dnball’s Techdirt Profile


About dnball

Intellectual property attorney in my own boutique law firm, Sequoia Counsel PC. Micro-blog on Twitter at Ballard_IP.

dnball’s Comments comment rss

  • Jun 18th, 2015 @ 1:56pm

    Re: Re: Re:

    Whether right or not, fair use is an affirmative defense -- imposing the burden of proof on the alleged infringer – because the Supreme Court has repeatedly noted that it’s an affirmative defense. Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 561 (1985) (“The drafters resisted pressures from special interest groups to create presumptive categories of fair use, but structured the provision as an affirmative defense requiring a case-by-case analysis.”); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994) (“Since fair use is an affirmative defense, its proponent would have difficulty carrying the burden of demonstrating fair use without favorable evidence about relevant markets.”).

    Until the Supreme Court holds otherwise, alleged infringers will bear the burden to prove their use is fair. A good article discussing the origin of fair use as an affirmative defense and the burden of proof is here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1340128

    I don’t think fair use is an affirmative defense because it’s assertion is NOT the admission of a wrongdoing that’s justified by a privilege or excuse. See 17 U.S.C. 107 (“ … the fair use of a copyrighted work … is not an infringement of copyright.”). I think fair use is a “denial” defense – that is, it denies any wrongdoing. But I don't have a say in the matter. A very good explanation of the difference is here: http://www.litigationcontrolpanel.com/CAD/Ch1.pdf

    The fair use burden shifting is mitigated somewhat by the even-handed grant of attorneys’ fee awards to successful fair users. One such ruling is here: https://www.scribd.com/doc/75510815/Seltzer-v-Green-Day-Fee-Award

    Moreover, one influential judge has concluded that before sending a DMCA takedown notice a copyright owner MUST consider whether the alleged infringer has a fair use right to use the allegedly infringing material. Lenz v. Universal Music Corp., No. 5:07-cv-03783-JF, 2013 WL 271673 (N.D. Cal. Jan. 24, 2013) (“The Court concludes that at minimum, for the reasons discussed at length in its prior order, see Lenz, 572 F. Supp. 2d at 1154-56, a copyright owner must make at least an initial assessment as to whether the fair use doctrine applies to the use in question in order to make a good faith representation that the use is not ‘authorized by law.’"). The ruling is here: https://scholar.google.com/scholar_case?case=16651379811470109098

  • Oct 16th, 2011 @ 10:08am

    Re: Motion to Dismiss vs. Summary Judgment

    The judge should have granted the motion to dismiss. He failed in his legal analysis by skipping the threshold issue of whether the allegedly infringing mark was being used in commerce AS A MARK. Only if such use occurs can there be, as a matter of law, infringement of the mark. The judge's analysis on the merits began by considering whether Getty's "use" of the mark was a "fair use." But that presupposes that Getty is making a trademark use of the mark at all. It is not. This action, as a matter of law, is unsupportable and should have been dismissed. Regardless of the facts alleged in the complaint.

  • May 8th, 2011 @ 12:04pm

    More critique

    Attorney Lara Pearson has critiqued the report as well. See
    http://goo.gl/gc0EN .

  • Jan 5th, 2011 @ 2:04pm

    Re: Re: Re: Re: Re: Genitive Versus Possessive

    "I guess you value a poor stab at humour over the actual point you're trying to make."

    I have no idea what you're talking about. I made no joke nor attempted any humor.

    "You don't have to be arguing that society doesn't have the right to make copyright law to be against the concept of intellectual property, hence the strawman."

    Yes, you do. If someone accepts that society has the right to make copyright laws [i.e., conferring on authors the exclusive right to exploit their creations] then that IS accepting the "concept of intellectual property." It only isn't if you reject the validity of laws that you do not happen to agree with.

    "My point was that pigs can't fly, but feel free to make a law giving them that right."

    I did not directly address your pig analogy because it was dumb. I think you're trying to say that a pig is like intellectual property and the ability to fly is like the concept of "property." So, your argument-by-analogy goes, I think, that because a pig cannot fly intellectual property is not property. Hmmm. That's too esoteric, and dumb, for me.

    "Ah yes, when desperate.. finish with an ad hominem."

    An ad hominem argument is an argument "against the man." I did not argue that you are somehow dysfunctional, dishonorable, or otherwise bad. I clearly said that it was your unthoughtful criticism that was unhelpful. You, God willing, can be saved from your delusions.

  • Jan 1st, 2011 @ 10:01am

    Re: Re: Re: Genitive Versus Possessive

    You write: "So, if I take a pack of cards from you and create a house of cards then I own it? If it were more complicated then surely you wouldn't have empthasised the simplicity by adding 'just like that'."

    My statement "But if I create tangible thing X then I own it, just like that" (1) assumes lawful ownership of whatever is needed to create X and (2) included just like that because that is a quote from the poster to whom I was responding and the point that I was rebutting.

    You write: "That looks like a very ugly (and not too subtle) strawman."

    What I wrote means that those who deny the existence of intellectual property deny societys right to create intellectual property rights by law. If you think that is straw so be it.

    You write " Pigs aside, the point is that the extremity of the law doesn't matter if it isn't any use."

    Clearly false. The extremes of anything including the scope of rights we call intellectual property serve to bound what falls within. Deniers of intellectual property exclude it from the boundaries of what established law calls property. My point was to place intellectual property rights within the boundary of property and to posit that the position of those rights within that boundary can be reasonably disputed.

    You write: "You think the argument is a silly exercise because you've already decided the outcome?"


    Thoughtful criticism is useful and moves the analysis and discussion forward. Unthoughtful criticism, such as yours, hinders that progress. Stop it.

  • Dec 31st, 2010 @ 12:36pm

    Re: Re: Re: Re: Re: Re: Genitive Versus Possessive

    I forgot a "not."

    ... Second, I realize that you and Nina do [not] WANT the bundle of rights that we call copyright and patent to be property. ...

  • Dec 31st, 2010 @ 9:02am

    Re: Re: Re: Re: Re: Genitive Versus Possessive

    Three points.

    First, works of authorship and inventions convey information, NOT knowledge.

    I get it that your anti-IP side wants the moral high ground and so you characterize the pro-IP forces as depriving the world of knowledge. But that tactic's a loser. The vast number of copyrightable works are valueless drivel and many, many patents claim worthless inventions less-advanced than the state of the art.

    Your rebuttal is that these critiques are mere subjective judgments. Yes they are. But Quality exists and everyone, including you and the self-anointed enlightened, routinely assign higher value to Keats than the corpus of an internet chat room and more to a room temperature, superconducting material than a novel variation of the head of a ball peen hammer. Every idea is not equal. When you stop equating information with knowledge your side will gain more credibility. [As an aside, Pirsig's book "Lila" is a wonderful treatment on the subject.]

    Second, I realize that you and Nina do WANT the bundle of rights that we call copyright and patent to be property. But they are. Societies [throughout modern history] have decided, democratically, that it benefits them more when the creators of works of authorship and novel, non-obvious inventions w/utility are granted a time and scope-limited bundle of rights in exchange for the creators sharing their creations with the public. As opposed to those creators privately enjoying their works and either privately using their inventions or placing them on shelves for no one to use.

    [I get it that you assume a third option: the creator begs off that bargain and publishes w/o demanding any consideration. Certainly some do. But copyright and patent exist to motivate those to publish who otherwise would not.]

    You can reasonably argue that governments do not have the authority to adopt Constitutions that recognize these bundles of rights or the authority to enact laws to create and enforce them. But you CANNOT deny that governments have. Because they have, these bundle of rights attach, under statute-specified circumstances, to works of authorship and inventions. They exist. These rights can be bought and they can be sold. In what way are they are not "property?"

    The only logical way that I can see for you deny that these rights are "property" is for you to take the position that when a government enacts laws that you believe it has no authority to enact then those laws are void -- more so, actually, that those laws do not even exist.

    Ok. Believe that and live and work outside the governing structure the rest of us live and work within. But you have no right to live and work within ours and pick and chose which laws to abide by and which you won't. Try to change them if you like. But you have no right to deny them.

    Third, and this is an argument for another day, information IS rivalrous in that it takes resources to create it [and to disseminate it].

    People compete for the resources needed to acquire facts, to evaluate them, and to use them to build hypotheses, theories, inventions, works of art, etc. It is too convenient, and simplistic, to say that information is non-rivalrous when resources are need to create it.

    Your concern about the limitation on information flow is, in my view, amply answered by the copyright rule that facts and abstractions are not copyrightable and the patent rule that theories, ideas and plans, laws of nature, and scientific principles are not patentable.

    Again, the proper debate is over the scope of the property rights that a government should grant to those who create. It is time-wasting to debate that those bundle of rights are not "property."

    Good chat. Thanks.

  • Dec 30th, 2010 @ 6:26pm

    Re: Genitive Versus Possessive

    Lawrence, that's an interesting distinction.

    But if I create tangible thing X then I own it, just like that. Or my employer, or whoever hired me, does. X IS property. That's how your two meanings of "my" are conflated.

    Even in non-Western cultures [and communist states] when a thing is made it belongs, at most, to the community at large -- and let no neighboring community try to come take it because that's how wars begin. Every tangible thing within the borders of a nation-state is property that can be bought and sold. Which only leaves, I think, the air, oceans, and polar land masses.

    Those who oppose the very concept of "intellectual property" merely oppose society's decision to create enforceable rights restricting all others but the creator of the property from using that property for a certain period of time.

    There is NO "natural law" basis that mandates that the creator be given the exclusive right to use his or her creation. Those rights are conferred by man through law -- which can, at one extreme, deny the rights altogether and, at the other extreme, make them inviolate and in perpetuity.

    I think arguing over whether a copyright and a patent and a trademark and trade secrets are "property" or not is a wholly silly exercise. They are property. The real debate is over where to set their temporal and exclusive use boundaries.

  • Dec 30th, 2010 @ 9:44am

    My way too serious two cents

    Super and funny antidote to the IP maximalists. But ...

    I don't object to the "property" portion of the label. Property, when all the metaphysics is stripped away, is anything that can be bought and sold.

    ALL property, however, is encumbered -- either specific to the thing [rights of way and other easements, use restrictions that run with the land or on how the thing can lawfully be used] or imposed by law [doctrines of public and private necessity, eminent domain, adverse possession, privileged invasion].

    Intellectual Property is no different: the owner's particular "intellectual property" legal rights shield can [and should] be lawfully pierced by the public on occasion.

    My problem is with "intellectual" -- which denotes a product of the mind. But that's too tight a restraint.

    If "intellectual property" is the label for property rights that are not real, personal, or contractual then the label is excludes lots of rights thought of as IP step-children: everyones right of publicity, the right to be free from trade libel, the right to sell free from unfair competition, right to use geographic indicators, implied contract right via idea submission law, visual artists' right of attribution, and even domain name registration rights.

    I prefer "Intangible Property."

  • Oct 28th, 2010 @ 1:37pm

    Re: Plagiarism v. Copyright Infringement

    "Plagiarism" is a catchall term that, in certain circumstances, of which this might be one, that includes the legal wrong of breach of an implied-in-fact contract.

    There is, in fact, a legally cognizable cause of action for "plagiarism" if the plagiarist appropriated material submitted to the plagiarist by someone who, based on the circumstances, could reasonably assume that the material would not be used w/o permission.

    The field of law is "idea submission law" and the cause of action sounds in contract -- NOT copyright as it appears this plaintiff is asserting. See, for example, http://goo.gl/qlJo .

  • Oct 20th, 2010 @ 8:52pm


    Reading the California law is step one: http://goo.gl/kMRk . A detailed history of how the bill evolved that ultimately became the law in 2000 is here: http://www.ucdfa.org/NashIP.pdf

    So, in California it's unlawful to prepare, give, sell, or publish for a commercial purpose any contemporaneous recording of a classroom "academic presentation" IF the presentation is not "fixed in a tangible medium of expression."

    In short, if the instructor wings it and his lecture is not written down anywhere then students cannot give away or sell the notes they take of that lecture. The rationale is that the professor owns a "common law" copyright in the lecture material [common law because federal copyright law does not apply when a work is not "fixed in a tangible medium of expression."]

    But if the instructor has written down the lecture [or some substantial part of it] then I think it probable that this California state law DOES NOT APPLY and, therefore, does not even speak to the question of whether students can lawfully give away or sell the notes they take. We have to look to federal copyright law.

    The reason for the distinction is because federal copyright law applies to all creative works that exist in tangible form [in this case, written down]. State law can only apply to, and in this case protect, creative works that are unprotectable by copyright law [like lectures given on the fly].

    How many professors lecture w/o writing their lectures down in some fashion? None. ALL professors work from at least their notes on the subject they're discussing. Even the older ones who no longer bring their notes to class anymore. Which, to me, means that the California law will NEVER apply [being preempted by the federal copyright law].

    If federal copyright law applies then as soon as the professor writes down the content of his lecture copyright AUTOMATICALLY attaches to that literary work -- w/o any formalities [such as registering the copyright with the Copyright Office].

    So ... once a professor's lecture is written down and then performed in class, the next issue is whether the students infringe that copyright by writing down their summaries of the professor's lecture.

    Copyleftists may not like the answer but I think that the answer as the law stands now is yes. Research "derivative works" and the test used to determine whether a subsequent work is a derivative of an original.

    Once you conclude that the students' notes are infringing derivative works the next issue is whether the students have some defense or justification for their infringement. The answer to that is, I think, also yes -- specifically, by the custom in academia and by professor acquiescence the student has an implied license to summarize the professor's lecture as it's being performed.

    But I think that license only authorizes the students to use their summaries for OWN personal use. Making copies is outside the license as is selling the original copy of their notes.

  • Sep 7th, 2010 @ 8:12am

    Re: Re: licensing options

    Abandonment through naked licensing occurs when a trademark owner fails to take the reasonable steps necessary to monitor the quality of goods produced by a licensee. First Interstate Bancorp v. Stenquist, 1990 WL 300321, at *3 (N.D.Cal. July 13, 1990) (Patel, J.). This failure to ensure quality control "may result in the trademark ceasing to function as a symbol of quality and controlled source." 3 McCarthy § 18:48. As a result, "a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark." Barcamerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 596 (9th Cir.2002) (citing Moore Bus. Forms, Inc. v. Ryu, 960 F.2d 486, 489 (5th Cir.1992)).

  • Sep 6th, 2010 @ 6:56am

    licensing options

    Under EVERY trademark license [paid or free] the trademark owner remains obligated to police the licensee's use of the mark to ensure that whatever is being offered under the mark meets the quality standards consumers have come to associate with the mark. If that standard is not met then the trademark owner is obligated to take steps to remove the low-quality goods or services from the marketplace.

    It may be that the cost of policing untold thousands of free licensees makes economic sense for Twitter [which asserts it will "aim to protect" the meaning consumers have come to associate with TWEET].

    But for the vast number of consumer product and service companies the cost of policing untold thousands of free licensees is prohibitive.

    The options are free licensing with very costly policing efforts, paid licenses with manageable policing costs, or no licensing at all.

    Free licensing makes no sense for most businesses.

  • Aug 11th, 2010 @ 1:38am

    Generic terms

    You're conflating two issues:

    [1] The inherent right of all marketplace participants to promote their product or service by calling it what it is [i.e., by naming it using words in their dictionary, "generic" sense]. Trademark law cannot permit, for example, one apple farmer to own the exclusive right to use the word "Apple" when promoting the sale of his apples because that would inhibit the sale of apples by other apple farmers.

    [2] The public's interest in efficient communication through its use of words or terms previously used as trademarks but which are no longer trademarks because the trademark owner PERMITTED its competitors to use the same word or term to brand their version of the product. This is "genericide."

    The former trademark owner may have expressly abandoned its mark or may have lost its exclusive rights in its mark through very poor enforcement efforts. Either way, if lots of folks selling the same product call the product by the same name then the law assumes the public may as well and so the word or term joins our society's luxurious lexicon.

    A mark does NOT become generic merely because the public uses the mark as the generic name for the thing. The public nearly universally asks for a KLEENEX rather than a facial tissue -- which pleases Kimberly-Clark to no end and who can, nonetheless, still enforce its KLEENEX trademark against all other folks who sell facial tissue.

    A mark only becomes generic if the mark owner allows competitors to brand their version of the product using the same mark.

  • May 18th, 2010 @ 12:05pm

    Re: Re:

    Very good article that discusses this very subject: http://j.mp/chD6QZ

  • May 18th, 2010 @ 12:04pm

    Re: Re: Re:

    Yup. You're right on both counts. Thanks much.

  • May 18th, 2010 @ 9:26am


    Two copyright rules to bear in mind: (1) each of the rights in the bundle of rights that comprise a "copyright" are divisible -- which means that each may be licensed or sold individually, and (2) any "legal or beneficial owner of an exclusive right under a copyright" may sue to enforce that right.

    Princeton does not, therefore, have to OWN the copyright -- or even the constituent reproduction or distribution rights in the copyright -- that attaches to Kagan's thesis in order to file suit to enjoin others from reproducing or distributing the thesis. Princeton must only own the exclusive license to do either.

    I have no idea whether Princeton owns the exclusive license to reproduce or distribute Kagan's thesis. And I seriously doubt that it does. Bit if it does, it has standing to take lawful action to stop others from reproducing or distributing the thesis.

    The resolution of this issue turns on the rights that Kagan conferred to Princeton by her submission of her thesis to Princeton in order to graduate. Both Kagan and Princeton are private actors -- and so the contract [in the broad sense] that those two entered into for Princeton's provision of educational services in exchange for her tuition will control. The documents that comprise that contract are multiple and varied - e.g., the student handbook, the university rules, financial aid forms, etc.

  • May 18th, 2010 @ 9:00am


    The 1976 Copyright Act -- effective January 1, 1977 -- did away with the requirement to affix a notice of copyright as a condition for copyright to attach. Why do you think a notice was required?

  • May 9th, 2010 @ 9:38pm

    Re: Re: Re: Re:

    Debating with you, Mike, is frustrating because your interests and passion are often on track but your arrogant, self-righteousness prevents you from engaging in an intelligent discussion. Which is fine -- this is your forum. You're certainly free to be as intellectually shallow and as snarky as you like. Just don't pretend that you're saying anything useful.

  • May 8th, 2010 @ 4:51pm

    Re: Re:

    You're position naively ignores Civics 101. The federal government seeks patent protection for the inventions created with taxpayer dollars because licensing those patents IS WHAT JUSTIFIES spending the dollars.

    Your position assumes, wrongly, that it's the proper role of the federal government to perform research costing the taxpayers billions of dollars. Uh, no it's not.

    Targeted government R&D for defense, health, and the environment to supplement private sector research, sure, as long as there's a potential financial return on that investment.

    I'll even grant that it's proper to fund -- but not perform -- some basic research with no foreseeable application. But funding R&D at present levels with NO expectation of a financial return in exchange for the taxpayer dollars spent is so far outside the proper role of government that it's silly even to discuss the matter. Which is why no one does.

    As for the rule that the federal government cannot copyright its works of authorship, that's not as absolute as you may think -- it does not apply at all to any state or local government nor to the works of authorship created by federal government independent contractors. And the non-copyrightable works that are created by federal government employees are nearly exclusively reports on government functions.

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