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!
Author: Delain Law Office
Black Lives Matter
Today, Delain Law Office, PLLC joins the world in mourning the loss of George Floyd. We pray for his family and friends as they lay him to rest, and we pray for every family who has lost a loved one at the hands of violence … especially police violence. We pray for their strength and for their healing. And we pray that they forgive us all for failing them so completely.
It has been more than one hundred and fifty years since Abraham Lincoln signed the Emancipation Proclamation, more than 50 years since the Civil Rights Act of 1964, more than 10 years since we elected our first African American president. Many, many lives have been lost. Still, there is still no justice under the law for African Americans. It is still not safe to be Black in this country.
We live in a nation divided by race. African Americans have glaringly different outcomes than do those of European descent when it comes to nearly every system that has been erected in this country. Racism negatively impacts employment, housing, health, safety, and financial wellbeing.
We at Delain Law Office are shocked and saddened by the actions of the officers who callously and needlessly took Mr. Floyd from his family. That his six-year-old daughter can see that her daddy changed the world is amazing … and tragic. The world should already have undergone this change. We find it reprehensible that it so clearly has not.
I am a white woman, and I recognize that I sadly hold a privilege in our society based solely on the color of my skin. That privilege rings truly hollow when it comes at the price of innocent lives, regardless of the color of that life’s skin. Today, and every day, I stand in solidarity with the Black community. I stand ready to listen and to serve.
#BlackLivesMatter.
USPTO’s National Patent Drafting Competition Announces 2020 Winners
…and Delain Law Office, PLLC congratulates them.
The National Patent Drafting Competition is a competition that the US Patent & Trademark Office holds for law students to introduce them to issues arising in US patent law. The point of the competition is to develop each team’s drafting, amending and prosecuting skills working with a hypothetical invention statement.
Competitions like this one vastly improve the quality of the work that a new law-school graduate can produce right out of the gate. Patent drafting is one of those things where practice makes perfect; the more practice a student gets, the more professional his or her initial work will be. The law students who have the opportunity to participate in competitions such as this one will join the ranks of the legal profession with some degree of experience under their belts … and this experience is invaluable to them and to their clients.
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.
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!