Category: Intellectual Property

A Christmas Copyright

Posted on by Delain Law Office

“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!

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

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

Posted on by Delain Law Office

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.

IP Mosaic Conference – Blockchain Section

Posted on by Delain Law Office

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!

Collection vs. Individual Copyright Registration

Posted on by Delain Law Office

According to a post by Heather Hummel on the Huffington Post’s blog:

Last spring when I discovered eight of my own images had been copyright infringed, I became particularly passionate about the legal rights of artists. I was fortunate that I had done a few things to help with protecting my work. One step was including a copyright statement, which is clearly stated, on my website. But, the most important step I took was not only registering my copyrights, but doing so in a timely manner. As such, several of my images that were stolen had already been registered with the U.S. Copyright Officeupon infringement. I can attest that it was worth the few pennies per image to do so.

For example, the fee for me to register 184 photos for 2013 and 134 photos for 2014 was $55 per batch.

This photographer registered copyright in her photographs by batching her photos and registering as a collection (the Copyright Office’s term is “collection,” not “batch”). This is a perfectly viable way to register copyright. It is cost-effective and it has teeth.

But wait.

A copyright infringement award is based on the percentage of the copyrighted work that is infringed. If the photographer registers only one or a very few photos in each registration and eats the $55/registration package fee, the percentage of the work that is infringed increases, here potentially by 100-fold or more.

Look at it this way. If you register 100 photos in one collection and someone infringes one of those photos, your maximum infringed percentage is 1%. Your recovery is 1% of the maximum recovery allowed for that infringement. If, though, you register 10 photos in one batch, your maximum infringed percentage is 10% and your potential recovery increases by a factor of 10. If you register each photo individually, your infringed percentage is potentially 100% and your recovery increases by a factor of 100.

It’s a trade-off, though; many photographers don’t want to spend $55 to register each and every photo; that simply gets cost-prohibitive very quickly. And that’s okay, as long as each photographer understands that the potential recovery for infringement goes down with increasing numbers of photos in the collection.

Matal v. Tam, ___ US ___ (2017)

Posted on by Delain Law Office

SCOTUS handed down a HUGE trademark decision yesterday.

Matal v. Tam declares the language of 15 USC 1052(a), which prevents the registration of marks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead” to be unconstitutional under the First Amendment’s Free Speech clause.

Wow.

This opens up a whole new world of potential trademark registrations.

 

Happy Earth Day 2017!

Posted on by Delain Law Office

The patent world is full of technologies that support the Earth. From solar panels to ever-more-efficient batteries to new recycling technologies, inventors throughout the USA are working to protect our environment.

Even the oil and gas industry have worked, at least a little, to help keep things cleaner. According to www.oilprice.com:

Oil companies, working alongside environmental organizations, scientists, biologists and engineers have developed numerous solutions for spills occurring both on land and in the water. Water spills can now effectively be cleaned by presses that involve straining and draining while containing the oil slick, using “floating booms” to corral the oil while skimmers and vacuum pumps cleanse the water and reclaim large percentages of the spilled oil.

Another “eco-friendly” oil spill management method for both water and land spills is called “Bio-Remediation. It’s a technique that uses living organisms such as bacteria and fungi to degrade, break down and in some cases; actually eat the oil as it safely cleanses the spill without hurting the environment.  Meanwhile, serious upgrading of the technology now being used for the drilling and refining of oil is cutting previous pollution levels down tremendously, as the oil industry increases profits by processing more usable oil while polluting a lot less.

Oil companies are now investing billions of dollars in socially responsible programs and are quickly becoming one of the largest supporters of environmentally friendly programs worldwide. Oil is already largely responsible for many of the major advances in medicine, pharmacology and world wide health care infrastructure, but now they are some of the largest supporters of research dedicated to promoting renewable energy sources.

This text was written in 2009; whether it remains true in the new administration or not is questionable. Our current administration is not friendly toward our planet, and that fact needs to be mitigated through strong Congressional action that puts into statute environmental protections which have, up until now, been administrative.

So, along with lobbying for science, we need to lobby for statutory control of air pollutants, water pollutants, increased use of green energy sources, and all the rest of the stuff formerly regulated by the Environmental Protection Agency. There is so very much technology out there already to support an eco-friendly country … we just need to have the backing of the government to continue to develop and use it.

Winter Weather

Posted on by Delain Law Office

The snow is falling thick and fast as I write this. The roads are terrible; accidents abound on the highways and the back roads around Clifton Park, NY.

The net result of this, of course, is that the office is CLOSED on Monday, 13 February 2017.

Stay safe!

Hail and Farewell

Posted on by Delain Law Office

The franchisee who developed and named the Big Mac died on Monday night. Jim Delligatti, an early franchisee of Ray Croc’s, ran several McDonald’s in the Pittsburgh area (he ended up with nearly 50 stores). The first Big Mac sold in Mr. Delligatti’s restaurant on McKnight Road in Ross Township for $0.45 … that’s right, the first Big Macs sold for 45 cents.

Ray Croc and his business advisors must have seen the genius of that sandwich and McDonald’s ran with it. All those “two all-beef patties, special sauce, lettuce, cheese, pickles, onions on a sesame seed bun” started in Pittsburgh and went franchise-wide in 1968.

Mr. Delligatti was 98.

Crowdfunding IP

Posted on by Delain Law Office

This is a good article about the taxability of crowdfunding.

But who owns the intellectual property in a crowdfunding situation? Does the inventor or author always get to keep the rights to the Big Idea they fund?

Well, as with whether a crowdfunding campaign is taxable or not, that depends.

Intellectual property is transferred by agreement between the owner of the rights (the originator of the work or an assignee) and the assignee of the rights. If the originator of the work assigns the work to another, then that other owns those rights. If s/he does not, then that other does not own those rights.

So what makes a valid transfer of rights?

A signed writing that transfers the rights. This need not be a contract; there need be no consideration.

That writing can be a “work made for hire” agreement, in which the originator of the work agrees that s/he has been hired by another to create, and the results of the creation belong to that other.

That writing can be an assignment of rights, in which the originator of the work assigns the rights to another. This assignment can take the form of a contract (offer, acceptance, consideration), or it can be a simple assignment without the trappings of contract.

Without that signed writing, though, the IP rights remain with the current owner, who may be the originator or an assignee.

If the crowd were to get rights to the intellectual property it funds, the owner of those rights must assign those rights to the crowd. That doesn’t happen very often; in fact, I know of no instance in which the crowdfunders have shared in the IP rights their funds help to develop. The crowd must generally settle for something else. Stock, for instance. Or a sample of the product. Or even just a T-shirt. But IP rights? Possible, but not likely.

Crowdfunding and venture capital are entirely different in this regard. Venture capitalists regularly take ownership interest in the company, including the IP rights, in exchange for funding.