FaceBook face-off continues

This Kat watched the film The Social Network for the dramatic story of the creation of and ownership claims to FaceBook, the world's most famous social networking site. The film concluded with FaceBook CEO Mark Zuckerberg settling claims in 2008 with twins Cameron and Tyler Winklevoss and with Eduardo Saverin.

Although the film ended (and Academy Awards were collected), the legal wrangling continues. The Winklevoss twins now allege that the settlement which they reached in 2008 with FaceBook should be voided on the basis that it was procured by fraud. In the Federal Courts in San Francisco (California) and in Boston (Massachusetts), they particularly contended that FaceBook and Mr Zuckerberg did not provide an accurate valulation of the company shares before they agreed to settle their claims for US$65 million cash and stocks.

On 11 April 2011, the 9th US Circuit Court in San Francisco (at 4911) found the agreement between the Winklevosses and Facebook barred future lawsuits and was 'quite favorable' to the twins in relation to market activity at the time: The Facebook Inc v ConnectU Inc. The Court concluded (at 4912) with the prophetic words 'At some point, litigation must come to an end. That point has now been reached'.

Despite the forceful position of the lower court, the twins are fighting on. On Monday 13 June 2011, the US Court of Appeals in San Francisco agreed to suspend litigation related to the Winklevosses’ lawsuit until they file a petition with the US Supreme Court to reverse the dismissal of their claims by the 9th US Circuit Court in San Francisco. That means Facebook and Mr Zuckerberg cannot attempt to dismiss the separate lawsuit in the Boston court.

The IPKat thinks that enough is enough. The Winklevoss twins made their agreement in 2008 with the assistance of qualified advisers. They should not be able to avoid an agreement merely because they now want a bigger slice of the pie (or perhaps FaceBook's proposed public float in 2012).

With the parties again firmly entrenched in their positions, Merpel wonders whether someone should line up Aaron Sorkin for The Social Network 2. This one looks like it is set to go on for some time more ...

No copyright for prisoner

The IPKat was intrigued to read on Wired about a US employee's copyright case with a difference.

James Walton prepared a number of calendars in the course of his employment. One of these he copyrighted in 2001. He subsequently sued his 'employer' after the 'employer' sold them to the US Government's General Services Agency, which distributed them to a number of federal agencies.

The difference is that Mr Walton is a convicted bank robber, and the 'employer' in question was Federal Prison Industries Inc., which employs prisoners in the federal penitentiary where Mr Walton is serving a 17 year sentence.

US copyright law prevents the enforcement of copyright against the US Government by those who created works in "employment or service" of the United States. The court found that it did not need to decide whether Walton was an 'employee' of the US because it was clear that, while in prison, he was acting in the 'service' of the US.

Service had to be defined differently from employment (though the two terms are related). According to the court:

Working for someone and under his direction may constitute being in that person’s “service” even though the relationship does not amount to the typical common-law master-servant relationship that the term “employment” ordinarily describes. Walton’s preparation of the calendar was done “while in the service of the United States.” He developed and made the calendar at the direction of and with computers provided by the United States, and was supervised by United States employees in that work. He performed the work at a government facility, and the government paid him modest compensation for his efforts.

The IPKat reckons that this is a common-sense decision, but one that arguably stretches the words of the legislation. He wonders though if it wouldn't have been easier to treat Walton as an employee. After all, he was doing a job and being paid.

Of penguins and mice

Yesterday the US Second Circuit Court of Appeals reversed the ruling that had vested one of John Steinbeck's sons and a grand-daughter the publishing rights to ten of Steinbeck's early works, including The Grapes of Wrath and Of Mice and Men. According to an Associated News report, brought to the IPKat's attention by the ever-valuable Miri Frankel, this ruling leaves the copyrights in the hands of the Penguin Group, which has declared itself to be "tremendously gratified". According to the AP report,

"Steinbeck signed agreements with The Viking Press in 1938 and 1939 covering many of his best-known words, including "The Grapes of Wrath," "Of Mice and Men," "The Long Valley," "Cup of Gold," "The Pastures of Heaven," "Tortilla Flat" and "In Dubious Battle." The duties of The Viking Press were later assigned by Viking to Penguin Group (USA) Inc., now owned by Pearson PLC.

When Steinbeck died, he bequeathed his interest in the copyrights to his widow while his two sons each received $50,000 in trust funds.

In 1994, Elaine Steinbeck and Penguin signed a new agreement adding several other early Steinbeck works and some of his posthumous works. It also improved the economic terms, providing a larger annual guaranteed advance and royalties of 10 to 15 percent of retail sales.

When she died, Elaine Steinbeck left her copyright interests to heirs including her children and grandchildren from a previous marriage but excluded Steinbeck's two sons and their heirs.

In 2004, Steinbeck's surviving son, Thomas, and Smyle, the sole surviving child of his other son, the late John IV, informed Penguin that they were terminating its publication rights, dating to the 1930s agreements. They cited federal law aimed at preventing publishers from taking advantage of authors who sign away rights early in their careers before they have enough success to demand better terms. Penguin responded by suing them, saying the 1994 agreement with Elaine Steinbeck had superseded and terminated the deals made in the 1930s. Her heirs filed a similar suit ...".

The IPKat finds it sad that the law, passed to prevent publishers taking advantage of authors who sign away their rights when they are still poor and pecunious, was drafted with sufficient latitude to enable not only the interested parties but also their lawyers, and ultimately the judiciary, to take divergent views as to what it meant and how it should be applied. Merpel says, I hate having to unravel the various claims to rights in cases like this, since there are often complex chains of title and, as in most families, people often have the same or similar names. What we need is a convenient arbitral body that specialises in unentangling these entanglements without the need to get involved in highly-publicised litigation.

Penguins and cats here and here
Penguins and mice here
Penguin recipe here

Is Barbie just a brat? Does the UK IPO hold the key?

Hello Dolly


The BBC (and lots of others) report that the trial which says the makers of Barbie, Mattel, take on MGA, the makers of the Bratz dolls in the US. The claim isn't that the Bratz are too similar to Barbie. Instead, it's that Mattel actually owns the rights to the Bratz dolls because their designer was working for Mattel at the time the dolls were thought up and then defected to MGA.

The IPKat notes that this one's a jury trial, just to add that little wildcard factor.

Does this describe a key?


The UKIPO thinks it does (see decision here). According to Mr Hearing Officer Pike, "In relation to the goods in question [“Metal keys, metal key blanks, metal locks (other than electric)”] it is my view that this mark will be perceived as no more than an outline of a key." The Hearing Officer drew attention to the fact that shops which offered a range of goods (rather than being specialist key cutters) might need to use such images to draw attention to the fact that they also cut keys.

The IPKat reckons that this is one of the relatively rare decisions where the need to keep certain marks free under s.3(1)(c) has actually made a difference. He's not sure though. Will consumers really see this as the outline of a key? Even if they do, isn't it just a part of a key, which gives it a sort of abstract quality?