Holiday Special Post! Magnetic Tape and IP Are Disappointing Star Wars Fans

Let's talk about copyright, and in particular, Star Wars.

For those who may not know, Star Wars is among the most valuable franchises, and has more IP than I'd care to try to list. And while the franchise spans games, toys, books, TV shows, clothing, amusement parks, and probably food items, it all stemmed from a project in the 1970s that came with no small amount of scorn and doubt. 

Today, we all know and love the original Star Wars movie (later A New Hope), copyright 1977. However, many have only seen specific edited versions, or "special editions", that came later. In fact, there aren't a lot of viewable copies of a widescreen (normal. Today that's just normal.) original version. That is something of a collector's item--and not just according to the label.

Yes, dear readers, I have a copy of the original trilogy on VHS in widescreen. 

Widescreen was once an optional format

And, like many people, I would like to own that version on a slightly more contemporary media format. Why I can't purchase it on DVD or stream it is another story. Briefly, after editing his films Lucas didn't want the older version distributed, meaning that I might be able to find a bootlegged version or a non-professionally edited copy, but not the true originals. 

So, with help from the staff in the Digital Media Commons (shout out to Ian), I decided that this slow time of year was perfect to transfer it to DVD. [Look, I know that it's copyrighted material and I am pretty familiar with the basics of copyright; but I didn't intend sell, distribute, show in public, etc. the DVD. I just wanted to be able to watch my movies at home.]

Bad news, fans

As it turns out, someone foresaw this type of activity, and there's a built-in mechanism that prevented me from making a DVD copy. Apparently, a part of the magnetic tape has been encoded. This is distressing because VHS has a fairly short shelf-life, and there aren't many players left that don't destroy or damage a tape due to age. Furthermore, finding a VHS player that is compatible with modern TVs or screens is challenging, and becoming impossible. Even the converters are harder to find, and tend to be more unreliable.

A boxed set of sci-fi, space drama joy, a Collector's Edition!

What is most frustrating about this, in my opinion, is how many times people likely recorded the movies from onto VHS, or Tivos, or whatever, back in the day. This fairly common practice clearly never affected the value of the original property. I mean, it's worth billions! People attempting to make a copy of this specific VHS could not have been widespread enough to affect the overall value of the Star Wars franchise, either. 

Here's some potential evidence for my reasoning that people who recorded Star Wars material haven't destroyed the value of the original.

In 1978, there was a televised event, the Star Wars Holiday Special. It was made to capitalize on the success of Star Wars, and also the holiday season. It was aired a single time, because it was simply just so awful. In fact, the people behind it did their best to try to forget it ever happened and hope that the rest of the world would, too.

Well, people don't always forget things, and fortuitously (?), some viewer decided to record the Holiday Special. As one might expect, the advent of the internet and the web led to it turning up online, and the Holiday Special had quite the renaissance decades later. It feels like only one copy of it was ever retained, because most of us have seen an ad for a local news report after the special. Who knows, maybe someone has the original shots and tapes somewhere. But given Lucas' opinion and attitude towards the Holiday Special (which is allegedly that he was mostly uninvolved and wasn't it awful what those TV people did?), it is no surprise that he didn't have his company distribute copies.

Despite the train wreck that is the Holiday Special and its refusal to die, Star Wars didn't lose any of its value. Not even immediately following the international airing of it, and almost universal bad reviews. The later bootleg versions that so many of us fans have seen haven't tarnished the value, either. 

So why stymie fans like myself, who just want a semi-modern copy of movies they love? We aren't a large enough force to impact the value of Star Wars, and never have been. By the time this collectors' edition was released, all three films had been out for years, and available on multiple media formats.

A VHS I failed to copy today

I'm going to assume that perhaps most commercially made VHS of a similar quality has these built-in safeguards, and that it isn't just Lucasfilm or 20th Century Fox being particularly cruel about their IP. Perhaps it was standard manufacturing process to include.

I'm still mad, though. I was planning on watching the movies during the break.

The Mystery of the Hy Jacker

We're Texans here at Rice, and Texans love their cowboy boots. But something not everyone knows about cowboy boots is that they can be hard to remove.

During a conversation with a colleague from Rice's Lilie, I learned about the greatest boot jack ever sold: a transportable, fold-able, metal boot jack. She found it on Ebay, and asked me what the "patent pending" inscription meant.

It's hard to say without some. First, a product can only claim to have a patent pending if it meets a couple of criteria. At the most basic, some kind of patent application needs to have been filed. However, it could be either a provisional patent application or a regular (or nonprovisional) utility patent application. Without getting too deep into the technicalities and legal side of things, a provisional patent application is an unexamined version of an application that acts similar to a placeholder. Someone might file this before seeking out investors or clients, to ensure their claim on an invention is valid. After all, patents are granted to the first to file, and only inventions undisclosed prior to the patent process are patentable. Applicants then have 12 months (with some exceptions) to file the nonprovisional utility patent application, which is examined and can lead to obtaining a patent. 

Inventions that have a nonprovisional utility patent application on file can claim to have a patent pending, but might also say "patent applied for". [I suspect that "patent applied for" may be avoided because it is longer and just doesn't sound quite as good. Alliterations are appealing.]

However, her real interest was if it was too niche of a product, because if this boot jack was granted a patent, wouldn't it be easier to find? Perhaps more common on the market and not just a vintage listing?

Well, this got me wondering about the fate of the Hy Jacker and its patent. I did a basic preliminary search for portable, foldable boot jacks on Lens.org, and found one potential match. Yet, as my colleague had also learned from her own brief Lens search, this was not the same invention. She subsequently sent me a link with images of the Hy Jacker for reference.

The Hy Jacker's IP inscription

This is where the search heated up a little, and made its way into potential blog post territory.

I immediately noticed that right above "patent pending" was inscribed Hy Jacker, complete with federal registration mark.

Another view of the same part

Ah ha! With that, I could potentially search the trademark database for information on the manufacturer, which might give me a concrete piece of information to use in a patent search.

I might teach most people how to perform keyword patent searches, but if you ever have specific information on a patent, use it. That is much easier; save your keywords for discovery searches.

Finding the Hy Jacker trademark record was fairly easy. Issued registration number 1255353 in 1983, Hy Jacker® had a fairly short life as a federally registered mark. It was cancelled in 1990, for failure to file an acceptable declaration under Section 8. Which means, essentially, that the owners did not inform the USPTO it was still in use. (Or not in use under certain acceptable special circumstances, as it may be.) Since there are no documents available through the TSDR, it is hard to learn further details about the fate of the Hy Jacker® trademark.

Word image on the registration certificate and record

What we do gain is information on the name of the company and its location. If a patent was ever issued, this will help us. 

Unfortunately, we also learned that this product was probably manufactured between 1983 and 1990, so if it never was granted a patent, we may not be able to find much. Patent Public Search only has nonprovisional patent applications post March 2001. There are other resources that might have patent applications prior to that, but none of them have databases of provisional applications. 

VOILÀ! Our luck held! A quick session with Patent Public Search revealed that the Hy Jacker® received two patents, around the same time the trademark was registered. It was granted one utility and one design patent. 

Patent Public Search isn't for everyone, but I'm a librarian so I like query syntax

And, my colleague at Lilie may be in luck, too: these patents are definitely expired... she should get some of her entrepreneurship contacts on board with recreating the Hy Jacker®! 

Now, I don't know the fate of the Hy Jacker® company, but it seems to have been a sad one. It appears to have failed within a few years, maybe because the market wasn't large enough, or saturation was reached too quickly with a long-lasting product, or if perhaps the inventor (Robert C. McCormick) or the business ran out of money after registering too much IP too quickly. So it might not be a great idea to restart a business based on this product. But at the very least, she could have a few more made without fear of IP infringement.

Mystery solved, folks. Got any other IP cold cases? Your PTRC Rep is just a message/phone call away from closure.

AI Is Getting Better...

A quick update post: generative AIs are improving. If you review some of my previous posts about their ability to perform some of my tasks, patent searches in particular, you'll recall that the most basic available tools (ChatGPT 3, for example) failed abysmally in all respects. 

From there, they improved slightly, but most still were unable to produce accurate results, if any.

After testing a few more recent iterations, I found some improvements. The best so far is from Perplexity.ai, which produced one set of search results, to an extent: 

At least there are results and they mostly make sense

Of course, if you're familiar with US patents, you've likely spotted that some of these aren't truly recent--we surpassed patent 11 million in the US in May of 2021, so patent no. 6,861,123 is... old. Three are also patent applications, from 2021, 2023, and 2014. One is almost a decade old, and potentially none have been granted.

I tried a more specific prompt, hoping for less generic results, and that was just too much to handle:

Generative AI is really amateur compared to a librarian

However, it is worth noting that Perplexity.ai always provides sources.

Also, generative AI clearly isn't meant to replace advanced searching. Maybe one day.

First Sale Doctrine and You

Like me, I know you've definitely contemplated how it is permissible for books and other products to be resold without violating creators' or original owners' intellectual property rights.Why is it okay to sell a book to Half Price Bookstore, who resells it, when the contents of that book belong to a copyright holder? How is it legal for vintage stores to sell branded garments from internationally recognized trademark holders like Nike, complete with the trademarked Swoosh? If car dealerships are independently owned and operated, why are they permitted to sell vehicles that are comprised of many patented parts, bearing trademarked logos and even appearances?

After all, in many of these case, the products have been altered or associated with a new brand. New cars come with post-manufacturer upgrades that don't void warranty or make them any less a version of their original make and model. Some vintage stores have embellished garments or accessories that are still sold using the original product's familiar qualities, using that to add market value. 

Patent law says that assignees have the right to exclude others from making, using, selling, offering for sale in the U.S., or importing into the U.S., their patented inventions. Copyright law grants owners the right to selling copies, performing, exhibiting, displaying, playing recordings of, and distributing reproductions of their work, and authorizing others to do any of those. Trademarks grant businesses the right to use a specific image, phrase, sound, or some other media to identify their brand and product.

These aren't cases of licensing, in which creators or owners allow a third party to use their IP for a fee or some other exchange. 

So why aren't dealerships sent cease and desist notices, clothing resellers taken to court for trademark infringement, and authors/publishers suing second hand book stores for royalties?

What we're looking at here are all cases of first sale doctrine--a legal precedent near and dear to all librarians' hearts (which may also be described as exhaustion when concerning patents). It's an interesting aspect of IP law that can be applied in roughly the same way to patent, trademark, and copyright cases. 

Generally speaking, the specific rights to income from IP for an item stop after the first sale to the general consumer market. 

An important part of this to keep in mind: it is the specific copy or item that first sale doctrine applies to, not the concept or work--the true IP at stake.

In the case of copyright, I can resell a book but not make copies of it, or perform public readings from it, or create a movie based on it. Only that one copy, that particular item, is subject to first sale. 

Similarly, the same applies to products with trademarks appearing on them. Reselling the branded product does not infringe, only reusing the actual trademark separately would. In our example above, applying the Nike Swoosh to the name of a resale store, or using it to represent the store in some way, would be the violation. But carrying products that have the mark is distinct. 

Think of it the same way in terms of patents: a vehicle with patented components is a single instance of that patented technology. The actual patent, or producing more vehicles with the same patented components, is not for sale or distribution.

It is also important to note that first sale doctrine, primarily when applied to trademarks, also stipulates that the re-selling does not negatively impact its value. If the general consumer's goodwill towards a brand is damaged because of the resale, then first sale doctrine may not apply. 

The seller also needs to make it clear, in many cases confirmed by courts, that they are not the actual owner or representatives of any items. That's kind of why "independently owned and operated" gets thrown around a lot (though only one reason). 

To combine those two concepts, if I turn Nike athletic shoes into a pair of sandals, they can't be such poor quality that it reflects negatively on the overall Nike brand. I also can't represent my sandals as something licensed or produced by Nike. It must be very clear that these are Hannah's athletic sandals, sold by Octopeds™ company. [Octopeds™: they're so great, you wanna wear eight!]

Of course, we have to consider that any one of these examples may not go the way I propose them in a court of law. A company like Nike may not look too kindly on someone messing with their products; if they take me to court, they're going to win just because I can't afford to compete with their legal resources.

Also, I'm not a lawyer or a legal expert, so don't quote me or my blog on this. Use the linked pages, they are more authoritative.

Are you confused yet?

Yeah, me too. Let's go look at internet cats or something instead.

Hobbit IP: Permissions there and back again

Here's a fun, (semi-personal) local story about IP for you. The Hobbit Cafe opened in Houston in 1972 as a uniquely vegetarian restaurant for its first decade. During this time, interest in the Hobbit and Lord of The Rings was much more limited--the first of the live action movies did not come out until 2001. [The 1970s animated movies and series, like Ralph Bakshi's, were cool, but not mega-blockbusters, and didn't have the same effect on the IP's value.]

Still, the owners very responsibly obtained permission from the Tolkien estate to use the Hobbit name and related themes. Decor, menu items, and today merchandise prominently feature characters and settings.

My Hobbit shirt from days of employment; I recommend a Smaug design if you want one.

Across the decades, more Lord of the Rings and Hobbit-inspired restaurants and commercial venues opened in Houston, and around the world. Yet clearly, few of them remain today. For example, Rivendell Grill is long gone.

And why is that? 

It's best understood if I first explain some of the franchise ownership rights. Presently, most of those belong to Middle-earth Enterprises (formerly Tolkien Enterprises), which is a division of the Saul Zaentz Company. New Line Cinema and Miramax own the rights to the movies and the related IP.

A really boring image of the copyright record for the first live-action Lord of the Rings movie

The Tolkien estate retains many rights; when they grant licenses, they can select what licensees may use. Integral to this post, their permissions supersede Middle-earth Enterprises.

So, when the franchise was re-licensed and a new film adaptation released, the IP became a much more valuable commodity owners were not inclined to share. Establishments like Rivendell Grill were contacted and told to shut down or change because they violated the rights of the owners of Lord of the Rings and Hobbit concepts.

The oldest but still live mark on record for the Hobbit word mark related to Lord of the Rings

Records of many lawsuits and and legal disputes over Lord of the Rings-themed names for business, especially called Hobbit, are easy to find. Wikipedia lists several, but none of them mention Houstonian entities. Which, fine, we evidently haven't created any notable enough cases, and for a distinct reason.

This next part is sort of "insider info". I mentioned at the start that this was a semi-personal story; the Hobbit Cafe is near and dear to me for a few reasons. I waited tables there as my first paid job out of college, and yeah, I've heard all the jokes about the good my art history degree was doing, thanks. [It's also where my husband and I met. Ask me in person sometime for that fun story, though it is best told with both of us present.] 

It was during my employment that I learned about the fate of so many Lord of the Rings-themed joints. Evidently, in the early 2000s, the holders of certain rights went on a spree, demanding that establishments without their licensing or permission close. The Hobbit Cafe, fortunately, could produce evidence that they had obtained permission to open a restaurant directly from the Tolkien family and estate. The Hobbit Cafe, thanks to their due diligence and respect for IP, was allowed to remain open. 

That's a lesson for all of us to take away from this. Permission was simple enough to procure over 50 years ago, and stands up to major companies' legal forces. 

But on a final note, Hobbit Cafe seems to have never been granted a service mark for their name. Check out the records here.

On a more final note, I'm not endorsing the Hobbit Cafe and neither is anyone else. This is meant only as a tale to help people understand why permission for IP are so important. My husband and I visited the restaurant recently on the day a judge officially tied our knot, and just like you, I think about IP all the time.

Us hamming it up in the cafe on the day in question. I'm protecting his privacy... he hates it when I use his picture