Weekly IP Buzz for the week ending May 3, 2019

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending May 3, 2019.

How Far Can a Brand Commercialize Contracted Works? | Scope of Copyright

New questions were recently uncovered concerning how far a brand can go when it comes to reusing copyrighted works they contracted for use from a third party. What’s the real scope of copyright works?

Photographer Claims Her Work of Cats on Glass for Fresh Step Taken Outside of Scope of Copyright Agreement

In a copyright infringement claim, photographer Jill Greenberg alleges that McGarryBowen and Clorox Company went far beyond the scope of copyright work contracted for when they hired her to shoot photographs of five cats on glass to play off a popular social-media meme for use in advertising under their Fresh Step kitty litter brand.  

While Greenberg was compensated for the portraits she shot of the cats, Greenberg alleges that despite a provision that specifically excludes the right to video use, her copyrighted work ended up on local TV news broadcasts, the “Ellen” show, and a number of other viral video uses on the Internet that came about as a deliberate result of the defendants’ actions. Per the scope of the copyright agreement, Greenberg claims these are unauthorized uses of her work.

Scope of Copyright Use Blown Out of Boundaries of Agreement Provisions

Additionally, Greenberg alleges that the defendants also used her work in pop-up galleries that promoted adoption of shelter cats, which again went beyond the scope of the contracted copyright agreement.  Specifically, Greenberg noted in her complaint that she was neither contacted nor invited when her work was hung and promoted in these New York and Los Angeles galleries.  Greenberg also complains that McGarryBowen and Clorox’s use of her work went beyond the scope of the copyright agreement when they further paid social media influencers to post videos they had taken of Greenberg’s work while it was hung in the Los Angeles and New York galleries.

Lastly, Greenberg alleges that the scope of the copyright agreement did not cover use for allowing her work to become downloadable art, photographs, and mobile wallpaper on devices in connection with Fresh Step’s Paw Points loyalty program.  In this aspect, she alleges that this unauthorized use is comparable to selling her work as merchandise.

In response, the defendants have so far declined to comment nor have they taken steps to remove the contested uses despite multiple discussions between the parties as well as a cease-and-desist letters sent in November.

Read the full article here.

Amazon’s Anti-Counterfeiting Tools

The global counterfeit industry represents over $1 trillion dollars annually.  There are many contributors, pitfalls, and points for check-and-balance all along the supply chain, from the creation of the counterfeit item to its point of sale to a customer.  Amazon has developed a host of anti-counterfeiting tools, to identify counterfeit items currently being sold on amazon.com and remove them, and to prevent counterfeit goods from being listed for sale in the first place.

Amazon announced Amazon Project Zero at the end of February 2019, on their dayone blog.  Described as a three-fold approach to combatting counterfeit products on their stores, covering items already listed for sale and ones coming through the supply chain.

1 – Automated protections:  Brands provide Amazon with their logos, trademarks, and other identifying data, so that Amazon’s machines can constantly scan their stores and initiate the removal of suspected counterfeits. 

2 – Self-service counterfeit removal tool:  Brands have been given the ability to remove counterfeit listings by themselves, instead of reporting the counterfeit item to Amazon and then waiting for Amazon to resolve it.  The self-service tool gives brands the control to monitor for counterfeits and to take action. 

3 – Product serialization:  Brands place a unique code on every item during manufacturing.  Amazon scans and verifies each product’s authenticity, and is able to stop a purchased counterfeit product unit from reaching the customer. 

All brands, including luxury brands, face revenue loss and tarnishing of the brand when dealing with all aspects of counterfeits of their products. To help combat, and circumvent that, Amazon’s anti-counterfeiting tools provide brands with an automated, proactive system for identifying and removing counterfeit products before they reach a potential customer.

Find the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charitable movement devoted to changing the world one random act of kindness at a time, and publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys.

Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.