known for his bold, eloquently written and often controversial
opinions on what has become known as the "Hollywood Circuit",
where he was Chief Judge until last year.
During the lecture, he discussed many of the IP and right of
publicity cases he has heard or observed, including
Facebook v ConnectU (between Mark Zuckerberg and the
Mattel v MGA (the Bratz case),
Galoob v Nintendo (Game Genie),
Fisher v Dees (over the song "When Sonny Sniffs
v MCA (the "Barbie Girl" case),
Vestron v HBO (over the distribution of the movie
White v Samsung (regarding the image of Vanna White of
Wheel of Fortune) and San
Francisco Arts & Athletics v USOC (over the Gay
Olympics, which went to the Supreme Court).
Concrete examples v abstract arguments
"Good advocacy can
make a big difference" in IP cases, said Kozinski, especially
where generalist judges are hearing a case. He added: "The
easiest path to understanding is with concrete examples.
Abstract minds tend to wander."
As an example, he quoted the introduction to the brief
Jerry Falk in the Galoob v Nintendo copyright case
concerning the Game Genie. The brief begins: "It is Saturday,
somewhere in Los Angeles. Lying on her bed, Debra, age 11,
picks up the book she has checked out of the school library,
Charlotte’s Web. Although she has only read
through page 61, this morning she finds herself wondering how
it ends. Furtively, she flips through the book and glances at
the last two pages. Relieved to discover that Wilbur has not
been made into bacon, she returns to page 61."
The story continues for a full page, before the copyright
questions in the case are set out. Kozinski argued that this
was a successful way to present the arguments in terms a judge
would be familiar with. However, over drinks afterwards, at
least some litigators and a UK judge doubted that such an
approach would always be well received.
Another example Kozinski gave was the case over whether the
song "When Sonny Sniffs Glue" infringed "When Sunny Gets Blue"
(Fisher v Dees). The oral arguments were finely
balanced, he said, and it was only when the judges asked for
recordings of both sings and listened to them that "a lightbulb
came on" and they all agreed: "Of course it’s a
|Nominative fair use
One of Kozinski’s most famous
contributions to IP law was the coining of the term
"nominative fair use" as a defence to trade mark
infringement in the New Kids on the Block case in
Kozinski wrote: "[W]here the defendant uses a
trademark to describe the plaintiff’s
product, rather than its own, we hold that a commercial
user is entitled to a nominative fair use defense
provided he meets the following three requirements
In his lecture this week, he said the term was
coined to describe use that was not use as a trade
mark: "We just made it up – because we could.
Then I forgot about it."
Only years later did he discover there was "a whole
body of case law" on nominative fair use, with majority
and minority opinions, briefs and legal articles.
Kozinski suggested that the Fisher case was an example of
the tendency of IP owners "to be complete control freaks" and
their desire to use the courts to teach defendants a
In this context, he discussed several cases brought by
Mattel, noting: "For a friendly girl, Barbie sues a lot!" One
was a dispute with the band Aqua (Mattel v MCA) over
the "Barbie Girl" song, in which the Ninth Circuit famously
advised both parties "to chill".
When Mattel tried to take the case to the US Supreme Court,
sales of the record took off. But years later Mattel used the
song (with slightly modified lyrics) in a commercial. "Why
couldn’t they have done this in the beginning?"
Kozinski also cautioned that right of publicity cases "can
control speech and control thinking" adding that "Much IP law
is about that. There is a considerable tension between robust
trade mark and copyright law and free society values".
From his own experience he cited a case where the Supreme
Court (in an appeal from the Ninth Circuit) allowed the US
Olympic Committee (USOC) to stop the use of "Gay Olympics".
Kozinksi had written a dissent arguing that the USOC was
seeking to limit free speech. "I still think they were wrong. I
would like think it would be different today," he said this
The judge also defended his controversial decision
overturned) in the
Garcia v Google case to order YouTube to block the
movie "The Innocence of Muslims", noting that he was swayed by
the fact that actress Cindy Garcia’s life was
under threat and that she had been deceived about her role. (He
also said that he has still not watched the controversial
Answering a question after the lecture about the law and
morality, Kozinski expanded on this theme, saying judges are
driven by "rightness and wrongness", even though that is not
part of the legal argument: "Morality is not part of the legal
equation but it underpins everything we do."
Court of public opinion
message was one of caution, though. Despite warnings about the
implications of cases, said Kozinski, "disaster almost never
happens". The decision to delay distribution in the Platoon
case had little or no commercial impact, and, contrary to some
predictions, even though "The Innocence of Muslims" was blocked
for 13 months, "the internet still stands".
He also urged lawyers to look beyond judges to the court of
public opinion, citing the Streisand
effect and noting how the internet and social media can be
powerful weapons in disputes. As examples, he cited the
Vermonster v Monster case where a local brewery
mobilised public opinion after it was sued by the energy drink
manufacturer, and Nestlé’s decision to stop
using palm oil following an internet
campaign by Greenpeace.
Concrete examples help to persuade generalist judges, said
Kozinski, adding: "That’s every bit as true of
public opinion where the stakes are often higher."
A video of the lecture will be available on the UCL
website next week.
You can also read a
report on the Ipso-Jure blog written by Peter