Trademark & Copyright Law
As some people have undoubtedly noticed, Christmas time is here! Happiness and cheer! Time for all that children call their favorite time of year. And because nothing captures the true meaning of CHRISTMAS® like the federal government’s constitutional power to regulate interstate commerce, here for your viewing pleasure is a selection of Christmas-themed trademark registrations compiled by the IPelton® Blog. Happy holidays!
On December 24, 1960, Abraham Lewis Kaminstein was appointed the sixth Register of Copyrights. Kaminstein served in the Copyright Office for thirteen years before his appointment as Register, including service as the first chief of the Examining Division when it was formed in 1947.
Reposted from the History of Copyright Timeline at the U.S. Copyright Office.
Many owners of U.S. trademark applications and registrations are familiar with the official-looking scam notices sent by certain unscrupulous private companies (the USPTO has a dedicated page warning about such solicitations here). Such notices are designed to trick trademark owners into paying large amounts of money to “maintain” or “protect” their marks, but for years have offered unnecessary services that have no legal significance, such as “publishing” the marks in a private, unofficial trademark “registry.” This problem is not limited to U.S. trademark owners—similar scam notices have appeared in countries around the world. Now, in an apparent effort to prove that avarice truly has no geopolitical boundaries, the hucksters are thinking globally.
The World Intellectual Property Organization (WIPO) has issued an official warning that an outfit calling itself the “World Intelligent Property Office” (genius, no?) is “sending letters to the holders of international registrations and their representatives, inviting them to pay fees for registering/publishing their marks.” Fake WIPO has a similar name, a logo almost identical to the real WIPO logo, a similar web address, and a similar mailing address in Geneva, Switzerland (it’s almost as if fake WIPO wanted to create confusion). Fake WIPO also helpfully includes bank transfer details on its notice, advising its recipients that its “registration/publication” services are available for the low, low price of €1,998,80 (about $2,435, if you act now), payable within eight days of receipt of the “payment notification.” As a final courtesy, fake WIPO warns recipients that “FAILURE TO PAY REGISTRATION/PUBLICATION FEE, YOUR INTERNATIONAL MARK COULD BE CANCELLED!” Be afraid.
As real WIPO points out, “[a]ll international trademark registrations and related records are published in the ‘WIPO Gazette of International Marks,’ the only official publication of the Madrid System. All fees under the Madrid System should be paid to WIPO directly in Swiss Francs or through the Office of Origin.” As further guidance on “identifying misleading invoices,” real WIPO lists examples of such notices on its website here. Read the real WIPO warning here, and the fake WIPO notice here.
Reposted from WIPO.
The U.S. Copyright Office today released the official version of its Compendium of U.S. Copyright Office Practices, Third Edition. The Compendium is “the governing administrative manual for registrations and recordations issued by the Office.” According to the Copyright Office, “[t]he Compendium serves as a technical manual for the Office’s staff, as well as a guidebook for authors, copyright licensees, practitioners, scholars, the courts, and members of the general public.” Intended as a comprehensive guide to U.S Copyright Office practices, the Compendium also “addresses fundamental principles of copyright law, such as creation, publication, registration, and renewal… routine questions such as who may file an application and who may request copies of the Office’s records,” and “recent changes to the Office’s recordation practices.” The official webpage for the Compendium can be found here, and the full 1,288 page document can be downloaded here.
By UpstateNYer, via Wikimedia Commons.
Reposted from the U.S. Copyright Office.
On December 20, 1996, the World Intellectual Property Organization (WIPO) Copyright Treaty and the WIPO Performances and Phonograms Treaty were adopted to standardize international practice regarding digital technologies. The treaties entered into force in 2002.
By United States Mission Geneva [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.
Reposted from the History of Copyright Timeline at the U.S. Copyright Office.
For those individuals who follow, with bated breath, every new development in copyright law (and honestly, who doesn’t?), and therefore almost certainly have nothing to do on a Friday night, the Electronic Frontier Foundation has generously provided an opportunity to showcase your vast store of knowledge and relive those magic moments in copyright history as if they happened yesterday (or any other day this year), with “Crossword Puzzle 2014: The Year in Copyright News.” And, as luck would have it, just in time for Crossword Puzzle Day. Click here for fun and profit*.
Reposted from the Electronic Frontier Foundation.
*Profit will not be provided.
WalesOnline has an opinion piece today by Bethan Darwin illustrating the potential effects that intellectual property clauses in employment contracts can have on an employee’s creative endeavors outside of the workplace. The story presents the fictional example of two employees in the buying department of a UK fashion company who decide to form their own business on the side, selling Christmas jumpers. The employees create the jumper designs from scratch, do not base them on any of the employer’s product designs, and are not directly competing with the employer, because the employer does not sell or design Christmas jumpers. However, the employees use some of the knowledge gleaned from working at the fashion company to select an overseas manufacturer for the jumpers.
The jumpers are a big hit with the public, selling out during the first weekend, and the two employees make plans to place a larger order with the manufacturer. Upon returning to work, however, the pair promptly find themselves facing disciplinary action and potential liability to their employer for copyright infringement, breach of contract, and the profits from their sales. Why, you are undoubtedly tempted to ask, have these two budding entrepreneurs suffered such a dramatic reversal of fortune? Well, because their employment contracts with the fashion company contained a clause providing that ownership of any copyrightable work (e.g., a fashion design) created wholly or partially in the course of their employment, whether or not during working hours or using the employer’s premises or resources, shall vest with the employer, rather than with the employee(s) who authored the work. The hypothetical employment contracts also contained a provision obligating the employee(s) to notify the employer upon creation of any creative work that relates to or is capable of being used in the employer’s business, as well as a covenant not to compete with the employer. Thus endeth the two employees’ adventures in entrepreneurship
The story is set in the UK and features a particularly (perhaps unreasonably) restrictive employment agreement, but the overall lesson is equally applicable to US-based employees and businesses: always read and understand any copyright-related provisions (and preferably, all of the provisions) in an employment contract prior to signing it. This is sage wisdom for all types of employees, but it is particularly relevant in creative fields such as fashion, journalism, computer programming, architecture, graphic design, art, photography, music, film, science, engineering, and similar fields. Prospective employees who engage in outside activities that can produce copyrightable works should consult a copyright attorney before agreeing to any copyright or creative restrictions in an employment (or any other) agreement. You may be surprised at what you could be signing away. Read the full article here.
By TheUglySweaterShop.com [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.
Reposted from WalesOnline.
Harvard law professor and open information activist Lawrence Lessig published a blog post yesterday celebrating the twelfth birthday of the Creative Commons license suite. The Creative Commons license is a “some rights reserved” licensing mechanism that allows content creators to essentially donate a portion of their otherwise copyrighted works to the public domain, generally with some restrictions on use and/or requirements of attribution. Lessig, one of the founding forces behind Creative Commons, has been a leading advocate for making information open and freely available, especially online. As Lessig explains, the Creative Commons license was created in response to the fact that “[t]he internet was changing the way people share, and changing what it meant to be a creator. But copyright law hadn’t caught up. The Net was making sharing easy; the law was making it hard.”
Reporting that more than one billion creative works are now available to the public under a Creative Commons license, Lessig argues that the license does much more than simply facilitate the creation of new creative works; as he states, “CC licenses are having a real impact on people’s lives. They are helping reveal information used to treat diseases, to make governments more transparent and accountable, and to make education accessible for everyone, everywhere. That’s an incredible impact for a set of simple, free licenses.” Read Lessig’s full post here. To learn more about Creative Commons licenses, or to make a donation to the organization, click here.
Creative Commons Attribution 2.0 Generic license.
Reposted from Creative Commons.
The United States Patent and Trademark Office (USPTO) issued a final rule today implementing fee reductions for new trademark applications and renewals. The rule, appropriately entitled “Reduction of Fees for Trademark Applications and Renewals,” amends 37 C.F.R. § 2.6 by lowering the “TEAS Plus” trademark application fee from $275 to $225 per class, and creating a new application category called “TEAS Reduced Fee” that lowers the standard application fee from $325 to $275 per class for applications that qualify (principally by the applicant agreeing to communicate by email and file documents electronically). For renewals of trademark registrations, the fee has been reduced from $400 to $300 per class. The fee reductions in the final rule go into effect on January 17, 2015. The Federal Register has the final rule here, and background information about the rule here.
Wikipedia user Coolcaesar [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/)], via Wikimedia Commons.
Reposted from the Federal Register.
World Trademark Review has a useful overview of the newly-released 2014 Performance and Accountability Report (PAR) from the U.S. Patent and Trademark Office (USPTO). Per the USPTO, the PAR “provides information on the USPTO’s programs and the results of the agency’s programmatic and financial performance for fiscal year (FY) 2014,” and “demonstrates to Congress, the Administration, and to the public the USPTO’s efforts to promote transparency and accountability over the resources entrusted to the agency.” While the patent side of the agency continues to face the challenges of a large backlog of unexamined applications and lengthy first action and total pendency periods, the trademark side “maintains record low pendency while meeting or exceeding forecasts for new applications and renewals.” Future goals for the trademark department include improved IT services, greater use of electronic processing for trademark filings, and proposed fee reductions for applications and renewals. Read the full article here, and the full 2014 PAR here.
By עדירל (Own work) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.
Reposted from World Trademark Review.
On December 12, 1980, U.S. copyright law was amended to confirm the copyrightability of computer programs.
By Unknown or not provided (U.S. National Archives and Records Administration) [Public domain], via Wikimedia Commons.
Reposted from the History of Copyright Timeline at the U.S. Copyright Office.
World Intellectual Property Review reports that the U.S. Patent and Trademark Office (USPTO) has issued a final refusal to register COMFYBALLS as a trademark for a line of men’s and women’s underwear. The applicant, Norway-based Tonic Brands AS, filed U.S. Application Serial No. 85952474 on June 6, 2013, claiming priority to an equivalent European Community Trademark registration for the COMFYBALLS mark. As its sole basis for refusal, the USPTO contends that “the applied-for mark consists of or includes immoral or scandalous matter” under § 2(a) of the Trademark Act, 15 U.S.C. § 1052(a).
The USPTO explains in its refusal that, “[f]or a mark to be ‘scandalous,’ the evidence must show that the mark would be considered shocking to the sense of decency or propriety, giving offense to the conscience or moral feelings, or calling out for condemnation,” and further states that “[e]vidence that a mark is vulgar is sufficient to establish that the mark is scandalous or immoral within the meaning of Trademark Act Section 2(a).” Because the term “balls” is considered to be a “vulgar” slang term for a particular part of a man’s undercarriage, and because Tonic Brands admitted that its own use of the term was in reference to said part of said undercarriage, the USPTO ruled that “registration is denied because the mark includes a vulgar term which is immoral or scandalous, particularly in the context in which the applicant intends to use the term.” Even if the USPTO had been willing to sacrifice the delicate sensibilities of the American people on the altar of commerce, registration on the Principal Register may still have been a long shot—if the underwear lives up to its name, the COMFYBALLS mark is practically begging for a refusal based on descriptiveness. Read the full article here, and shock your own sense of decency and propriety with the COMFYBALLS application here.
Reposted from World Intellectual Property Review.
The Washington Post reports that President Obama’s nominee to be the new Director of the U.S. Patent and Trademark Office, will not get a Senate confirmation vote until the next session of Congress convenes in January. The Senate has already begun the confirmation hearings for Michelle K. Lee, the nominee and current deputy director, and Lee is not expected to face many substantive objections to her confirmation. However, Sen. Patrick Leahy (D-VT), Chairman of the Judiciary Committee, and Sen. Chuck Grassley (R-IA), who is slated to take the gavel when the Republicans take over the Senate in January, appear to agree that, in Grassley’s words, “there isn't enough time for these nominations to be confirmed before we adjourn.” What with the current Congress being so productive and all. Read the full article here.
By Tim Evanson from Washington, D.C., USA, United States of America (USPTO-Alexandria-2011-03-12_a) [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.
Reposted from The Washington Post.
The World Intellectual Property Organization (WIPO) reports that the Organisation Africaine de la Propriété Intellectuelle (OAPI) has become the ninety-third member of the Madrid Protocol for the International Registration of Marks. The accession of OAPI adds the West African countries of Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, the Republic of Congo, Côte d’Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal, and Togo to the Madrid System. Beginning March 5, 2015, brand owners in West Africa who seek international trademark protection will have access to the convenience and potential cost savings of the Madrid System, and brand owners in Madrid member countries will be able to extend trademark protection into the seventeen member states that comprise OAPI.
As WIPO explains, for those unfamiliar with the Madrid System: “The Madrid System makes it possible for an applicant to apply for a trademark in a large number of countries by filing a single international application at a national or regional IP office of a country/region that is party to the system. It simplifies the process of multinational trademark registration by reducing the requirement to file an application at the intellectual property office in each country in which protection is sought. The system also simplifies the subsequent management of the mark, since it is possible to record further changes or to renew the registration through a single procedural step.”
For the full article, click here, and for more information about the Madrid System, click here.
By RugTimXII at en.wikipedia. Later version(s) were uploaded by Richardprins at en.wikipedia. (File:Africa (orthographic projection).svg) [Public domain], via Wikimedia Commons.
Reposted from WIPO.
Bloomberg Businessweek examines the (perhaps overly) zealous trademark enforcement efforts of Richard Branson’s Virgin Group in a piece published today. The company apparently takes a rather expansive view of the scope of its trademark rights, and has opposed or delayed at least sixty-four trademark applications in the U.S. since 2012, “taking on craft breweries, romance novelists, and a host of companies and nonprofits whose products and services don’t obviously overlap with those of the multinational giant.” According to a company spokesman, Virgin Group does not engage in “the aggressive pursuit of overbroad claims of trademark infringement," but “does take legal action in accordance with trademark laws around the world to protect and preserve the value of the Virgin brand where necessary.”
However, as Mike Atkins, a professor at the University of Washington School of Law, states, “Opposing trademark registrations in unrelated fields is the classic behavior of a trademark bully… Virgin is a very diverse company, and they may be wanting to prevent others from occupying market segments where they don’t do business yet, but may do business in the future… But if they’re not competing in that market now, they don’t have any reasonable basis to prevent others to go to market.” Unfortunately for the company’s targets, Virgin Group may be relying on the time-tested legal theory of might makes right in its attempts to carve out a wide space for its own marks. Read the full article here.
Reposted from Bloomberg Businessweek.
On December 8, 1993, the North American Free Trade Agreement Implementation Act extended copyright protection to certain motion pictures first fixed in Canada or Mexico between January 1, 1978, and March 1, 1989, and published without a copyright notice.
A year later, on December 8, 1994, the Uruguay Round Agreements Act restored copyright to certain foreign works under protection in the source country but in the public domain in the United States.
By White House [Public domain or Public domain], via Wikimedia Commons.
Reposted from the History of Copyright Timeline at the U.S. Copyright Office.
As noted yesterday by Lifehacker, it is axiomatic that in today’s hectic world, “[r]eading up on copyright and fair use laws isn't most people’s idea of fun.” Unless you’re weird. Or a copyright lawyer. Fortunately for all the normal folk out there (and you know who you are), the Duke University Center for the Study of the Public Domain has thoughtfully published an entertaining, informative, and bountifully illustrated primer entitled “Tales from the Public Domain: Bound By Law?”
Available as a free download from the Center’s website, and certain to appeal to jocks and nerds alike, the publication is designed to satisfy the market’s long-felt need for a comprehensive exposition of U.S. copyright law in comic book form. Download, read, learn, heed, and most importantly, impress your friends at Comic-Con. Or you could just call a copyright lawyer. Read the Lifehacker article here, and download the comic book here.
Duke University Center for the Study of the Public Domain.
Reposted from Lifehacker.
SCOTUSblog posts a lengthy and detailed first-hand analysis of Tuesday’s oral arguments before the Supreme Court in the pending trademark case of B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352. As discussed in an earlier post here, the case examines the issues of (1) whether the [Trademark Trial and Appeal Board’s] finding of a likelihood of confusion precludes [a defendant] from relitigating that issue in infringement litigation, in which likelihood of confusion is an element; and (2) whether, if issue preclusion does not apply, the district court was obliged to defer to the TTAB’s finding of a likelihood of confusion absent strong evidence to rebut it. In other words, the Court is ruling on the preclusive effect, if any, that a likelihood of confusion determination by the USPTO has on a subsequent district court action for trademark infringement. While court watchers have long claimed the ability to predict a case’s outcome by the number and tone of the Justices’ questions, the post’s author confesses to having “no strong intuition about how the Justices will decide this case,” other than a prediction that “the Justices will regard the case as a close one” that will be “won at the argument.” Read the full article here, and the transcript of Tuesday’s oral arguments here.
By Steve Petteway, Collection of the Supreme Court of the United States (Roberts Court (2010-) - The Oyez Project) [Public domain], via Wikimedia Commons.
Reposted from SCOTUSblog.
The Office for Harmonization in the Internal Market (OHIM, the European trademark office) reports that in the first week of implementation, 21.5% of new Community Trademark (CTM) Applications were filed using the new “Fast Track” examination system. As discussed here in an earlier post, the newly-introduced Fast Track system offers an accelerated, streamlined examination process for CTM applications that can take less than half the prosecution time of a regular CTM application. While the filing requirements for Fast Track CTM applications are stricter than those for regular CTM applications, more than one in five new applicants (443 out of 2,073) are availing themselves of the Fast Track process. For the OHIM announcement and more details about the Fast Track system, click here.
Reposted from OHIM.
As reported by SCOTUSblog, the U.S. Supreme Court heard oral arguments today in the pending trademark case of B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352. In this case, petitioner B&B owns and uses the registered mark SEALTIGHT® for sealing fasteners. Respondent Hargis is also in the sealing fastener business, and has used and sought federal registration for the phonetically identical mark SEALTITE. Hargis initiated a cancellation proceeding against B&B’s registered mark before the Trademark Trial and Appeal Board (TTAB), but the TTAB held that Hargis’s SEALTITE mark created a likelihood of confusion with B&B’s SEALTIGHT mark, and refused to cancel B&B’s mark or register Hargis’s mark. B&B then sued Hargis in federal court for trademark infringement, but, contrary to the TTAB’s finding, the jury found no likelihood of confusion and ruled against B&B. After the 8th Circuit Court of Appeals upheld the district court’s ruling, the Supremes agreed to hear the case.
The questions presented, as summarized by the Supreme Court, are (1) whether the TTAB’s finding of a likelihood of confusion precludes Hargis from relitigating that issue in infringement litigation, in which likelihood of confusion is an element; and (2) whether, if issue preclusion does not apply, the district court was obliged to defer to the TTAB’s finding of a likelihood of confusion absent strong evidence to rebut it. SCOTUSblog distills the two issues into a single question: “how much deference does a district court owe to determinations that the [USPTO] makes in determining whether to register a trademark?”
As the article explains, B&B argues that “the [TTAB’s] determination of the likelihood of confusion between the marks, made in a proceeding in which both parties participated, should resolve the question once and for all,” in large part because of “the availability of appeal to federal district court: because Hargis had every opportunity to challenge the [TTAB’s] adverse ruling in the Federal Circuit or in a federal district court, its failure to do so should bring the litigation to a conclusion at last.” Hargis, on the other hand, “emphasizes the difference between the types of confusion at issue: the [TTAB] is considering similarity of the marks, while the court is considering similarity of use. In the terms of the Lanham Act, the Board is considering the likelihood that a proposed mark ‘so resembles’ an existing mark that it is likely to cause confusion; the court addressing the Lanham Act claim considers whether the defendant’s ‘use in commerce . . . is likely to cause confusion.’” It remains to be seen how the Court will rule in this case, but there are compelling arguments to be made on both sides, and the decision could significantly affect the strategies and practices of future litigants before both the TTAB and the federal courts. Read the full article here, and the transcript of today’s oral arguments here.
By This image or media was taken or created by Matt H. Wade (User:UpstateNYer). To see his entire portfolio, click here.. This image is protected by copyright! If you would like to use it, please read this first. (Own work) [CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.
Reposted from SCOTUSblog.
![By United States Mission Geneva [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1419055146251-B00ZL21HF4TXRT7NPFN8/image-asset.jpeg)
![By TheUglySweaterShop.com [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1418945399172-WLJC0BSIND8WJ7ELSELJ/image-asset.jpeg)
![Wikipedia user Coolcaesar [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1418788679893-3YF7G4N1EUYZXJBJNUG6/image-asset.jpeg)
![By עדירל (Own work) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1418703345978-HXLKWUJDVRGVKC24NBS5/image-asset.jpeg)
![By Unknown or not provided (U.S. National Archives and Records Administration) [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1418275527603-RY0DWPVN1L8AOYSR1R06/image-asset.jpeg)
![By Tim Evanson from Washington, D.C., USA, United States of America (USPTO-Alexandria-2011-03-12_a) [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1418362155460-LDYF24XO7743DNWUMPI3/image-asset.jpeg)
![By RugTimXII at en.wikipedia. Later version(s) were uploaded by Richardprins at en.wikipedia. (File:Africa (orthographic projection).svg) [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1418270390363-AFHW0VHEC4Q3MGS9QOGL/image-asset.png)
![By White House [Public domain or Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1418055269316-E9X5Z96I8DPM4TFYXQM6/image-asset.jpeg)
![By Steve Petteway, Collection of the Supreme Court of the United States (Roberts Court (2010-) - The Oyez Project) [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1417715853657-C52P7UGR5YJTP441YN7F/image-asset.jpeg)
