On 11 August 2020, I was delighted to give a CLE presentation to the Schenectady County Bar Association on IP – When Not to Dabble. It also includes a run-through of two registrations … one copyright, one trademark.
Enjoy!
Category: Intellectual Property
Privacy and Home Base in COVID-19
So. You’re being a good citizen of the world and sheltering in place. Your employer actually allows you to work from home and you’re accessing your employer’s information over your home-based wi-fi. You have a password on your router, a password on your local computer, your and you have never seen a neighbor lurking on your internet system.
But now you’re accessing your employer’s sensitive and private intellectual property using your home-based internet. Is your home-based security sufficient?
My guess is that no, it is not.
Hackers love a challenge. And a home-based internet security system is usually not set up to handle a hacker’s attack. There are resources available on the internet to help you beef up your home’s internet security; the Federal Trade Commission provides these tips; here’s ZDNet’s article; Digital Guardian lists 101 Data Protection Tips; and there are other references available. You must be proactive in keeping your and your employer’s data secure.
The best advice, though, is to follow your employer’s internet security protocols. If they have a PITA VPN, use it. If they want you to use the Tor browser rather than your favorite Internet Explorer or Firefox or Safari, use it. Be careful about email, especially email that can travel across the open internet; you can simply assume, de facto, that emails are open communication with the world. And if you or your employer don’t want something forever on the internet, don’t put it there.
If you want to keep something private, you must keep that something private. Remember, not everything belongs on the internet.
CARES Act Reposting
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.
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!
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.
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!
Trademark Misuse Cleverly Contested
The song is cute. The video is cute. The point is valid. Those who own trademarks that are entering the general lexicon should take heed.
Collection vs. Individual Copyright Registration
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)
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.