Today in Copyright History: 1/17

January 17, 2015 by David Payne in 201501

On January 17, 1984, the U.S. Supreme Court ruled in Sony Corp. of America v. Universal City Studios, Inc. (the “Betamax case”) that a videocassette recorder manufacturer cannot be held liable for copyright infringement solely on the basis of distributing a product capable of substantial noninfringing uses.

By Hoikka1 (Own work) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons.

Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Je Suis Unregistrable, Part Deux

January 16, 2015 by David Payne in 201501

World Intellectual Property Review reports that France’s IP office, The National Institute of Industrial Property, has already rejected fifty trademark applications for the phrase JE SUIS CHARLIE, which has seen widespread public use since the terrorist attack at the Charlie Hebdo offices in Paris. All of the applications were rejected on the basis that, according to France’s IP office, “they do not meet the criterion of distinctive character. This slogan cannot be picked up by an economic actor because of its wide use by the community.” In other words, France’s IP office is arguing that one cannot claim an exclusive right to a phrase that is in such widespread public use that it is incapable of (1) functioning as a unique source identifier for any particular goods/services, and (2) distinguishing one’s goods/services from those of another. The rejections did not delve into a second potential basis for rejection, which is that in France, “applications can be refused if they are considered to conflict with public order or high moral standards.”

As discussed in an earlier post here, attempts by private parties to co-opt and register popular public slogans are almost always both an exercise in futility and a magnet for public condemnation, yet they continue to happen. Frequently. And lest one think that attempts to claim JE SUIS CHARLIE are limited to Europe, it should be noted that at least one U.S. trademark application has already been filed, and by an entity calling itself The Je Suis Charlie Trust, no less. Read the full article here.

By Tim from Schönebeck, Germany (150111-160528) [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

Reposted from World Intellectual Property Review.

Today in Copyright History: 1/15

January 15, 2015 by David Payne in 201501

In its January 15, 2003 decision in Eldred v. Ashcroft, the U.S. Supreme Court upheld the constitutionality of The Sonny Bono Copyright Term Extension Act, which retroactively extended the copyright term after the author’s death from fifty to seventy years.

By Michael Holley Swtpc6800 en:User:Swtpc6800 (Own work) [Public domain], via Wikimedia Commons.

Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

What’s in a Name

January 14, 2015 by David Payne in 201501

In a piece entitled “Prince Charles launches product line with a most unfortunate name,” the UK’s Daily Mail reports that, “[w]ith what could hardly be worse timing as the West braces itself for more terrorist attacks after the carnage in Paris,” the heir to the British throne recently introduced a line of products at the Highgrove Shop under the brand name ISIS. The ISIS products are a premium line of ceramic lamp stands, vases, and serving bowls that are “inspired by the River Thames, which is known as the Isis in Oxford,” but coincidentally happen to share that name with the fundamentalist Islamic State of Iraq and al-Sham. Read the full article here.

By Dan Marsh (Flickr: Prince Charles) [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

Reposted from the Daily Mail.

Je Suis Unregistrable

January 13, 2015 by David Payne in 201501

Per World Trademark Review, at least one attempt has already been made to claim trademark rights in the phrase JE SUIS CHARLIE, “the slogan adopted by supporters of free speech and freedom of expression in the wake of last week’s Charlie Hebdo magazine massacre in Paris.” Following in the footsteps of previous efforts to trademark phrases such as BOSTON STRONG, OCCUPY WALL STREET, JUSTICE 4 TRAYVON, HANDS UP DON’T SHOOT, and I CAN’T BREATHE, an applicant named Yanick Uytterhaegen filed a trademark application in the Benelux region (Belgium, the Netherlands, and Luxembourg) for the mark JE SUIS CHARLIE on January 8, 2015, just one day after the attack on the Charlie Hebdo headquarters in Paris that killed twelve people.

Attempts to claim exclusive rights in common phrases and slogans in the wake of an event, cause, or movement are sufficiently commonplace to be considered inevitable. However, attempts to secure formal registration of such marks are seldom successful, because (1) common slogans are rarely associated in the public’s mind with a single source for goods and/or services, and (2) slogans arising from tragic events are generally considered unregistrable as offensive or disparaging in many jurisdictions. Plus, as the ALS Association learned last summer when it tried to appropriate the phrase ICE BUCKET CHALLENGE (see an earlier post on this subject here), such efforts tend to result in a public relations nightmare for the would-be claimant. Read the full article here, and the JE SUIS CHARLIE application here.

By Pierre-Selim (Manifestation Charlie Hebdo) [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

Reposted from World Trademark Review.

Today in Copyright History: 1/12

January 12, 2015 by David Payne in 201501

The Printing Act of 1895 contained the first statutory prohibition of copyright in U.S. government publications.

By Reynolds (Library of Congress) [Public domain], via Wikimedia Commons.

Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

“Scandalous” Trademark Gets A$$JACKED by TTAB

January 09, 2015 by David Payne in 201501

From the why-do-people-keep-trying-to-do-this department, the U.S. Trademark Trial and Appeal Board (TTAB) issued a ruling yesterday affirming an Examining Attorney’s refusal to register the mark ASSJACKED for “hats; headwear; jackets; pants; shirts; shorts; sweaters; sweatshirts; swimwear; t-shirts; and undergarments.” The refusal was based on § 2(a) of the Trademark Act, 15 U.S.C. § 2(a), “on the ground that the applied-for mark consists of immoral or scandalous matter” (see an earlier post on this subject here). The TTAB has held that a mark can be considered scandalous and refused registration by establishing that the mark is “vulgar.” In this case, the Examining Attorney relied in part on a definition from Urban Dictionary, and was also assisted by the applicant’s own statements on its website, essentially admitting that ASSJACKED is “a very literal term which needs little explanation.” In other words, the term means what everyone thinks it means, and thus may properly be considered vulgar. In affirming the refusal to register, the TTAB stated that “the term ASSJACKED is vulgar and therefore scandalous from the standpoint of a substantial composite of the general public and, as such, registration is prohibited under Section 2(a) of the Trademark Act.” The term ASSJACKED may now take its place alongside fellow traveler COMFYBALLS, which was refused registration last year on the same basis. Read the TTAB opinion here. Just don’t read it aloud.

Reposted from the TTAB.

Today in Copyright History: 1/8

January 08, 2015 by David Payne in 201501

On January 8, 1783, Connecticut passed the first U.S. copyright statute. Noted lexicographer Noah Webster was instrumental in securing its enactment. All other U.S. states except for Delaware followed suit.

By Engraving is inscribed “Morse Pinx, Kellogg Sc”, and noted “engraved for the quarto edition of Webster's American Dictionary” [Public domain], via Wikimedia Commons.

Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

New Balance Claims the Converse of Converse’s Claim

January 08, 2015 by David Payne in 201501

World Intellectual Property Review reports that shoe maker New Balance has sued rival shoe maker Converse in federal court in Massachusetts, seeking a declaratory judgment that its PF FLYERS athletic shoe does not infringe Converse’s trademark rights in its CHUCK TAYLOR ALL STARS athletic shoe. Converse made headlines last October when it filed federal trademark infringement lawsuits and a U.S. International Trade Commission (ITC) action against thirty-one different retailers, including Walmart, Kmart, and Sketchers, all of whom sold athletic shoes that arguably bear similarities to Converse’s “Chuck Taylor” shoe (see an earlier post on the subject here). The Chuck Taylor shoe is protected by numerous federal trademark registrations covering various aspects of the shoe’s appearance, including Reg. No. 4398753, which “consists of the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other.”

New Balance, interestingly, was not named as a party in any of Converse’s enforcement actions. However, the company states in its Complaint that “[a] fair reading of the ITC complaint… reveals that Converse asserts trademark rights that, if upheld by the Commission, may improperly affect PF Flyers’ ability to compete with Converse.” The Complaint further alleges that “Converse’s ITC complaint seeks a ‘general exclusion order’ that purports to target the named respondents, but is broadly written so as to also potentially exclude long-time legitimate competitors, such as PF Flyers.” New Balance also alleges that the existence of numerous third parties selling similar shoes incorporating the claimed features of the Chuck Taylor shoe obviates any argument by Converse that it has an exclusive right to those features, and/or that a likelihood of consumer confusion exists, and/or that the features serve as an source indicator for the shoes. New Balance therefore seeks a declaratory judgment that (1) its “use of a toe bumper, toe cap, and striped midsole in connection with athletic footwear” is noninfringing; (2) its use of the claimed features precludes “any cognizable consumer confusion”; and (3) the claimed features are not protectable under the Lanham Act. The Complaint further seeks an order cancelling the 4398753 registration. Read the full article here, and the New Balance Complaint here.

By Brooke Fishwick [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons.

Reposted from World Intellectual Property Review.

New Madrid Amendments Come into Effect

January 07, 2015 by David Payne in 201501

World Intellectual Property Review reports that the latest amendments to the Madrid System entered into force on January 1 of this year. The new changes to the Common Regulations, which govern the implementation of the Madrid System, were approved by the Madrid Union Assembly in Geneva in September 2014, and will govern the operations of the International Bureau of the World Intellectual Property Organization (WIPO). The amendments principally cover application processes and international registrations, and also include updates to the Nice Classification (discussed in an earlier post here). More details about the specific changes are discussed in the full article here, and in the December 2014 version of WIPO’s Madrid Highlights here.

By Yann (Own work) [GFDL (http://www.gnu.org/copyleft/fdl.html), CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/) or CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

Reposted from World Intellectual Property Review.

Today in Copyright History: 1/6

January 06, 2015 by David Payne in 201501

On January 6, 1897, the U.S. Copyright Amendment Act of 1897 created a public performance right for musical compositions to protect against unauthorized public performances.

Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

A Google of Copyright Takedown Notices

January 05, 2015 by David Payne in 201501

Okay, not quite a google, but according to an article today at TorrentFreak, a still quite respectable 345,169,134 takedown notices were submitted by copyright holders in 2014. The takedown notices take advantage of a provision in the Digital Millennium Copyright Act (DMCA) that allows copyright owners or their representatives (e.g., the MPAA or the RIAA) to report sites that contain allegedly infringing content to search engine providers like Google. As the article notes, “[t]hese requests have increased dramatically over the years. In 2008, [Google] received only a few dozen takedown notices during the entire year, but today it processes more than a million reported ‘pirate’ links per day.” The goal of copyright holders is to stop the alleged infringement and steer “prospective customers away from pirate sites.” Unfortunately for the copyright holders, the sheer number of DMCA takedown notices is indicative of the scale of the infringing online activity taking place every day. Read the full article here.

By Coolcaesar (Googleplexwelcomesign.jpg) [GFDL (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 TorrentFreak.

New Commissioner for Trademarks at USPTO

January 02, 2015 by David Payne in 201501

On January 1, 2015, the U.S. Patent and Trademark Office (USPTO) had a changing of the guard when Mary Boney Denison assumed the position of Commissioner for Trademarks. Per the USPTO, “[t]he Commissioner for Trademarks oversees all aspects of the USPTO’s trademarks organization, including policy, operations, and budget relating to trademark examination, registration, and maintenance.” Denison, who previously served as Deputy Commissioner for Trademark Operations, was appointed last month to the Commissioner’s post by U.S. Secretary of Commerce Penny Pritzker. Denison succeeds outgoing Commissioner Deborah Cohn, who has held the position since 2010. Read the USPTO press release here, and Denison's biography here.

Reposted from the USPTO.

2015 Version of Nice Classification Goes into Effect

January 02, 2015 by David Payne in 201501

January 1, 2015 saw the entry into force of the 2015 Version of the Nice Classification, Tenth Edition. Officially called the International Classification of Goods and Services for the Purposes of the Registration of Marks, the Nice Classification is the product of a multilateral agreement in 1957 to establish, as its title suggests, an international, standardized system of classifying goods and services for trademark registration purposes. There are currently eighty-four countries, including the United States, that are bound by the Nice Agreement, as well as a number of other countries that are not contracting parties but have adopted the Nice Classification. The Nice Classification is published by the World Intellectual Property Organization (WIPO) here, and is accessible for public searching here. In addition, the U.S. Patent and Trademark Office (USPTO) has posted an overview of the 2015 Version of the Nice Classification here, as well as a summary of “noteworthy changes” in the 2015 Version here.

I, Yann [GFDL (http://www.gnu.org/copyleft/fdl.html), CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/) or CC BY-SA 2.5-2.0-1.0 (http://creativecommons.org/licenses/by-sa/2.5-2.0-1.0)], via Wikimedia Commons.

Reposted from the USPTO and WIPO.

Happy 2015!

January 01, 2015 by David Payne in 201501

On behalf of David Payne and Trademarkwise®, best wishes for the new year! May 2015 bring you health, happiness, prosperity, and comprehensive protection for your trademark, copyright, and intellectual property matters on a budget-friendly, flat fee basis. And such.

By Roula30 (Own work) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

Today in Copyright History: 1/1

January 01, 2015 by David Payne in 201501

On January 1, 1953, recording and performing rights were extended to nondramatic literary works.

Twenty-five years later, on January 1, 1978, the principal provisions of the 1976 Copyright Act, the fourth general revision of U.S. copyright law, took effect.

By Carol M. Highsmith (Own work) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Today in Copyright History: 12/31

December 31, 2014 by David Payne in 201412

As there was nothing else going on at the time, on December 31, 1864, President Abraham Lincoln appointed Ainsworth Rand Spofford to be the sixth Librarian of Congress. Spofford served as de facto Register of Copyrights until the position of Register was established in 1897.

Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

The Many Shapes of December

December 30, 2014 by David Payne in 201412

DuetsBlog reports that December appears to have been an unusually active month for non-traditional product configuration trademark filings at the U.S. Patent and Trademark Office (USPTO). In what “may be a year end rush at the USPTO,” applicants have filed to register the trade dress of product configurations such as green egg-shaped barbecue smokers and grills, candy in the shape of ice chips, pistol shapes, and the lacing pattern of a pouch. Read the full article here.

Reposted from DuetsBlog.

What Santa Can Teach About Trademarks

December 29, 2014 by David Payne in 201412

What can Santa teach you about trademark protection? Not all that much, it turns out. But a post on DuetsBlog makes a good point about the importance, for brand owners, of making a list and checking it twice (like the big guy reputedly does). In this case, the list in question is “a list of your trademarks, your goods, and your services.” A trademark owner’s products and/or services can change over time, and as the article notes, “[i]f you don’t have registrations to cover everything (at least the important stuff!), then you should strongly consider updating your trademark registration portfolio.” Read the full article here.

By Jonathan G Meath (Jonathan G Meath) [CC BY-SA 2.5 (http://creativecommons.org/licenses/by-sa/2.5)], via Wikimedia Commons.

Reposted from DuetsBlog.

Apparently, Pharrell Is Not Happy

December 26, 2014 by David Payne in 201412

The Hollywood Reporter reports that Global Music Rights, a performance rights management organization, has threatened to file a $1 billion copyright infringement lawsuit against YouTube. Headed up by “music industry heavyweight” Irving Azoff, Global Music Rights manages the performance rights of some 20,000 songs, including works by artists such as Pharrell Williams, The Eagles, John Lennon, Smokey Robinson, Chris Cornell, and George and Ira Gershwin. Azoff alleges that YouTube lacks the performance rights to the songs managed by his organization, and is demanding that YouTube either license the songs or remove them from its site. Read the full article here.

By Eurockéennes de Belfort (NERD (5)) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from The Hollywood Reporter.