Author Archives: david

Harrison Appointed to ABA Standing Committee on Gun Violence

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July 15  |  Headlines  |   david

I’m honored to have been re-appointed by Robert M. Carlson, President-Elect of the American Bar Association to serve a three-year term on the ABA’s Standing Committee on Gun Violence.  The ABA has been a leading voice in gun violence prevention for 50 years.  Recognizing there is no simple solution, and consistent with a public health approach to address this national crisis, the ABA has adopted and advocated evidence-based policies covering a range of gun violence topics including research, education, prevention, enforcement, and regulation.

Taking Aim at Gun Violence: The Myth and Meaning of the Second Amendment

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February 16  |  Headlines  |   david

If you want to get past the political talking points and learn something about the issue of gun violence and the scope of the Second Amendment, at the bottom of this page is the entire 3 hour 45 minute clip from a program of experts organized by the American Bar Association Standing Committee on Gun Violence on which I am honored to sit.

The Harrison Firm, PC Prevails before Trademark Board

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December 28  |  Headlines  |   david

Roanoke, VA – Roanoke attorney David Harrison has succeeded in cancelling the service mark of Sea Tow Services International, Inc. for performing certain services with a yellow-hulled boat.  Smith Mountain Lake Marine Volunteer Fire/Rescue Department, Inc. has three emergency response vessels with yellow hulls.  Sea Tow demanded that the Fire/Rescue Department cease performing certain services with its yellow boats claiming doing so infringed Sea Tow’s federally registered service mark.

The demand of Sea Tow raised concerns not only for the SML Fire/Rescue Department, but also for other fire and rescue departments in Virginia and across the country that also perform similar services with yellow-hulled boats.  Because Sea Tow’s demand had such far-reaching implications, the SML Fire/Rescue Department decided it must consider its legal options and retained the services of The Harrison Firm, PC.

On behalf of the SML Fire/Rescue Department, attorney David Harrison filed a proceeding before the Trademark Trial and Appeal Board, an administrative board within the United States Patent and Trademark Office, seeking to cancel Sea Tow’s registered mark on three grounds: that Sea Tow’s mark serves the functional purpose of making its boats highly visible (functional marks are not entitled to registration); that Sea Tow’s mark had not acquired the “secondary meaning” needed for registration on the Principal Register; and that overriding public policy does not permit a private company such as Sea Tow to claim for its exclusive use the color yellow so as to limit or restrict government authorized entities in the manner in which they choose to provide for public safety.

The merit of those arguments was never reached because of the repeated and continuing failure of Sea Tow to comply with pre-trial discovery rules and with multiple orders of the Trademark Trial and Appeal Board that Sea Tow respond to certain interrogatories and document requests.

Mr. Harrison stated:  “It is quite rare for judgment to be entered as a discovery sanction, but we thought the facts of this case justified it.  The panel of three administrative trademark judges unanimously agreed and ordered the Sea Tow mark cancelled.  We are pleased that now fire and rescue departments throughout the United States that use yellow vessels can provide their public safety duties without concern of infringement litigation by Sea Tow.”

SML Fire/Rescue has provided emergency response services on the 20,600 acre lake since 1975 and now operates a total of eight strategically located fireboats.  It also provides critical support services to land-based departments in Bedford, Franklin and Pittsylvania Counties for emergencies near the shoreline.

American Bar Association Opposes National Concealed Carry Reciprocity Bills

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July 20  |  Headlines  |   david

The American Bar Association opposes HR 38 and S 446 the so-called “concealed carry reciprocity” bills pending in Congress that are being pushed by the NRA. These bills would require all states to allow residents of other states to carry within their borders if those carrying meet the requirements to carry in their state of residence.  As of last year, 11 states had no permit requirements at all and this year NRA-backed bills were introduced in 16 other state legislatures to do away with all permit requirements.

Most federal public safety legislation sets minimum standards which states must follow. HR 38 and S 446 would do the opposite.  They would prohibit states from adopting concealed carry laws that those states think would best provide for public safety within their borders.  No permit requirement would become the national standing.  The NRA hocks this as “constitution carry” even though the Supreme Court has never held there is a constitutional right to carry in public.

Typically, when the ABA takes a position on bills pending in Congress, appropriate letters would be sent by the ABA’s Director of Governmental Affairs. In this case, the ABA considers HR 38 and S 446 to be so detrimental to public safety that the letters it is sending today were signed by the President of the ABA.

Here are the letters:

Ferguson Police Tactic Ruled Unconstitutional

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October 9  |  Headlines  |   david

The U.S. District Court for the Eastern District of Missouri has ruled that the police tactic in Ferguson, Missouri of prohibiting peaceful protestors from standing in one location for more than five seconds is unconstitutional.  #policetacticunconstitutional

Business Method Software Patents

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April 2  |  Headlines  |   david

The Supreme Court heard arguments on Monday, March 31, in Alice Corporation v. CLS Bank International, a case observers had hoped would clarify questions about business method software patents.  The questions from the bench, however, may indicate the court’s ruling will be narrow in scope and not provide the hoped-for broad guidance to lawyers and lower courts.



Federal Appeals Court Overturns Texas Voter Registration Ruling

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October 6  |  Headlines  |   david

The US Court of Appeals for the Fifth Circuit reversed a lower court ruling that had enjoined enforcement of certain provisions of the voter registration law in Texas.


Gun Rights Advocates Challenge Maryland Firearm Safety Law

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September 30  |  Headlines  |   david

Two lawsuits have been filed by gun store owners and gun rights advocates in US District court for the District of Maryland seeking to block the implementation on Tuesday of Maryland’s Firearms Safety Act of 2013 passed in the aftermath of the Newtown shootings.

The Ghost Rider Returns – In a Copyright Work For Hire Trial

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July 8  |  Newsletter  |   david

A fan of comic books and motorcycle gang movies, in the 1950s Gary Friedrich began to imagine a motorcycle-riding superhero.  The hero developed into a motorcycle stuntman when Evel Knievel rose to popularity in the late-1960s and in 1968 Friedrich gave his hero a flaming skull for a head.  He then fleshed out a story for this hero.

At that time, Gary Friedrich was a part-time free-lance comic book writer scripting issues of existing comic book serials as requested by Marvel and other publishers.  In 1971, Friedrich decided to try to publish a comic book starring his flaming-skulled hero and created a written synopsis on his own initiative and at his own expenses which he called “Ghost Rider.”

Friedrich decided to approach Marvel with his idea.  Marvel agreed to publish Ghost Rider in its series “Marvel Spotlight”, which was the way in which it auditioned new superheroes.  Friedrich assigned his rights in the Ghost Rider characters to Marvel.  In April 1972 Marvel Spotlight was published featuring Ghost Rider.  It was republished five times.  In each there was a copyright notice in favor of Marvel, but also a credit “Conceived & Written Gary Friedrich.”  In a separate publication Marvel acknowledged that Friedrich “dreamed the whole thing up.”

Ghost Rider quickly became very popular and in May 1973 Marvel launched a separate Ghost Rider comic book series.  Friedrich wrote the stories for several of these later comics on a freelance basis.  Marvel promptly filed copyright registrations for several of these subsequent Ghost Rider comic books.

The Copyright Act of 1909, which was in effect in 1972, provided that the original term of a copyright was for 28 years from the date of first publication.  The Copyright Act of 1909 also provided for a renewal and extension of the copyright for an additional 28 years upon the filing of an application to renew.

In 1976 Congress repealed the 1909 act and adopted a new copyright act, effective January 1, 1978.  The new copyright act provided for a much longer original term and discontinued the concept of a renewal copyright for new copyrights.  However, as to copyrights which were then existing and in their first term on January 1, 1978, the Copyright Act of 1976 continued the concept of having an original term of 28 years, but provided for a renewal term of 67 years.  If no application to renew the copyright was made, then at the expiration of the original term the copyright vests in the author if he is still living.

A copyright work for hire under the 1976 Copyright Act, as construed by the United States Supreme Court[i], is generally a work prepared by an employee (as that term is understood to mean under agency law which is broader than just a W-2 wage employee), or certain types of specially ordered or commissioned works if the parties expressly agree in a written instrument that it is to be considered a work for hire.  The prior law did not require an express agreement.  Instead, the copyright belonged to the person at whose “instance and expense” the work was created.[ii]

Because of this change in the law, in 1978 the then publisher of Marvel comics required Friedrich, and all other freelance artists, to sign a form work for hire agreement.  The agreement was a page long and contained two operative sentences.  The first sentence was 90-words long, the second 45.  The first sentence provided that all works which “have been or are in the future” created by Supplier (Friedrich) “have been and will be specially ordered or commissioned for use as a contribution to a collective work and . . . is . . . a work made for hire.”  The second sentence grants to Marvel all rights of ownership “forever.”

The initial copyright term for Ghost Rider expired in the year 2000, 28 years after it was first published.  Friedrich was unaware of  Marvel’s use of the Ghost Rider character during the renewal term until 2004 when he learned Marvel was preparing to make a Ghost Rider movie.  Friedrich’s attorney wrote to Sony Pictures, which was producing the movie, and asserted Friedrich’s rights in the Ghost Rider copyright.  In a response dated April 14, 2004, Marvel advised Friedrich that Ghost Rider was a work for hire.  Despite taking this position, however,  Marvel sent Friedrich a check when it reprinted Spotlight 5 in 2005.

On April 4, 2007, Friedrich filed suit in the United States District Court for the Southern District of Illinois against the current owners of Marvel and their licensees alleging copyright infringement.  He did so within three years of the April 14, 2004 letter from Marvel advising of its position that Ghost Rider was a work for hire.

The action was transferred to the Southern District of New York.  Marvel filed its answer asserting that Ghost Rider is a “work made for hire.”  It then filed an amended answer to include a counterclaim against Friedrich for copyright infringement.

After discovery, both sides moved for summary judgment.  Friedrich argued that he was the owner.  Defendants argued that Friedrich’s claim was barred by the statute of limitations[iii], and alternatively that Friedrich had assigned his renewal rights to Marvel.

The District Court[iv] concluded that there were genuine issues of material fact concerning the authorship of the work, but that by executing the agreement, even if Friedrich were the sole author, he conveyed those rights to Marvel “forever.”  The District Court reasoned that use of the word “forever” in the 1978 form work for hire agreement indicated the parties intent to convey the renewal rights.  It dismissed Friedrich’s claims, awarded damages to Marvel for copyright infringement and enjoined Friedrich from using the Ghost Rider copyright.

Friedrich appealed.  The Second Circuit vacated the district court judgment and remanded.[v]  It held that there were genuine issues of fact in dispute and therefore the summary judgment granted by the trial court was improper.

The first of three issues the Second Circuit held were in dispute involved the construction of the 1978 work for hire agreement.  The court looked to New York state law to construe the document and held that it was ambiguous and therefore extrinsic evidence should be used to determine its meaning.  It held that the run-on sentences of the document were ambiguous on their face calling them “dense sentences” and “an opaque cluster of clauses.”  It also found that the 1978 document was a standard-form created by Marvel and that the language was ambiguous as to whether it was only forward looking or also covered a work created prior to that date such as the Ghost Rider character.  It also found that the document was ambiguous as to whether it referred only to the original term of the copyright or also to the renewal term.  It found that there was evidence in the record which indicated Friedrich was doing other work for the current owner of Marvel at the time he signed the agreement and that he was specifically told the document only covered that current work and future work.  Citing earlier Second Circuit authority, it held that there is a strong presumption against the conveyance of renewal rights[vi] and although a word like “forever” may be indicative of an intent to convey renewal rights, this intent is to be determined by the trier of the facts and not upon summary judgment.[vii]

The second issue upon which the Second Circuit held there were facts in dispute involved when Friedrich’s claim accrued under the 3-year statute of limitations.  Following earlier Second Circuit authority[viii], the court held that the claim accrues when a reasonably diligent plaintiff would have been put on inquiry as to the assertion of an adverse claim to the copyright.  Friedrich filed suit on April 4, 2007.  The court looked to whether Marvel had asserted an adverse claim prior to April 4, 2004.  It looked at whether Marvel had publicly repudiated Friedrich’s claim, whether it had privately repudiated Friedrich’s claim, or whether it had impliedly repudiated Friedrich’s claim, and found that there were triable issues of fact as to each.

The third issue upon which the court held that there were facts in dispute involved ownership.  The Second Circuit agreed with the trial court that it was improper to grant summary judgment in Friedrich’s favor on the ownership issue.  When the facts are viewed in Marvel’s favor, as they would be in determining whether to grant summary judgment to Friedrich on this issue, it would be possible for a jury to conclude that Friedrich had only an uncopyrightable idea for a motorcycle-riding character when he first presented it to Marvel.[ix]

Although the unique facts of this case relate to a work created prior to the effective date of the current copyright act, for employers the overriding lesson is equally applicable now.  It is not only to have a written copyright work for hire agreement, but that it fits with the facts of the particular situation, that it clearly defines the relationship between the employer and employee, and that it states who is entitled to the copyright in the work.  Failure to do so can not only be costly to both parties in terms of legal fees, but also a great deal of time and money may be expended in exploiting the work only to learn after the fact that the profits may be going to someone else.

[i] Community for Creative Non-Violence v. Reid, 490 U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989).

[ii] Martha Graham School v. Martha Graham Center, 380 F.3d at 634-35.

[iii] The statute of limitations is three years.  The District Court opinion does not mention the statute of limitations argument, but the appellate opinion indicates that defendants raised that issue.  It must have appeared in other parts of the record.

[iv] Gary Friedrich Enterprises, LLC, et al. v. Marvel Enterprises, Inc., et al., 837 F. Supp. 337 (S.D.N.Y. 2011).

[v] Gary Friedrich Enterprises, LLC, et al. v. Marvel Characters, Inc., et al., Docket No. 12-893-cv (2d Cir. 2013).

[vi] Corcovado Music Corp. v Hollis Music, Inc. 981 F.2d 679, 684 (2d Cir. 1993).

[vii] Siegel v. Nat’l Periodical Publ’ns, Inc., 508 F.2d 909, 913 (2d Cir. 1974).

[viii] Kwan v. Schlein, 634 F.3d 224, 228 (2d Cir. 2011)

[ix] Under the 1909 Act, federal copyright protection attached to original works only when those works were published and had a notice of copyright affixed.  Under the 1976 Act, a copyright subsists in an original work of authorship only when fixed in any tangible medium of expression from which it can be perceived, reproduced or otherwise communicated.

Festival 2013

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May 29  |  Headlines  |   david

I am happy to be associated with Roanoke Festival in the Park, Inc. which has brought entertainment and activities to Roanoke over the Memorial Day weekend for more than 40 years. Congratulations on another success.