CARES Act Reposting

The Coronavirus Aid, Relief, and Economic Security Act Grants the US Patent and Trademark Office the Authority to Manage Statutory Due Dates

Under the CARES Act, the US Patent and Trademark Office has the (temporary) authority to “manage” … postpone … certain statutory deadlines in patent matters.

The CARES Act, H.R. 748 116th Cong. (2020), gives the USPTO the authority during the emergency period to “toll, waive, adjust, or modify any timing deadline established” in the Patent Act or Trademark Act, including any regulations implementing these timing deadlines.” The Act is in effect from 27 March 2020 (the date the legislation was enacted) until 60 days after the state of national emergency is resolved.

There are only certain criteria under which the USPTO can waive statutory deadlines.

  • The timing deadline materially affects the functioning of the USPTO.
  • The timing deadline prejudices the rights of applicants, registrants, patent owners or others appearing before the office.
  • The timing deadline prevents applicants, registrants, patent owners or others appearing before the office from filing a document or fee with the office.

Once the director determines such a waiver is appropriate, the USPTO has to publish a notice to implement the waiver.

Within 20 days of issuing the notice, the CARES Act also requires the USPTO to report to Congress for any waiver that adjusts due dates for more than 120 days. Furthermore, the USPTO’s authority to alter these due dates during the emergency period expires two years after the date of enactment.

Until the USPTO issues such a notice, patent and trademark applicants and owners must still comply with the timing deadlines.

Why Do YOU Need a Lawyer?

You’re forming a business. You need a lawyer because you need to do it right. You need the magic words that form the business you want to form in the formation documents (do you know what those magic words are?).

Or maybe you’re developing a brand for your new business. You need a lawyer because you need to do it right. Yes, a lawyer is expensive, but a trademark infringement action brought by a senior user of the mark you adopt … without knowing there even IS a senior user … gets mighty pricey mighty quickly.

Or you’ve invented something and you want to get your invention out to the public immediately. But wait; do you want to profit from your invention? You need to take steps to protect that invention. Do you know what steps are available to you? And do you know how steps that seem to be diametric opposites and never able to work together can actually allow you to effectively extend the term of protecting your invention? You need a lawyer because you need to do it right.

Or maybe you’ve written something. Let’s say you’re J.K. Rowling and you’ve just completed your very first “Harry Potter” book. You want all the protection you can get for that book. Do you know the ins and outs of obtaining and using that protection? You need a lawyer because you need to do it right.

Or you want to … ooh, ooh, ooh … start up a company that franchises its business methods and trademark (i.e., you’re Ray Croc) out to others. What do you need to do to start that franchise and comply with the state and federal laws that govern franchises? What business and legal models do you need to have in place? You need a lawyer because you need to do it right.

Or you don’t want to franchise, but you do want to license your intellectual property for others to use. How do you license out your intellectual property without creating a franchise? You need a lawyer because you need to do it right.

Or someone has handed you a contract to sign. It’s long and full of legal jargon. What does it actually say? Remember, lawyers use words differently than most people do, and it’s lawyers who will interpret any contract you sign that goes south. You need a lawyer because you need to do it right.

You need a lawyer because you’re in business and you need to do it right.

Delain Law Office, PLLC

 

Traveling Through the Age of Novel Coronavirus

In case you’ve missed it, we’re looking at a new and contagious epidemic virus. Novel coronavirus (COVID 19) is burning through the human population. It started in snakes and jumped over to humans in China and Iran (and people who have recently been to China and Iran are not welcome to cross US borders at this time … yes, even citizens coming back from those countries have sit in quarantine for two weeks before they’re allowed into contact with other humans in the USA), and Italy is now on the US State Department’s travel advisory list (postpone that trip you’ve got planned). It’s already here in New York State. Estimates from credible sources indicate that the virus will be widespread in the USA by mid-March or early April. That’s … like … now.

This virus is new (hence its name of NOVEL coronavirus). We have never been exposed to it. We have no immune exposure to it. Our immune systems do not know what to do with this new thing. Cure is not available, though symptomatic support is.

So what’s a human to do?

First, if you’re sick … even if you just think you have a cold, if you’re “just coughing,” or “just sneezing” … STAY AWAY FROM OTHER HUMANS. Stay home. Governor Cuomo has, and has indicated that he will exercise, quarantine powers. Don’t make him exercise those powers. Quarantine yourself. If you’re my client and you’re sick, even with just a cold, contact me to postpone your appointment until you feel better. I will do the same for you.

Don’t shake hands. With ANYONE. This virus is evidently transmitted through water droplets entering the nose and mouth. Water droplets bearing coronavirus can live on the hands of the person whose hand you shake. You then pass it along to the next person you shake hands with.

Wipe surfaces with germicidal wipes. Grocery carts, bathroom doors, elevator buttons (use only your knuckle to press an elevator button). Lysol® Is Your New Best Friend.

Wash your hands often like you’ve just cut up a jalapeño pepper and you have to take out a contact lens. By “often,” I mean anytime you come in contact with anything another human may have touched. Seems extreme, but so does pneumonia from coronavirus.

Don’t touch your nose or mouth. That’s how this bug gets into your system. Wear a bandana and eyeglasses if you must to remind yourself to keep your hands off your face. But don’t buy face masks; let the health care workers have those.

I spent all of $0.99 on Amazon.com to get an e-book with a formula for homemade hand sanitizer. It may be the best $0.99 I ever spent since the public panic will lead to a dearth of commercially available hand sanitizer.

Coronavirus is an emergent epidemic. As such, it is a public health issue that is likely to have significant legal ramifications. Quarantine is a significant infringement of individual rights … think “imprisonment.” Denying citizens reentry into their country without quarantine is a significant infringement of individual rights (think “can’t go home”). At the same time, individuals must, in such a time, give way to public safety issues. Quarantine keeps the public safe; so does denying immediate entry, pending quarantine results, to people coming in from infected areas. It’s a balancing act, and, like all balancing acts, we may get it wrong to begin with. But me, I’d rather err on the side of caution when dealing with a new virus. I’ll give up my right to leave my house if it keeps even my pissy next-door neighbors safe from an infection I may have contracted.

There Will Be Lawsuits. It’s going to be a litigious mess. However, if we all proactively act to prevent catching it and spreading it ourselves, those ramifications will be lessened. If we don’t, they won’t.

We’re in for a siege. Get ready for it.

WiLan v. Apple Computer

So. The Jury Has Spoken. And Apple’s stock will dip a bit. That, for those looking to buy AAPL, might be a good thing; for those already invested in AAPL, it’s not a good thing.

But will Apple actually be on the hook to pay $85M to WiLan? Well see. Apple’s pockets are deep enough to be able to appeal the decision; since this is a patent case, that appeal will likely be heard before the US Court of Appeals for the Federal Circuit, which holds exclusive jurisdiction over patent appeals. If one of the parties is unhappy with that decision, that party may actually file a writ of certiorari with the US Supreme Court. And who knows … SCOTUS might actually grant that writ and hear the case.

Meanwhile, though, Apple owes WiLan $85M.

Fair Use and Social Media

According to an email I received today from Strafford CLE Webinars, “The number of active monthly users [of social media] worldwide are staggering–Pinterest (265 million), Instagram (one billion), Twitter (330 million), YouTube (2 billion), Facebook (2.4 billion), and WhatsApp (1.5 billion)–and increasing. Social media users are sharing, tweeting, pinning, and posting a variety of intellectual property, including pictures, videos, articles, and more, often without the permission of the owner.”

It’s a problem. What’s a copyright owner to do?

Copyright law gives the copyright owner the right to certain restrictions on the use of their works of authorship. 17 USC 106 says:

Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

If anyone other than the copyright owner does any of these things without the permission of the copyright owner, that person is infringing and is liable to the copyright owner under 17 USC 501 et seq.

“Reproduction” includes copying and pasting from and to social media. That would be infringement. Infringement, under 17 USC 106, is actionable. Infringers can get themselves sued … for some pretty hefty sums.

However, 17 USC 107 codifies a concept called “fair use.” It says:

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.
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Fair use is the grayest of all gray areas of the law. The finding literally can spin on the whim of a judge. As to those who use social media to infringe, in 17 USC 107(4) lies the kicker that argues against the prosecution of copyright infringement for all those copied-and-pasted videos, graphics, works of art, musical numbers, old movies, text, and other works of authorship against anyone and everyone who has infringed the copyright holder’s rights. All that copying and pasting gets the copyright holder’s name and samples of their work out there, often virally. The market for the copyright holder’s work therefore expands far beyond the original reach of the work or the rights holder, which, de facto, has a positive “…effect of the use upon the potential market for or value of the copyrighted work.”
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These days, there are authors (and I use that as a term of art, not necessarily just as the author of text) who put their work up on Facebook, YouTube, InstaGram, wherever in an effort to cause the work to go viral. The work can only do that if the author does not squish the sharing of the work. The marketing effect of copy-and-paste is huge and growing. However, that effect can backfire; a work can be copied in very high resolution and the recipient of the copied work can then use that copy just as s/he would the original. That could kill the market for the work.
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So how does the copyright holder balance the wonders of viral marketing vs. the deleterious effect of too much copy-and-paste?
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I tell my clients:
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  • PUT A WATERMARK ON YOUR SHARED WORK in such a place that no one can remove that watermark without destroying the work. That makes it MUCH less desirable to copy and paste, yet the image on the internet retains the character of the original image
  • PUT A COPYRIGHT NOTICE ON YOUR SHARED WORK. Just do it. Copyright attaches the instant a work is affixed in a tangible medium. Give the world notice of that fact.
  • REGISTER YOUR WORKS WITH THE US COPYRIGHT OFFICE BEFORE YOU SHARE IT. It’s cheap. Just do it.

Or the copyright holder can donate the work to the public domain. If this is what the author wants to do, p with abandon … and consider any copyright in any posted work abandoned. Nothing wrong with that, and it saves all the angst and pain of not being able to enforce your unregistered copyright (you can’t enforce your unregistered copyright in the USA).

The choice of how to proceed varies with each author … and it is, after all, the author’s choice.

A Christmas Copyright

“Deck the Halls” is a song in the public domain. So is Handel’s “Messiah” … the whole thing, including the ever-popular “Hallelujah” Chorus. Lots of popular Christmas songs are in the public domain (but lots are not).

Does that mean that you’re free to use these works wherever and whenever you want?

Well, no.

The works themselves are in the public domain; that means that a musician or chorus can perform them, arrange them, make a derivative work from them, do whatever creative thing they want to do with them … but that performance, arrangement, derivative work or other creative thing based on the song is absolutely protected by copyright. That means that, unless you own that copyright or have licensed rights under that copyright, you are NOT free to use that performance of the public-domain work. Your unlicensed use of the work would be considered copyright infringement.

Have you bought the recording? Great! You then bought the license to play the recording privately in your home or car … in private.

Suppose you’re having a party … can you still play the recording? That gets a bit more tenuous. The practical answer is likely that no one will enforce your technical infringement of the copyright license you purchased when you bought the CD, but technically you are infringing on the copyright.

Suppose you own a business and you play the audio in your business? There you’re going to run into trouble. The copyright police are ever-present, and they come into your place of business looking, feeling, smelling and acting just like normal customers … until you get the cease-and-desist letter from the copyright holder citing the date, time, place and song being played without license. It happens to big business (that’s why MUZAK® exists) … and it happens to mom-and-pop shops, even when the mom-and-pop shop is just playing the radio or a CD that Mom or Pop purchased. That’s public performance, and public performance is NOT licensed by the purchase of a copyright-protected audio recording of a performance, even of a song that is in the public domain.

Happy Holidays!

Handy Widget for Converting Currencies

I’m going to England in December. Because of this fact, I’m interested in converting pounds sterling to dollars and vice versa. I found this handy-dandy widget that does just that.

While this has absolutely nothing to do with intellectual property, I put it here as a service to my IP clients (and others) who travel internationally.

Will Phonetic Profanity Be OK to Register as a Trademark??

SCOTUS granted certiorari to and recently heard arguments on the case of a guy trying to register FUCT as a trademark. The question: Can a phonetically profane word be registered as a trademark?

The US Patent & Trademark Office denied registration of the mark based on its obvious similarity to the past participle of a verb commonly recognized as profane. The case has wended its way through the appellate process (US District Court for DC, Federal Circuit) and now sits before the Nine Wise Ones where it asks them to decide whether a long-standing rule prohibiting the registration of profane words interferes with the trademark holder’s First Amendment free-speech rights. They heard oral arguments on 15 April 2019.

The Roberts Court has a history with disparaging marks, having allowed SLANTS (which the USPTO denied based on its derogatory reference to Orientals) only last year. But SLANTS is not outright profanity. FUCT, phonetically, is. It’ll be interesting to see what this blatantly conservative Court does with FUCT. Seems to me that either the trademark holder will be FUCT or the public will be.

Public Domain Expanded Nicely on 1/1/2019

For the first time in 20 years, the public domain for copyrighted works has expanded! Works that were copyrighted in 1923 were protected on 31 December 2018 but entered the public domain on 1 January 2019 … and that has happened now for the first time in 20 years thanks to the Sonny Bono Copyright Act.

Anyone can now re-publish the 1923 works, or use them in other projects, without asking permission or paying the former rights holders. Anyone can record new versions of the musical compositions; anyone can show the movies for a profit; anyone can even remake those movies. Project Gutenberg can give you the ebook of those 1923 works for free.

Works now in the public domain include some of the poetry by Edna St. Vincent Millay and Robert Frost; a couple of Agatha Christie mysteries; Khalil Gibran’s “The Prophet”; “The Ego and the Id” by Freud; writings by by Jane Austen, D.H. Lawrence, Edith Wharton, Jorge Luis Borges, Mikhail Bulgakov, Jean Cocteau, Italo Svevo, Aldous Huxley, Winston Churchill, G.K. Chesterton, Maria Montessori, Lu Xun, Joseph Conrad, Zane Grey, H.G. Wells, and Edgar Rice Burroughs; artwork by M. C. Escher, Pablo Picasso, Wassily Kandinsky, Max Ernst, and Man Ray.

Be careful with music, though. Some music published in 1923 is NOT in the public domain, and will not be until 2064 since rights over music recorded until 1972 is governed by state law.

IP Mosaic Conference – Blockchain Section

I was fortunate to be able to attend at least part of the Fourth Annual IP Mosaic Conference, held at my alma mater, UNH School of Law (formerly, and when I attended, Franklin Pierce Law Center). Less fortunately, I was sick and had to bag it, so I missed the section on blockchain.

But the conference organizers recorded the section on blockchain, which was the part of the conference I was really interested in, and they invite you to listen in.

Enjoy!