T Nation

Copyright Infringement Bull


#1

So I coauthored a paper published in health care manager journal vol 28 and apparently we have committed copyright infringement under section 43c of the lanham act (15 usc s1125) by including the phrase in our title and throughout our paper "creating a culture of accountability" copyrighted in 2001 and the phrase "culture of accountability" copyrighted in 2009. As a result we are no longer able to use, refer to, or distribute our article, or so they claim through a registered letter they had a lawyer draft up to us.

The company doing this is "partners in leadership". I think this is quite ridiculous, anyone have any experience with this sort of thing, would their argument stand up in court? I personally feel like its some intimidation bullshit. Those phrases are pretty common in the business world, I can't believe that shit is even copyrighted, I'd like to know if they sent out similar letters to other authors with papers on the same subject.

The above journal is an american journal, and the registered trademarks are US ones.....we are from canada, I suppose if we published subsequent papers in canadian journals we'd be fine?


#2

I can’t help, but that’s BS, even if it is infringement.


#3

Uhm. Get a lawyer.


#4

Defenses to infringement

A defendant in an infringement action may rebut the presumption of copying by a showing of independent creation. It is possible for an author to create a work independently while bearing similarities to another. If access is not established, there is no copying, even if there is a striking similarity between the two works.[36] For this reason, corporations will destroy or return unsolicited mailings from authors as a policy.[37]

The legal doctrine of de minimis non curat lex, “the law does not care about trivial things,” provides a de minimis copying defense against infringement. When the plaintiff establishes only a trivial use of the copyrighted work by the defendant, there is no infringement. For example, an out-of-focus copyrighted picture appearing only momentarily in the background of a commercial is not infringement.[38] The Beastie Boys successfully used this defense in a lawsuit over the use of three musical notes in the song “Pass the Mic.”[39] The Beastie Boys had obtained a license to use the recording, but the rights to the song itself were retained by the original composer. The court held that use of three notes was not a sufficient use and amounted to de minimis copying. However, the Sixth Circuit has held that the de minimis defense is not available for the sampling of sound recordings because of their intrinsic value in saving the sampler time and costs in hiring musicians to perform the music however short.[40]

The two most important defenses to copyright infringement are the first sale doctrine and fair use.

The first sale doctrine is a defense to infringement of the distribution right. It permits a lawful purchaser of a copyrighted work to resell or otherwise dispose of it. This, however, is not a defense to the reproduction right.

Fair use is an affirmative defense, but its application will vary greatly depending on the facts and circumstances of the case. Courts apply a four part balancing test examining the scope of infringement, the effect on the copyright owner’s rights (e.g. his or her ability to sell the work), the amount of the work copied, and the purpose of the infringement. Courts have held that a non-commercial use is not fair use when it has a substantial market effect. In cases with a small-scale impact, courts are more receptive to arguments regarding the effect on the copyright owner’s market or potential market. Fair use is used mainly in the United States. Other common law jurisdictions have the more rigidly defined defence of fair dealing, while civil law jurisdictions also have similar defences.

The above is copied and pasted from Wikipedia. It is nonsense, in my opinion, to be allowed a copyright for the phrase “culture of accountability.” It is so common in business language. Off topic a bit, but it reminds me of Paris Hilton trying to copyright the phrase “that’s hot” a few years ago. She was rejected.

I am dealing with a similar issue as we speak. I have been in sales management for twenty years. In that time I have read most every book on sales and attended most seminars. What is so evident to me is how they all “borrow” from one another. They are always trying to come up with a new spin or terminology for principles and techniques that have been around forever. Of course we are all more conscious of content from the time period we first begin studying a discipline. I am amazed at how much of the sales training I see is reworked from the works of Tom Hopkins and Zig Ziglar. Hopkin’s “How to Master the Art of Selling” is probably the most influential book on sales of the last 25 years. I am sure that if pressed, he would admit that he got his from a mentor, and so on, and so on…

I was recently approached by a company to do some contract work with them in sales training. They have a collaborative agreement with a large consulting company, meaning they license content from them. I checked it out and negotiated with them for a compensation plan I would be satisfied with. The CEO agreed, but the regional representative put up resistance, wanting me to come in under him and split my earning 50/50 with him. I passed and decided to form my own company and go it alone. Now they are emailing me saying that I signed a “non compete” (I did not) and confidentiality agreements and if I continue they will take legal action. It is more of a scare tactic, but I can definitely see them getting hold of my training content and pouring over it to find infringement, if only to slow the inevitable competition.

I visited the website of the company hassling you and they are very similar to the one I am dealing with, only smaller. I believe in intellectual rights. The problem in your and my case is that the law is being used to “bully” rather than protect legitimate interest.

Good luck to you. If you plan on distributing your paper further, see an attorney. If not, continue to do what you are doing now. Post your experience on as many boards and public avenues as you can. The court of public opinion seems to be the only fair and equitable court these days when the little guy is up against Goliath.


#5

BTW, the independent creation or trivial use sections above both seem viable defenses in your case. Either way, I am not a lawyer and do not play one on TV.


#6

[quote]JEATON wrote:
Defenses to infringement

A defendant in an infringement action may rebut the presumption of copying by a showing of independent creation. It is possible for an author to create a work independently while bearing similarities to another. If access is not established, there is no copying, even if there is a striking similarity between the two works.[36] For this reason, corporations will destroy or return unsolicited mailings from authors as a policy.[37]

The legal doctrine of de minimis non curat lex, “the law does not care about trivial things,” provides a de minimis copying defense against infringement. When the plaintiff establishes only a trivial use of the copyrighted work by the defendant, there is no infringement. For example, an out-of-focus copyrighted picture appearing only momentarily in the background of a commercial is not infringement.[38] The Beastie Boys successfully used this defense in a lawsuit over the use of three musical notes in the song “Pass the Mic.”[39] The Beastie Boys had obtained a license to use the recording, but the rights to the song itself were retained by the original composer. The court held that use of three notes was not a sufficient use and amounted to de minimis copying. However, the Sixth Circuit has held that the de minimis defense is not available for the sampling of sound recordings because of their intrinsic value in saving the sampler time and costs in hiring musicians to perform the music however short.[40]

The two most important defenses to copyright infringement are the first sale doctrine and fair use.

The first sale doctrine is a defense to infringement of the distribution right. It permits a lawful purchaser of a copyrighted work to resell or otherwise dispose of it. This, however, is not a defense to the reproduction right.

Fair use is an affirmative defense, but its application will vary greatly depending on the facts and circumstances of the case. Courts apply a four part balancing test examining the scope of infringement, the effect on the copyright owner’s rights (e.g. his or her ability to sell the work), the amount of the work copied, and the purpose of the infringement. Courts have held that a non-commercial use is not fair use when it has a substantial market effect. In cases with a small-scale impact, courts are more receptive to arguments regarding the effect on the copyright owner’s market or potential market. Fair use is used mainly in the United States. Other common law jurisdictions have the more rigidly defined defence of fair dealing, while civil law jurisdictions also have similar defences.

The above is copied and pasted from Wikipedia. It is nonsense, in my opinion, to be allowed a copyright for the phrase “culture of accountability.” It is so common in business language. Off topic a bit, but it reminds me of Paris Hilton trying to copyright the phrase “that’s hot” a few years ago. She was rejected.

I am dealing with a similar issue as we speak. I have been in sales management for twenty years. In that time I have read most every book on sales and attended most seminars. What is so evident to me is how they all “borrow” from one another. They are always trying to come up with a new spin or terminology for principles and techniques that have been around forever. Of course we are all more conscious of content from the time period we first begin studying a discipline. I am amazed at how much of the sales training I see is reworked from the works of Tom Hopkins and Zig Ziglar. Hopkin’s “How to Master the Art of Selling” is probably the most influential book on sales of the last 25 years. I am sure that if pressed, he would admit that he got his from a mentor, and so on, and so on…

I was recently approached by a company to do some contract work with them in sales training. They have a collaborative agreement with a large consulting company, meaning they license content from them. I checked it out and negotiated with them for a compensation plan I would be satisfied with. The CEO agreed, but the regional representative put up resistance, wanting me to come in under him and split my earning 50/50 with him. I passed and decided to form my own company and go it alone. Now they are emailing me saying that I signed a “non compete” (I did not) and confidentiality agreements and if I continue they will take legal action. It is more of a scare tactic, but I can definitely see them getting hold of my training content and pouring over it to find infringement, if only to slow the inevitable competition.

I visited the website of the company hassling you and they are very similar to the one I am dealing with, only smaller. I believe in intellectual rights. The problem in your and my case is that the law is being used to “bully” rather than protect legitimate interest.

Good luck to you. If you plan on distributing your paper further, see an attorney. If not, continue to do what you are doing now. Post your experience on as many boards and public avenues as you can. The court of public opinion seems to be the only fair and equitable court these days when the little guy is up against Goliath. [/quote]

Thanks for the input. Ya I don’t understand why that phrase was allowed to be trade marked, it is pretty common in business as you said. Myself i’m following different career path now, so it is unlikely to affect me really, although I’d still like to be able to place this on my C.V. and whatnot and of course it enrages me; however the prof that worked with me on this paper planned to reference our article in future publications of his. I think he will end up getting lawyer to look into it more.


#7

I’m not a lawyer and would suggest you consult one, but here are my thoughts.

The Lanham Act deals with trademarks, not copyright, so the above information about copyright does not apply as copyright and trademark are two separate animals.

For there to be infringement of a trademark, you would need to be using the trademarked phrases as a trademark, i.e. as an identifier of source. It sounds as though you are only using them in a descriptive sense. As a simple example to explain what identifier of source means, suppose that you sold beer under the trademarked brand name “Canadian Beer”. If somebody wanted to write an article about Canadian beer in general, not your particular brand, they could use the term because they would be using it in a descriptive sense to describe beer that is Canadian.

In addition to the above, for there to be infringement, your use of the trademarked terms would need to cause a “likelihood of confusion” as to source. Since you are only using the terms descriptively, it is unlikely that anyone would be confused because you are not selling anything. But if you are selling a service or product in the US using those terms you could have trouble.

You are correct that U.S. trademarks are valid in the U.S. only. However, they may also be trademarked in Canada as well. Your lawyer would be able to find that out.


#8

It should be noted that if the phrases are common as you say that you could challenge the validity of the trademark if they were to sue you.

Simple answer to your question: It is intimidation and they would probably lose if they were to sue you.*

Disclaimer: I don’t know all the facts and am not a lawyer, so you should ignore all internet advice and consult an attorney.


#9

What was the phrase?

If it were me, the first thing I would do is draft a reply telling them to “suck my dick”. Then if they sue you, countersue for harassment and make them come to you for court.


#10

[quote]Nosewater wrote:
I’m not a lawyer and would suggest you consult one, but here are my thoughts.

The Lanham Act deals with trademarks, not copyright, so the above information about copyright does not apply as copyright and trademark are two separate animals.

For there to be infringement of a trademark, you would need to be using the trademarked phrases as a trademark, i.e. as an identifier of source. It sounds as though you are only using them in a descriptive sense. As a simple example to explain what identifier of source means, suppose that you sold beer under the trademarked brand name “Canadian Beer”. If somebody wanted to write an article about Canadian beer in general, not your particular brand, they could use the term because they would be using it in a descriptive sense to describe beer that is Canadian.

In addition to the above, for there to be infringement, your use of the trademarked terms would need to cause a “likelihood of confusion” as to source. Since you are only using the terms descriptively, it is unlikely that anyone would be confused because you are not selling anything. But if you are selling a service or product in the US using those terms you could have trouble.

You are correct that U.S. trademarks are valid in the U.S. only. However, they may also be trademarked in Canada as well. Your lawyer would be able to find that out.[/quote]

Interesting, thanks. I guess I just interchanged the 2 terms, rereading the letter it just mentions trademark misuse. We definitely aren’t trying to sell anything.


#11

[quote]theuofh wrote:
What was the phrase?

If it were me, the first thing I would do is draft a reply telling them to “suck my dick”. Then if they sue you, countersue for harassment and make them come to you for court. [/quote]

“creating a culture of accountability” trade marked in 2001 and the phrase “culture of accountability” trade marked in 2009.

haha ya that would be hilarious, I’ll hold my tongue for now though, see what he finds out from a lawyer.


#12

you can copyright phrases that are very gay?


#13

I’ve taken a ton of media law classes, and long story short, if your paper was authored in 2001, and the phrase was copyrighted in 2009, the organization that copyrighted the phrase has absolutely no control over any past usage of the phrase whatsoever, unless they can clearly prove that the phrase was defining or related to their organization before or during the time you authored your paper.

As for current usage of the phrase, and thus your paper, I don’t know. But they can’t sue you over that paper, and they would be idiots to try.

Disclaimer 1: This is assuming you’re in America. If not, I am not at all familiar with any foreign copyright law.

Disclaimer 2: Get a lawyer. Seriously. Chances are, you’ll pay a few hundred bucks to make this go away, and you’ll never have to think about it again.


#14

I don’t have a Lexis-Nexis subscription so cannot test this out, but if you can get access to it, why not try a search for uses of “culture of accountability” occurring prior to 2001 and not by these folk. I tend to suspect that you will find it having been used before, with the same meaning as you used in your paper.

While not the same as copyrights, by way of something at least remotely similar I know of patent cases where bogus claims of infringement were promptly dropped by the attorneys on their being provided evidence that their client’s patents were invalid in the first place. So perhaps that could help here.


#15

fuck that, counter sue their asses.

theres probably some fancy word for ‘attempting to sue someone over false pretenses’


#16

Note: what I wrote about finding earlier uses would be relevant only if this is a claim of copyright infringement, as you stated. Which would be weird because I did not think phrases that short could be copyrighted. But if such were granted, then previous existence would prove it invalid.

It does instead sound like a trademark issue. In that case, there is no point in finding previous uses. The error is entirely theirs in asserting that trademarked phrases cannot be used according to their ordinary meaning in text that is not in promotion of competing business or capable of being confused by it. However people like this are unlikely to be deterred by anything but an attorney. They are not operating from ignorance really, most likely, but arrogance.


#17

[quote]Xab wrote:
I’ve taken a ton of media law classes, and long story short, if your paper was authored in 2001, and the phrase was copyrighted in 2009, the organization that copyrighted the phrase has absolutely no control over any past usage of the phrase whatsoever, unless they can clearly prove that the phrase was defining or related to their organization before or during the time you authored your paper.

As for current usage of the phrase, and thus your paper, I don’t know. But they can’t sue you over that paper, and they would be idiots to try.

Disclaimer 1: This is assuming you’re in America. If not, I am not at all familiar with any foreign copyright law.

Disclaimer 2: Get a lawyer. Seriously. Chances are, you’ll pay a few hundred bucks to make this go away, and you’ll never have to think about it again.[/quote]

They trade marked creating a culture of accountability in 2001, and then trade marked culture of accoutability in 2009. Our paper came out recently in 2009.


#18

[quote]Bill Roberts wrote:
Note: what I wrote about finding earlier uses would be relevant only if this is a claim of copyright infringement, as you stated. Which would be weird because I did not think phrases that short could be copyrighted. But if such were granted, then previous existence would prove it invalid.

It does instead sound like a trademark issue. In that case, there is no point in finding previous uses. The error is entirely theirs in asserting that trademarked phrases cannot be used according to their ordinary meaning in text that is not in promotion of competing business or capable of being confused by it. However people like this are unlikely to be deterred by anything but an attorney. They are not operating from ignorance really, most likely, but arrogance.[/quote]

Ya I’ve been interchanging the 2 words inappropriately - it is a trademark issue. I bet these wankers trolled around for articles with the phrase and sent out a mass amount of registered letters or something.


#19

I think the journal would have more experience with this type of thing and the need to do something about it quickly. As far as I can tell, people can still buy access to your single article.

I’d talk to the journal’s lawyers, maybe through your uni’s legal department.


#20

[quote]HoratioSandoval wrote:
I think the journal would have more experience with this type of thing and the need to do something about it quickly. As far as I can tell, people can still buy access to your single article.

I’d talk to the journal’s lawyers, maybe through your uni’s legal department.[/quote]

This whole thing is BS- keep writing your ACADEMIC articles and nothing can happen to you. I would title the next article WHAT CORPORATE ASSHOLES THINK ABOUT THE ‘NEW’ CULTURE OF ACCOUNTABILITY.

jnd