con, can have a monetary benefit from winning cosplay competitions.  Such monetary gains naturally bring up concerns regarding the copyrights and trademarks on the imitated characters.

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