Home -> Law Blog Directory -> Intellectual Property Law Blogs -> Cogito Ergo Teneo; an intellectual property blawg

Intellectual Property Law

: Cogito Ergo Teneo; an intellectual property blawg

04/30/07 Copyright and Trademark Law: Vincent

By Sean Fowler

Vincent v. City Colleges of Chicago, Ezekiel Morris, 7th U.S. Court of Appeals, no. 06-3082 (April 30, 2007):

Issue:
Ms. Vincent wrote a book, entitled "Smart Foreclosure Buying," in her tenure at the college. Things soured between the college and Vincent, and Vincent left. The college continued to teach the course -- keeping the name and the book in the course, and even Vincent's initials in the course description. Vincent faxed notice to the college that she revoked their right to her copyright, but the college claimed not to get the fax. Ms. Vincent also notified the college orally. The college stopped paying royalties to her, but they continued to print the book. Vincent argued to the lower court that the college had no right to create further copies of her book, could not use the name of her book, and could not use it's existent copies of her book as text books without her permission. After the lower court dismissed most of the complaint as fatally deficient, Vincent appealed.

Pertinent Issues of Copyright Law:
1) Was the oral termination of right sufficient to terminate the college's copyright?
2) Can the copyright holder limit the use of lawfully owned copies of her textbooks at the college?

Pertinent Issue of Trademark Law:
1) Can Vincent prevent the use of her book title in the course name or course?

Conclusion:
The court found that the lower court erred in finding that oral notification was insufficient to terminate the college's copyright. There is, said the court, nothing in the copyright law that states that oral modification of granted rights is insufficient. In fact, said the court, since the initial license was oral, if oral instructions could not modify a licensee's copyright, then the college would have no rights to the work at all. However, the court agreed with the lower court that Vincent could not limit the use of lawfully owned textbooks. Once the college owned the copies it had lawfully, then it could do with the copies as it pleased. This, said the court, is how libraries work. As far as the use of the book's title, the court found that the claim was not insufficient. In trademark parlance, said the court, Vincent's claim amounted to a claim of secondary meaning over the phrase. So, even though the phrase did predate the book, Vincent might still be able to restrict use of the phrase. The court sent the case back.

Full post as published by Cogito Ergo Teneo; an intellectual property blawg on May 20, 2007 (boomark / email).