USPTO Finally Gets a Director

March 11, 2015 by David Payne in 201503

The New York Times reports that the U.S. Senate voted this week to confirm Michelle K. Lee as Director of the U.S. Patent and Trademark Office (USPTO). Prior to her confirmation, Lee served as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, and has been the acting director of the USPTO during the position’s vacancy for the past two years. In her new capacity, Lee is expected to oversee reforms at the agency, most specifically to address the significant backlog of unexamined patent applications, which currently number more than 600,000. Read the full article here. Reposted from The New York Times.

Today in Copyright History: 3/10

March 10, 2015 by David Payne in 201503

On March 10, 1974, the membership of the United States in the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms (the “Phonograms Convention”) took effect. Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

By David McClister.Sinatrasdead at en.wikipedia [Public domain], from Wikimedia Commons.

The APPLE WATCH Watch, Part Two

March 09, 2015 by David Payne in 201503

In the wake of today’s lavish presentation of the forthcoming Apple Watch, the burning question on everyone’s mind was undoubtedly, “What kind of U.S. trademark protection has Apple sought and/or secured for this Apple Watch thingamabob?” Well, six months ago, this blog featured a post about the just announced Apple Watch, and the legal strategy that enabled Apple to secure trademark rights to the product name six months in advance of the announcement, while effectively keeping the name a secret. This author predicted that Apple would file a U.S. trademark application for APPLE WATCH on or just before September 11, 2014, claiming priority to the earlier-filed APPLE WATCH application in Trinidad and Tobago. As predicted, the company filed for U.S. protection for the APPLE WATCH mark on September 9, 2014, the date of the product’s unveiling. The next day, however, Apple filed three additional U.S. applications for a design mark comprising the Apple logo next to the word WATCH. The three additional applications did not claim priority to the Trinidad and Tobago application, but rather claimed priority to an application in Jamaica that was stealthily filed on July 24, 2014, and was essentially unreported by the media.

In choosing to file the APPLE WATCH word mark in Trinidad and Tobago and the APPLE WATCH design mark in Jamaica, Apple was able to avoid putting all of its eggs in one IP office basket, and reduce the risk that the product name would be prematurely discovered—even if one country’s applications were found, the other country’s applications might remain hidden, since the finder could reasonably assume that the company would file all of the potential product marks in the same obscure IP office. Moreover, if one of the two marks was discovered, a search for that mark would not directly lead one to the other mark (e.g., the word APPLE does not appear in the design mark). When it comes to trademark protection for its future products, Apple’s strategy appears to be, file early and often. See the five U.S. applications here, here, here, here, and here; see the earlier post here; and see the product itself here.

U.S. Trademark Application Serial No. 86390853.

Today in Copyright History: 3/8

March 08, 2015 by David Payne in 201503

On March 8, 1954, the U.S. Supreme Court held in Mazer v. Stein that works of art embodied in useful articles (in this case, “statuettes of male and female dancing figures made of semivitreous china… used as bases for table lamps”) may be copyrighted. Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

By Related names:  Cass, Gilbert [Public domain], via Wikimedia Commons. — By Related names: Cass, Gilbert [Public domain], via Wikimedia Commons.

Federal Circuit Clarifies Use in Commerce

March 06, 2015 by David Payne in 201503

The U.S. Court of Appeals for the Federal Circuit issued a ruling this week in Couture v. Playdom, Inc., No. 2014-1480 (Fed. Cir. Mar. 2, 2015), affirming a Trademark Trial and Appeal Board (TTAB) decision to cancel U.S. Registration No. 3560701, owned by appellant David Couture. Couture filed a U.S. application in May 2008 for the mark PLAYDOM, for a variety of entertainment industry services, claiming use in commerce as of the application date. A registration for Couture’s PLAYDOM mark issued in January 2009. In February 2009, appellee Playdom filed a U.S. application for the same mark, for computer software and entertainment, computer, and social networking services. When the U.S. Patent and Trademark Office issued a refusal based on Couture’s prior registration, Playdom initiated a cancellation proceeding against Couture’s registration at the TTAB.

As grounds for cancellation, Playdom argued that although Couture claimed a first use date of May 2008, his use consisted solely of launching a website advertising services under the PLAYDOM mark—no services were actually rendered in commerce before March 2010. The TTAB agreed that use of a service mark in commerce requires the actual provision of the services listed in the application, not merely the advertising of the services, and granted the petition to cancel Couture’s PLAYDOM registration. Couture then appealed the TTAB ruling to the Federal Circuit. In affirming the TTAB’s decision, the Federal Circuit stated that, because “there is no evidence in the record showing that appellant rendered services to any customer before 2010… the cancellation of appellant’s registration was appropriate.” The takeaway from this case is that merely advertising a service is not enough—the service must actually be rendered under the mark in order to establish use of the mark in commerce. Read the Court’s opinion here.

By Tony Webster (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.

Hall & Oates & Haulin’ Oats

March 05, 2015 by David Payne in 201503

The Hollywood Reporter reports that Whole Oats Enterprises, a partnership owned by musicians Daryl Hall and John Oates, has sued Early Bird Foods & Co. for trademark infringement over the latter’s use of the HAULIN’ OATS trademark as a brand name for granola products. The suit, filed in the Eastern District of New York, alleges that in addition to the phonetic equivalence of HAULIN’ OATS to the duo’s colloquial name and common law trademark HALL & OATES, the two musicians also happen to own U.S. Registration No. 4345444 for the mark HAULIN’ OATS for “oatmeal” and “food delivery.” Whole Oats seeks monetary damages from Early Bird Foods, as well as an injunction to stop the defendant from continuing to use the HAULIN’ OATS mark. Read the full article here, and the Complaint here. Reposted from The Hollywood Reporter.

Today in Copyright History: 3/4

March 04, 2015 by David Payne in 201503

On March 4, 1891, President Benjamin Harrison signed the International Copyright Act of 1891, the first U.S. copyright law authorizing the establishment of copyright relations with foreign countries.

Eighteen years later, on March 4, 1909, President Theodore Roosevelt signed the landmark Copyright Act of 1909, the third general revision of the law. The 1909 Act extended the maximum term of protection to fifty-six years, broadened the subject matter of copyright protection, and secured copyright in published works from the date of first publication with proper notice. Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Library of Congress (http://loc.gov/pictures/resource/cph.3a53299/).

Today in Copyright History: 3/3

March 03, 2015 by David Payne in 201503

On March 3, 1831, the first general copyright law revision added musical compositions to protected works. The first term of protection increased to twenty-eight years with privilege of renewal for another fourteen years.

Thirty-four years later, on March 3, 1865, a new law extended copyright protection to photographs and photographic negatives. Noted photographer Mathew Brady took this photograph of Abraham Lincoln in 1860. Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Library of Congress (http://loc.gov/pictures/resource/cph.3a09102/).

Today in Copyright History: 3/2

March 02, 2015 by David Payne in 201503

On March 2, 1903, the U.S. Supreme Court upheld copyright in circus posters, finding in Bleistein v. Donaldson Lithographing Co. that commercial art is copyrightable. Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Today in Copyright History: 3/1

March 01, 2015 by David Payne in 201503

On March 1, 1989, the United States adhered to the 1971 Paris Act of the Berne Convention for the Protection of Literary and Artistic Works, the oldest and most extensive multilateral international copyright treaty. Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

World Intellectual Property Organization.

It’s Fair Use Week

February 27, 2015 by David Payne in 201502

As is widely known and cared about throughout the tiny, sheltered world of copyright enthusiasts, today is the final day of Fair Use Week, “an annual celebration held the last week of February” that “celebrates the important doctrines of fair use in the United States and fair dealing in Canada and other jurisdictions.” The doctrines of fair use and fair dealing are, in the words of the official Fair Use Week website, “essential limitations and exceptions to copyright, allowing the use of copyrighted materials without permission from the copyright holder under certain circumstances.” In the U.S., fair use is codified in Section 107 of the Copyright Act, which provides that “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.” Section 107 further provides that, “[i]n 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 four factors are analyzed by the courts on a case-by-case basis, and there is no bright-line rule as to whether a particular use of copyrighted material is a fair use. However, to help prospective fair users navigate the murky legal waters, the Fair Use Week website has published a handy infographic to explain the “Fair Use Fundamentals.” See the infographic here, and the Fair Use Week website here. Reposted from Fair Use Week.

Fair Use Week, under Creative Commons license.

Scarlett Johansson May Get Singled Out

February 26, 2015 by David Payne in 201502

Rolling Stone reports that actress and singer Scarlett Johansson’s new band, The Singles, has received a cease and desist letter from an old band, The Singles, unsurprisingly alleging trademark infringement. According to Vincent Frederick, frontman of the old Singles, his group has been using the Singles name for sixteen years, whereas Johansson’s group debuted just this month. Unmentioned in the article is the fact that Johansson’s band owns a pending U.S. trademark application, filed in 2012, for the mark THE SINGLES. Frederick’s group can likely claim common law trademark rights in its name, but the group does not appear to have taken any steps to secure formal trademark registration of its name. If the earlier group had registered THE SINGLES as a trademark sixteen years ago, the registration would now be incontestable, and would likely have prevented the newer group’s application from even passing the substantive examination stage. An incontestable registration would also be a considerably more formidable weapon against Johansson’s band, or any other junior user of THE SINGLES as a band name.

This story serves as a cautionary example of why bands and other performers should always formally register their stage names as trademarks at the earliest opportunity, as well as why performers should always conduct a full trademark search prior to adopting a stage name. Registration also confers exclusive rights to the mark throughout the United States, which makes it possible for a band that, for example, only performs in California and Nevada to prevent the use of a confusingly similar name by another band that only performs in New York and New Jersey. Many, if not most musicians understand the importance of copyright law to a successful musical career, but far fewer appear to fully appreciate the critical role that trademark law can play in protecting their professional identities, reputations, and livelihoods. Read the full article here, and listen to Johansson's new single here. Reposted from Rolling Stone.

Bob Marley Heirs Get Up, Stand Up For Their Rights

February 25, 2015 by David Payne in 201502

World Intellectual Property Review reports that “[t]he heirs to reggae singer Bob Marley’s estate have won an appeal in a long-fought intellectual property battle, meaning they can now stop a t-shirt maker from using the late star’s likeness without their permission.” The U.S. Court of Appeals for the Ninth Circuit upheld a district court ruling against clothing company A.V.E.L.A., holding that the company violated the Lanham Act by and Nevada state law because, in the Court’s words, “they (a) used Marley’s image (b) on their t-shirts and other merchandise, (c) in a manner likely to cause confusion as to plaintiffs’ sponsorship or approval of these t-shirts and other merchandise.” The Court awarded plaintiff Fifty-Six Hope Road Music, which is owned by Marley’s heirs and manages his rights, more than $2.5 million in damages, lost profits, and attorneys’ fees. Marley’s heirs filed the suit in 2008, but their appellate win shows that they were not waiting in vain, and they are no doubt jamming to a redemption song right about now. Satisfy your soul by reading the full article here, and the Court’s opinion here. Reposted from World Intellectual Property Review.

By Eddie Mallin [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Today in Copyright History: 2/24

February 24, 2015 by David Payne in 201502

On February 24, 1908, the U.S. Supreme Court held in White-Smith Music Publishing Co. v. Apollo Co. that perforated piano rolls are not copies of works. Congress responded by introducing a nonexclusive right for copyright owners to make and distribute mechanical reproductions of their nondramatic musical works. Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

By Rama (Own work) [CC BY-SA 2.0 fr (http://creativecommons.org/licenses/by-sa/2.0/fr/deed.en)], via Wikimedia Commons.

Today in Copyright History: 2/23

February 23, 2015 by David Payne in 201502

The first musical work, Maid of My Love by David L. Richardson and I. T. Norton, was registered in the Eastern District of Pennsylvania on February 23, 1831. Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

The Scourge of Bit Rot

February 20, 2015 by David Payne in 201502

The Guardian has an interesting piece about Google vice president and Internet Hall of Fame inductee Vint Cerf and his advocacy for the preservation of our digital history. Speaking at the annual meeting of the American Association for the Advancement of Science, Cerf warned about the prospect of a “forgotten generation, or even a forgotten century” due to “bit rot,” the loss of access to digital data from the degradation or destruction of physical media, the obsolescence and consequent disappearance of compatible software and hardware needed to access the data, and the legal barriers that stand in the way of efforts to preserve and archive important documents and creative works. One of the most significant legal barriers is current copyright law, which often serves to prevent would-be archivists from making archival copies of protected works. Such works may have historical or cultural significance, yet are being allowed to degrade or become inaccessible through neglect by the owners of the works, and being prevented by copyright law from archival preservation by others. Moreover, the vast number of files and documents in the personal digital histories of individuals are frequently stored on degradable or obsolete media, and have a high risk of falling into an “information black hole.” As Cerf states, “[w]hen you think about the quantity of documentation from our daily lives that is captured in digital form, like our interactions by email, people’s tweets, and all of the world wide web, it’s clear that we stand to lose an awful lot of our history” to bit rot. Cerf’s proposed solution has two parts. First, we need to develop a form of “digital vellum” that will allow people to preserve and access obsolete files, no matter how old. Second, we need to incorporate the rights of preservation “into our thinking about things like copyright and patents and licensing.” Read the full article here. Reposted from The Guardian.

By Joi Ito (Flickr) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Today in Copyright History: 2/19

February 19, 2015 by David Payne in 201502

On February 19, 1897, a government appropriations bill established the Copyright Office as a separate department within the Library of Congress and created the position of Register of Copyrights. Before the Library’s Jefferson Building opened the same year, an unceasing flow of deposits piled up in cramped Library quarters.

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

And the Lawsuit Goes to . . .

February 18, 2015 by David Payne in 201502

For those who seek to integrate legal issues into every single facet of their lives and become one with the law, the Trademark & Copyright Law Blog has selflessly posted “An Oscar-Time Guide to ‘Best Picture’ Intellectual Property Litigation.” This indispensable resource answers the call of our nation’s twin obsessions, the Academy Awards and preliminary injunctions, and should be considered required reading for anyone who has ever seen an Oscar-winning film. Read the full article here, and you’ll never look at movies the same way.

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

Reposted from the Trademark & Copyright Law Blog.

Apple is World’s Most Valuable Brand

February 17, 2015 by David Payne in 201502

World Trademark Review reports that brand valuation firm Brand Finance has released its annual Global 500 report for 2015. The report ranks the 500 most valuable global brands, according to the firm’s assessments, and also the world’s 12 most powerful brands. Apple maintains its perch at the top of the list, with an estimated brand valuation of $128.3 billion, over 50% more than the next most valuable brand on the list, Samsung, which earned a mere $81.7 billion brand valuation. Rounding out the top ten are Google, Microsoft, Verizon, AT&T, Amazon, GE, China Mobile, and Walmart. The most powerful brand in the world is Lego, beating out PWC, Red Bull, Unilever, McKinsey & Co., Burberry, Rolex, L’Oréal, Coca-Cola, Ferrari, Nike, and Disney for the top spot—as the report explains, “Lego’s appeal spans generations; as well as the creative freedom it gives children, the brand appeals to the nostalgia of adults.” The competition is fierce, so take heed, brand owners—if you want your brand or business name to conquer the world, you’d better make sure that it’s properly protected as a trademark. Read the full article here, and the Global 500 report here.

By Marlith (Own work) [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC BY-SA 4.0-3.0-2.5-2.0-1.0 (http://creativecommons.org/licenses/by-sa/4.0-3.0-2.5-2.0-1.0)], via Wikimedia Commons.

Reposted from World Trademark Review.

Today in Copyright History: 2/16

February 16, 2015 by David Payne in 201502

Music from the Mother Church, registered by the Christian Science Publishing Society, is among several sound recording registrations entered on February 16, 1972, the day after federal copyright protection was extended to new sound recordings.

By ProtoplasmaKid (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.