Sitting in the archives of many university libraries are old analog sound recordings stored on formats such as phonograph cylinders (the “Edison cylinder”) or vinyl records.  Due to a recent decision by the New York Court of Appeals, efforts by universities to digitize even the oldest of these recordings – dating back 100+ years – have been severely hampered due to copyright protections. The 1971 Sound Recording Amendments On February 15, 1972, federal copyright law protected sound recordings for the very first time via enactment of the Sound Recording Amendments to the 1909 Copyright Act.  However, the protection did not extend to recordings fixed prior to that date, leaving state law as the only protection for pre-1972 sound recordings.  Indeed, per the amendment federal copyright law does not preempt state common law or statues regarding pre-1972 sound recordings until February 15, 2067. New York Common Law Copyright Protection New York is one of several states that provides common law copyright protection for pre-1972 sound recordings (as well as several statutory bases for protection which are not discussed here).  In a 2005 decision, the New York Court of Appeals held that the Copyright Act does not preempt New York common law protection pre-1972 sound recordings, and that the common law protection extends to these works until the date of federal preemption in 2067.  Capitol Records, Inc. v. Naxos, 4 N.Y.3d 540 (2005).  In 2067, the oldest of these sound recordings will have enjoyed more than 180 years of copyright protection. The Copyright Office to the Rescue? In light of the strong common law protection for pre-1972 sound recordings, universities and other non-profits engaged in digitizing projects are hesitant to publish the digital files, potentially relegating these treasures to the depths of university libraries until 2067.  However, a solution could come from the Copyright Office itself.  The Office has recently held hearings on the issue of whether to federalize pre-1972 sound recordings, thereby preempting state common law much earlier than 2067.

At Inside Higher Ed, Paula M. Krebs writes:

The institution to which I was attached, the five-campus University of Massachusetts system, understands its role in its state and region in terms inherited from the Morrill Act of 1862, which established the land-grant colleges and their obligation to train state residents in new techniques of agriculture. The current manifestation of the Morrill Act would seem to be in the university’s commitment to commercial ventures, patents, and intellectual property, helping to start and support new businesses that grow out of research done on campus.

Teach a man to fish and you feed him for a lifetime.

ICANN, the Internet Corporation for Assigned Names and Numbers, is responsible for managing the hundreds of top-level domains (TLDs) on the Internet, including well-known TLDs such as .com, .gov, and .edu.  In early 2011, ICANN approved the new .xxx domain, intended to serve as a voluntary TLD for pornographic sites on the Internet. First proposed over ten years ago, the .xxx TLD has faced serious opposition from politicians and advocacy groups, as well as from trademark owners who are concerned about possible misuse of their trademark.  To address these concerns the Florida-based company that will oversee the domain, ICM Registry, has established a procedure for blocking domains related to legitimate trademarks. Domain Name Registration During an initial 52-day “Sunrise” period (September 7, 2011 through October 28, 2011), intellectual property holders with verifiable trademark rights can reserve domain names to ensure that those names are not registered as domain names by others. Each domain name registration will typically cost between $200 and $300.  Successfully blocked domain names will resolve to a standard information page indicating that the domain name is not available for registration. At the end of the Sunrise period others will be prevented from registering the reserved domain name, but only if no member of the “adult Sponsored Community” has applied for the domain name.  If a member of the “adult Sponsored Community” does apply for the domain name, that member will be given priority in the domain name and the trademark holder will be required to seek other methods of protecting its mark. During a later period of “General Availability” beginning on December 6, 2011, all remaining .xxx domain names will be allocated on a first come, first served basis. Domain Name Disputes Despite ICM Registry’s procedure, many trademark holders will not register a domain name, and most trademark holders will find it too expensive to register all confusingly similar variants of their mark.  Accordingly, there are several mechanisms by which trademark owners can protect their rights, including the Uniform Dispute Resolution Policy (UDRP) and ICM Registry’s newly-formed Rapid Evaluation Service (RES), which is incorporated directly into registrant’s agreement with ICM and was designed specifically for resolution of .xxx disputes.  RES is largely modeled after the UDRP process but is designed to lead to a resolution in 2-5 days and eliminate some of the of the uncertainty found in current UDRP case law. We will be happy to register your trademark during either the Sunrise Period or during the General Availability period.  Alternatively, you can apply to register your mark at one of these registrars. The Take Home Message Regardless of whether you decide to reserve your trademark’s domain name, observation of the new .xxx TLD should be part of your brand monitoring efforts.

Case:  CollegeSource, Inc. v. AcademyOne, Inc., 09-56528  (9th Cir., Aug. 8, 2011) What allegedly happened:  A Ninth Circuit panel decided that a plaintiff company that allegedly had its online collection of college catalogs copied by the defendant company could sue in its home state of California.  Plaintiff alleged that it spent $10 million dollars collecting the college catalogs and putting them online in the popular Adobe pdf format.  In this case, defendant company left plaintiff’s watermark type identification on the catalogs which defendant appropriated to its own use.  Comment:  While attribution is honorable, it kind of came back to bite the defendant in this case by suggesting that defendant knew, or should have known, that plaintiff was in California, thereby supporting California jurisdiction for the law suit.