Author Archives: rpalumbi

Peer-to-Peer File Sharing Targeted by Copyright Alert System

By: Robert M. Palumbi, attorney at Picadio Sneath Miller & Norton, P.C.

Efforts to combat internet piracy and protect a copyright in the digital environment are certainly not a new concept. Less than a year ago we were all made aware of the Stop Online Piracy Act (SOPA) and the Protect IP Act (PIPA), two federal anti-piracy proposals which were met with hostility and backlash from both users and providers.

Based on the backlash of SOPA and PIPA, a new system appears to be on the horizon. The Copyright Alert System (CAS) is part of a new approach by ISP’s and Intellectual Property Organizations to help users understand the significance of protecting copyright in the digital environment. This is a significant change from the punitive nature of SOPA and PIPA and a shift to a more educational method. The CAS focuses on advising subscribers about the importance of avoiding inadvertent or intentional online distribution of copyrighted content and to suggest legal ways to obtain such content.

The CAS is intended to target the infringement of peer-to-peer file sharing of copyrighted works. This type of infringement is easily detectable, as IP addresses of internet customers usually reveal themselves during the transfer of files. Regardless, the rights of a copyright owner won’t change. The Copyright Act allows damages of up to $150,000 per infringement of a work registered with the Copyright Office. It should be no surprise that the CAS was heavily lobbied for by the Recording Industry Association of America and the Motion Picture Association of America, the two industries that have been hit the hardest but digital copyright infringement.

The CSA will use a unique “six alert” process that will be progressive in nature. Owners will notify a participating ISP when they believe that their copyrights are being misused online by a specific computer which can be identified by the IP address. The ISP will then send the first alert; perhaps an email that notifies the subscriber that their account has been involved in a copyright infringement. This first alert will also direct the subscriber to educational resources which will provide an explanation of the law violated, how to avoid copyright infringement, and provide legal ways to obtain content. If the activity persists, a second alert is sent which reiterates the warnings and provides the resources of the first alert.

The third and fourth alerts are very similar in nature. Not only will the subscriber receive an alert, but they will be forced acknowledge receipt of the warnings that they are violating a copyright. The fifth alert allows the ISP some leeway in what steps are taken to stop future copyright infringement. The ISP may temporarily reduce the speed of the subscriber’s internet; redirect the user to web page until the user calls the ISP to discuss the matter, or any other measures that the ISP deems necessary. The sixth alert will involve more harsh mitigation measures at the discretion of the ISP.

The CAS represents a compromise between internet users and the movie and music industry, who were seeking much harsher measures. Those industries were seeking a plan that would cut off internet service to the subscriber after the sixth alert, or even fine the ISP provider for each transgression after the sixth alert, which would then be passed down to the subscriber. A similar system has been implemented in France. The CAS alerts do not alter the rights of the copyright holder, who can still treat each alert as a separate infringement for purposes of damages under the Copyright Act. The Center for Copyright Information expects this system to be launched by the end of 2012.

Popular Reality Television Show Deals With Trademark “Situation”

By: Robert M. Palumbi, attorney at Picadio Sneath Miller & Norton, P.C.

When we think of the typical reality television show today, we are generally focused more upon the outrageous conduct of the characters rather than the implications of the onerous terms of the contracts between the cast and company. However, intellectual property rights are currently directly in dispute between Michael “The Situation” Sorrentino and MTV owner Viacom over trademarks to the phrases he uses on the show “Jersey Shore.”

A trademark generally refers to a distinctive sign or indicator used by an individual or company in order to identify their products and services to the public, usually through a logo or brand. Using a trademark without the permission of the owner in certain products which may be similar or dissimilar would constitute trademark infringement, allowing the owner of a registered trademark to institute legal proceedings against the infringer.

Sorrentino has claimed in the past that many of the catch-phrases he uses on the show were developed prior to filming, with the intention of using such phrases in the show and later asserting trademark rights. On August 22, 2011, Sorrentino, through his company, MPS Entertainment, filed a registration with the Trademark Board for the term “twinning”, with the intent to use the phrase on t-shirts. On August 15, 2012, MTV owner Viacom filed papers at the Trademark Trial and Appeals Board stating that it owned any and all catch-phrases that Sorrentino develops on the show.

So what is Viacom’s basis for such a position? It can all be traced back to the oppressive Participant Agreement Sorrentino signed with the studio that produced the original “Jersey Shore.” In that Participant Agreement, Sorrentino waived the rights to “all ideas, gags, suggestions, themes, plots, stories, characters, characterizations, dialogue, text, designs, graphics, titles, drawings, artwork, digital works, songs, music, photography, video, film, and other material whether or not fixed or reduced to drawing or writing, at any time heretofore or hereafter created or contributed by me which in any way related to Jersey Shore.”

Nonetheless, this was just the original contract between the parties. After the show became popular, Sorrentino and Viacom signed an amended contract which reasserted the above rights, adding “The above language shall not be construed to grant to Artist or otherwise allow Artist the right to issue t-shirts featuring Artist’s quotes from the series.” Viacom followed this up with an additional provision that states “The above language shall not in any way limit any previous grant of rights to the Producer.”

Based upon this Participation Agreement, Viacom stated in papers filed with the Trademark Trial and Appeals Board that “Under the terms of the Participant Agreement Form, all rights in any intellectual property relating to Jersey Shore belong to 495 Productions Inc., the production company which creates the programs in the Series, which in turn assigned those rights by separate contract to Remote Productions Inc., a wholly owned subsidiary of Viacom. Therefore, Viacom is the rightful owner of all rights in and to the “twinning” mark and slogan.”

These developments highlight the carelessness of individuals who are explicitly willing to sign away their personal rights just for a chance at becoming a celebrity. Production companies are well aware of this phenomenon, and seemingly are in a position of power when proposing terms. However, this doesn’t mean that Sorrentino was permanently placed in such a position; remember, he did sign an amended contract. Perhaps a smarter way to deal with such a situation would be the path Karen J. Connelly took in her 2005 case against ValueVision Media. (Connelly and S.Y.K., LLC v. ValueVision Media, Inc. d/b/a ShopNBC, 393 F. Supp. 2d 767 (D. Minn. 2005).

Connelly worked as a television program host of the corporation, and her initial contract was similarly as oppressive as Sorrentino’s, forcing her to sign away all “inventions, innovations, or improvements in the method of conducting Employer’s business or otherwise related to Employer’s business, including new contributions, improvements, ideas, and discoveries, whether patentable or not or otherwise protectable by copyright, trademark, common law or trade secret law.” However, as Connelly grew in popularity, she also had an opportunity to sign an amended contract, which did in fact in retain some trademark rights. Perhaps if Sorrentino would have taken advantage of his opportunity to sign an amended contract he wouldn’t be in the situation he finds himself in.