Category Archives: Copyright

Does Using Your DVR Violate Copyright Law or is it a “Fair Use”?

You know how digital video recorders (“DVRs”) help users fast-forward through the onslaught of ads that come with today’s “small screen” entertainment.  A newer device at the center of a copyright battle—the DISH Network’s THE HOPPER—is a bit different than your typical DVR.  It lets subscribers essentially block out or “hop through” the commercial breaks in the major TV networks’ prime time shows, as opposed to requiring the subscriber to fast forward through them.  We understand some DISH Network employee in Wyoming monitors the network primetime broadcasts and marks the starting and stopping points for the commercial breaks, which allows almost completely uninterrupted viewing of primetime network shows.  (If you’ve been too busy skipping commercials to see DISH’s ads, you can check out the THE HOPPER ad campaign featuring a “charming,” Boston-accented family that always seems to be bickering about their TV viewing priorities.)

While studies have shown that typical DVRs with user initiated, manual fast-forward technology actually increase commercial viewing, the HOPPER technology completely forecloses the possibility of incidental commercial viewing, which the major TV networks, of course, do not like one bit.  Fox, CBS, and NBC each filed separate copyright infringement lawsuits in federal court against DISH to attempt to prohibit DISH from offering its THE HOPPER service to subscribers.  Fox, who did not prevail at the trial level, pursued an appeal to the Ninth Circuit. On appeal, Fox asserted that DISH was violating Fox’s copyrights as well as breaching its rebroadcast contract for Fox’s most popular TV shows (such as The Simpsons, Bones, and Family Guy, to name a few), by recording and rebroadcasting the episodes without permission.  Alternatively, Fox claimed that DISH’s subscribers were violating its copyrights by using THE HOPPER service to record shows and replay them later.  Of course, Fox didn’t sue each and every DISH subscriber but instead asked the Court to hold DISH accountable for its subscriber’s actions.

Thankfully for DISH Network subscribers and DVR users everywhere, in its original July 2013 opinion, the Ninth Circuit found that neither DISH nor its subscribers were violating Fox’s copyrights.  Fox’s attempt to have the matter reheard by the Court were recently rebuffed by the Court.  (You could imagine the implications if the Court found otherwise, think Napster a la 2001!)  In upholding the trial court’s decision, the Ninth Circuit found that DISH was not infringing because it’s subscribers, and not DISH, were copying the shows by initiating the recording (by pressing the “*” button).  As for DISH’s subscribers, the Court determined that they were likely infringing on Fox’s copyrights by making unauthorized copies of Fox’s TV shows, but that such infringement was a “fair use” that neither the subscribers nor DISH could be held liable for.  In making the ruling, the Court relied on its prior opinion in Sony Corp. of Am. v. Universal City Studios, Inc., which focused on whether Sony’s now long-defunct Betamax technology infringed on Universal’s copyrights.  The Court’s Fox/DISH ruling reaffirmed that old case law and reassured delayed TV viewers everywhere:  whether you are recording an episode of Glee with THE HOPPER—or an episode of the A-Team on your Betamax VCR—you can do so with a clear conscious.  (Well, at least when it comes to your copyright infringement conscious, anyway.)  As our courts struggle to interpret and apply copyright law to ever-evolving technologies, we’ll be watching for the latest news.

Ninth Circuit Harshes Hookah Company’s Copyright Buzz

What’s protected by copyright law?  Most of us tend to think of literature/books, music, movies, photographs, graphic art, and other more common “works of authorship” under the Copyright Act.  But it isn’t just the obvious things that come within copyright protection.  For instance, if you are an architect or builder, your original building plans or the unique design elements of the buildings themselves are likely subject to copyright protection.  The Copyright Act even specifically lists your next great pantomime or “mime” as a type of “original work of authorship” (although, I think “man in box” might already be taken) that can be protected by copyright law.

Some things, however, are just not protectable in copyright.  An opinion of the Ninth Circuit Court of Appeals that was released last week shines a light on the concept of copyright protection for so-called “useful articles.”  The case focused on the similarly shaped hookah water containers of two cleverly named companies; Inhale, Inc. and Starbuzz “Tobacco,” Inc. (quote marks are mine).

Before we get into the legal news, it’s worth explaining for the uninitiated, just what exactly is a hookah water container.  After all, “tobacco” smoking devices (there are those quotes again!) are not a frequent topic on the KP blog.  A hookah is a waterpipe, which can be used to smoke flavored tobacco products or other less legal (in Oregon anyway) plant material.  Before the smoke from the tobacco is inhaled, it passes through a water container in the base of the hookah, which cools and adds moisture to the smoke before reaching the smoker.  This vase-like container is the subject of the copyright infringement case mentioned above.

So why did the Ninth Circuit determine that Inhale’s water container was a “useful article” and not protectable in copyright?  In 2008, Inhale registered a copyright for a “Hookah Water Container” claiming that the type of work protected was “visual material” and a “sculpture/3-D artwork.”  The Copyright Office determined that, based on the application, the hookah water container was copyrightable and approved the registration.  In 2011, Inhale filed a copyright infringement suit against Starbuzz after Starbuzz began producing and selling a product that was almost identical in shape, but not in its decorative design.  Inhale’s container sported a stylized skull and crossbones design, while Starbuzz’s container came in various design options such as Ed Hardy artwork or mosaic tile designs.

The Ninth Circuit accepted the party’s concessions on appeal that the water container was properly considered a “useful article.”  A “useful article” is a work that has “an intrinsic utilitarian function.”  To be protected by copyright law, a useful article must have separately identifiable, artistic aspects that exist independently of the article’s utilitarian function.  Inhale argued that its hookah water container had a unique shape and that the shape was separately identifiable from the usefulness of the water container.  Therefore, Inhale posited, its registered copyright included the shape of the water container, and Starbuzz’s use of that shape was grounds for copyright infringement.

In reviewing Inhale’s infringement claims, the Ninth Circuit held that the unique shape of Inhale’s hookah water container was not sufficient to separate the container from its utilitarian function—so the container was not protectable in copyright.  In a previous ruling related to the copyrightability of the shape of a vodka bottle, the Court had appeared to leave open the possibility that a distinctly shaped useful article, such as a vodka bottle or hookah water container, may be sufficient to transform a useful article into a copyrightable work.  The Court’s opinion in Inhale, Inc. v. Starbuzz Tobacco, Inc. has “buzzkilled” that idea.

Bottom line: even though you haven’t completed your great American novel/mime, you may have intellectual property rights in some strange places.  It is definitely worth checking with an intellectual property attorney to conduct an I.P. audit or assist you in evaluating ways to protect your copyrights . . . before your dreams go up in smoke.