Loading...

Follow Scarinci Hollenbeck | Informative Intellectual .. on Feedspot

Continue with Google
Continue with Facebook
or

Valid
Supreme Court of United States Rules Copyright Owners Must Register Copyright Prior to Suit

You may have heard, the U.S. Supreme Court ruled that a copyright owner can’t file an infringement lawsuit until the U.S. Copyright Office has granted a copyright registration for the subject work of concern. Once it has done so, a copyright owner may recover for copyright infringement that occurred both before and after registration.

Circuit Split Over Copyright Act Interpretation

The Copyright Act requires a copyright holder to register the work with the U.S. Copyright Office prior to bringing suit for copyright infringement. Specifically, Section 411(a) of the Copyright Act provides (with qualifications) that “no civil action for infringement of [a] copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”

Prior to the Supreme Court’s recent decision, the federal courts of appeals were divided regarding whether “registration . . . has been made” when a copyright owner submits the application, materials, and fee required for registration, or only when the Copyright Office grants registration.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. __ (2019), Fourth Estate Public Benefit Corporation (Fourth Estate) argued that a copyright “registration” is made as soon as the “complete application” is delivered to the Copyright Office, citing Ninth Circuit precedent in support. The news organization licensed works to respondent Wall-Street.com, LLC (Wall-Street), a news website. Fourth Estate sued Wall-Street and its owner for copyright infringement of news articles that Wall-Street failed to remove from its website after canceling the parties’ license agreement.

Fourth Estate had filed applications to register the articles with the Copyright Office, but the Register of Copyrights had not yet acted on those applications. The District Court dismissed the complaint, and the Eleventh Circuit Court of Appeals affirmed. It held that “registration . . . has [not] been made” under §411(a) until the Copyright Office registers a copyright.

Supreme Court’s Decision in Fourth Estate

The U.S. Supreme Court affirmed. “We hold, in accord with the United States Court of Appeals for the Eleventh Circuit, that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright,” Justice Ruth Bader Ginsburg wrote on behalf of the unanimous Court. “Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration.”

In reaching its decision, the Court cited the plain language of the Copyright Act. As Justice Ginsburg explained:

If application alone sufficed to “ma[ke]” registration, §411(a)’s second sentence—allowing suit upon refusal of registration—would be superfluous. What utility would that allowance have if a copyright claimant could sue for infringement immediately after applying for registration without awaiting the Register’s decision on her application? Proponents of the application approach urge that §411(a)’s second sentence serves merely to require a copy- right claimant to serve “notice [of an infringement suit] . . . on the Register.” This reading, however, requires the implausible assumption that Congress gave “registration” different meanings in consecutive, related sentences within a single statutory provision.

The Court noted that the registration approach reading of §411(a) is supported by other provisions of the Copyright Act. According to the Court, §410 confirms that application is discrete from, and precedes, registration, while §408(f)’s preregistration option would have little utility if a completed application sufficed to make registration.

The Court went on to reject Fourth Estate’s alternative interpretation, including the argument that, because “registration is not a condition of copyright protection,” §411(a) should not bar a copyright claimant from enforcing that protection in court once the owner has applied for registration. Justice Ginsburg wrote:

[T]he Copyright Act safeguards copyright owners, irrespective of registration, by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. If infringement occurs before a copyright owner applies for registration, that owner may eventually recover damages for the past infringement, as well as the infringer’s profits. §504. She must simply apply for registration and receive the Copyright Office’s decision on her application before instituting suit.

The Supreme Court also noted that there are limited exceptions to the registration requirement. For example, a copyright owner who is preparing to distribute a work of a type vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply to the Copyright Office for preregistration. A copyright owner may also sue for infringement of a live broadcast before “registration . . . has been made.”

Finally, while the Court acknowledged that registration processing times have increased from one to two weeks in 1956 to many months today, it concluded that such delays do not allow the Court to revise §411(a)’s congressionally composed text.

Key Takeaway for Copyright Owners

In light of the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, copyright owners must be expeditious in pursuing registration with the Copyright Office. When time is of the essence due to ongoing or threatening infringement, copyright owners may want to explore the Copyright Office’s “Special Handling” service, which can expedite the processing of a copyright application in the event of pending or prospective litigation. The shorter time frame of approximately five working days is certainly faster but does come at a cost of $800. To determine your best course of action, we always encourage consultation with an experienced intellectual property attorney.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, William R. Samuels, at 201-806-3364.

The post Copyright Owners Must Register Copyright Prior to Suit appeared first on Scarinci Hollenbeck.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
Producing a Play Without Obtaining Permission From Copyright Holders Can Result in Significant Legal Penalties…

Producing a play without obtaining permission from copyright holders can result in significant legal penalties. In a recent copyright suit, Music Theatre International (MTI), which licenses musicals, was awarded $450,000 plus attorney’s fees by the United States District Court for the Eastern District of Virginia. According to the copyright infringement suit, Theaterpalooza Community Theater Productions, Inc. failed to obtain the proper licenses for several of its productions.

Photo courtesy of Rob Laughter (Unsplash.com)
Copyrights and the Theater Industry

Copyright protection is available for “original works of authorship” fixed in any tangible medium of expression. With regard to the theater industry, the subject matter of copyright includes musical works, including any accompanying words; dramatic works, including any accompanying music; and pantomimes and choreographic works.

Under the 1976 Copyright Act, the copyright owner has the exclusive right to reproduce, adapt, distribute, publicly perform, and publicly display the work. Accordingly, before performing a play, musical or other theatrical work, it is often necessary to obtain legal permission, typically in the form of paying royalties to obtain a license. The requirement applies whether you are a Broadway production, community theater, or local college.

Putting on a copyrighted play without permission can result in significant legal penalties. Federal copyright law establishes statutory fines for each act of copyright infringement, ranging from a minimum of $500 for “innocent” infringements to a maximum of $100,000 for “willful” infringements.

Copyright Infringement Suit Against Community Theater

A Virginia youth theatre is on the hook for thousands of dollars in copyright damages after allegedly presenting unlicensed and unauthorized performances of at least 16 well-known musicals, including Roald Dahl’s Willy Wonka, Matilda, Seussical, Little Shop of Horrors, and Honk! MTI, a global theatrical licensing agency, filed suit after receiving no response to numerous requests that the community theater cease the unlicensed performances.

According to a recent court order, Theaterpalooza offers musical theatre classes and camps for children. In addition to charging tuition fees up to $600 per child, Theaterpalooza also charges admission to its final performances, typically $15 for adults and $12 for children. While the theater’s performances often feature well-known plays, it did so without obtaining authorization from the copyright holders.

The court order also concludes that Theaterpalooza was aware of MTI’s copyrights on the musicals as early as January 12, 2015 and continued to perform and advertise unlicensed shows for several years. Accordingly, the court found that Theaterpalooza “willfully infringed” on MTI’s copyrighted works. The order states:

As early as January 12, 2015, Defendant (Theaterpalooza) was aware of Plaintiffs’ (MTI) copyrights and that it was infringing on those rights. Defendant disregarded those rights and continued to perform and advertise copyrighted material. Thus, the undersigned Magistrate Judge finds that Defendant willfully infringed on Plaintiffs’ protected works.

Theaterpalooza has been ordered to pay $489,096.22, consisting of $450,000 of statutory damages, $37,563.50 in attorney’s fees, and $1,532.72 in costs. MTI announced that it plans to donate some of the damages to Jumpstart Theatre, a program created in part by MTI that brings theater programs to underserved communities.

Key Takeaway

A thorough understanding of copyright law is essential for content creators, such as musicians and playwrights, as well as those that later seek to produce or perform their works. While many older plays and musicals do not require licenses, determining whether material has entered the public domain can be complex. Given the potential penalties for copyright infringement, it is wise to consult with an intellectual property attorney familiar with the theater industry.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post Local Theater Faces Stiff Penalties for Copyright Infringement appeared first on Scarinci Hollenbeck.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
Model Gigi Hadid Faces Copyright Infringement Suit for Posting Picture of Herself on Instagram Because Someone Else Owns the Copyright to the Image

Model Gigi Hadid is facing a copyright infringement suit for posting a picture of herself on her Instagram account. The problem — someone else (a paparazzi photographer) owns the copyright to the image.

Allegations of Copyright Infringement

Reposting photos frequently occurs on social media, and it rarely raises an eyebrow. However, when public figures do so, the images can be valuable, and photographers want their share of any revenue generated. Approximately 1.6 million people commented on or liked the photo in the few days after Hadid posted it, according to the suit.

In its complaint against Hadid, Xclusive-Lee, Inc. alleges that Hadid “copied and posted [the] copyrighted photograph to Hadid’s Instagram account without license or permission from Xclusive.” The photo agency’s suit, which was filed in a New York federal court, seeks monetary damages, as well as a court order directing Hadid to immediately and permanently refrain from further infringing its rights by “copying and republishing the copyrighted photograph without consent or otherwise infringing [its] copyright or other rights in any manner.”

In support of its New York copyright infringement suit, Xclusive maintains that Hadid “had first-hand knowledge that copying and posting photographs, of herself … to her Instagram or other social media accounts that she did not properly license or otherwise receive permission from the copyright holder constituted copyright infringement.” In 2017, the model posted an image taken by photographer Peter Cepeda, who later filed suit because she posted in without obtaining his permission.

According to the complaint, “the facts alleged in Cepeda’s [case] are nearly identical to the facts alleged in the present case, including the allegation Hadid copied and posted [the] plaintiff Cepeda’s copyrighted photograph (of Hadid on a public street in New York City) to Hadid’s Instagram and Twitter accounts without license or permission from Cepeda.” The 2017 copyright suit ended in an out-of-court settlement.

Xclusive further notes that Hadid’s Instagram contains additional examples of allegedly uncredited photographs. “Most if not all of these photographs were posted by Hadid without license or permission from the copyright holder,” the suit alleges.

Celebrities’ Right of Publicity

Publicity rights have been protected since the advent of the Hollywood celebrity in the second half of the 20th century. The right of publicity typically refers people’s legal right to control the commercial value of their image, name and likeness. The use of any of those three things without the permission of the individual first would be a violation of his or her publicity rights.

For instance, under N.Y. Civ. Rights Law § 50. Right of Privacy:

A person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name,  portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.

New York law, N.Y. Civ. Rights Law § 51. Action for Injunction and For Damages further provides:

Any person whose name, portrait, picture or voice is used within  this  state  for  advertising purposes  or for the purposes of trade without the written consent first obtained as above provided may  maintain  an  equitable  action  in  the supreme  court  of this state against the person, firm or corporation so using his name, portrait, picture or voice, to prevent and restrain  the use  thereof.

Rights of publicity have become more complex with the proliferation of social media. Hadid responded to the suit against her via social media, calling it absurd. “Yesterday I heard from my management that I am being ‘legally pursued’ for my last (now deleted) Instagram post,” Hadid posted to Instagram. “I posed/smiled for the photo because I understand this is part of my job…but these people [paparazzi] make money off us every day. LEGALLY stalking us day in and day out — for nothing special.” 

While celebrities can argue that paparazzi photos only have value because of their status as public figures, statutes and case law surrounding publicity rights generally make an exception for the use of a name, voice, photograph, or likeness in connection with matters that are newsworthy or otherwise in the public interest. In New York, courts have held that “newsworthiness” is to be broadly construed. Moreover, as described by the Court of Appeals of New York in Messenger ex rel Messenger v. Gruner & Jahr Printing and Pub., 727 N.E.2d 549 (NY 2000), “newsworthiness includes not only descriptions of actual events, but also articles concerning political happenings, social trends or any subject of public interest.” Accordingly, asserting the right to publicity as a defense to a copyright infringement suit can be an uphill battle.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Ron Bienstock, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post Suit Against Model Gigi Hadid Pits Right of Publicity Against Copyright Protection appeared first on Scarinci Hollenbeck.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
The U.S. Patent and Trademark Office Is Working to Clarify Patent Subject Matter Eligibility Guidance

The U.S. Patent and Trademark Office (USPTO) is working to clarify when inventions are eligible for patent protection. Early last month, the agency published revised guidance for subject matter eligibility under 35 U.S.C. § 101.

Photo courtesy of STIL (Unsplash.com)

“These guidance documents aim to improve the clarity, consistency, and predictability of actions across the USPTO,” USPTO Director Andrei Iancu stated. “The USPTO will provide training to examiners and administrative patent judges on both documents to ensure that guidance is being properly administered.”

U.S. Supreme Court’s Alice/Mayo Test

The first step of the USPTO’s eligibility analysis entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. The second step involves determining whether the claimed invention also qualifies as patent-eligible subject matter. The three judicial exceptions that the courts have found to be outside of, or exceptions to, the four statutory categories of invention are abstract ideas, laws of nature and natural phenomena (including products of nature). 

In accordance with the U.S. Supreme Court’s decisions in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. _, 134 S. Ct. 2347 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66  (2012), a patent claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. Stated another way, the first part of the Alice/Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception).  If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. 

2019 Revised Patent Subject Matter Eligibility Guidance

In its Revised Patent Subject Matter Eligibility Guidance, the USPTO notes that, in the wake of Alice, courts have been comparing patent claims before them to those previously determined to be directed to abstract ideas. “While that approach was effective soon after Alice was decided, it has since become impractical,” the guidance states. “The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing. In addition, similar subject matter has been described both as abstract and not abstract in different cases. The growing body of precedent has become increasingly more difficult for examiners to apply in a predictable manner, and concerns have been raised that different examiners within and between technology centers may reach inconsistent results.”

To provide greater clarity, the guidance makes two significant changes to how patent examiners apply the first step of the U.S. Supreme Court’s Alice/Mayo test, which determines whether a claim is “directed to” a judicial exception. First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.

As detailed by the USPTO, mathematical concepts include mathematical relationships, formulas, equations, or calculations. Methods of organizing human activity include fundamental economic principles or practices, commercial or legal interactions, or managing personal behavior or relationships or interactions between people. Mental processes include concepts performed in the human mind, including an observation, evaluation, judgment, or opinion. Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas, except in rare circumstances that require approval by the Technology Center Director.

The Revised Patent Subject Matter Eligibility Guidance goes on to establish a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application.

According to the guidance:

A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.

If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required. To illustrate the analysis, the USPTO provides the following example:

For example, when evaluating a claim reciting an abstract idea such as a mathematical equation and a series of data gathering steps that collect a necessary input for the equation, an examiner might consider the data gathering steps to be insignificant extra-solution activity in revised Step 2A, and therefore find that the judicial exception is not integrated into a practical application. However, when the examiner reconsiders the data gathering steps in Step 2B, the examiner could determine that the combination of steps gather data in an unconventional way and therefore include an “inventive concept,” rendering the claim eligible at Step 2B.

What’s Next for Patent Subject Matter Eligibility?

The USPTO is seeking public comment on all the issues addressed by the guidance. Impacted entities are encouraged to submit written comments to Eligibility2019@uspto.gov(link sends e-mail) on or before March 8, 2019. 

If finalized in its current form, the Revised Patent Subject Matter Eligibility Guidance provides useful insight into how patent examiners will analyze claims under the Mayo/Alice test. The new framework also strongly favors eligibility, which is good news for entities that are seeking patent protection.

While the USPTO guidance is welcome news, this area of patent law is expected to continue to develop. We encourage our readers to stay tuned for updates and contact one of Scarinci Hollenbeck’s experienced technology law attorneys with any questions you may have.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post USPTO Issues Revised Patent Subject Matter Eligibility Guidance appeared first on Scarinci Hollenbeck.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
SCOTUS Recently Added Iancu v. Brunetti, a Potential Blockbuster IP Case to its Docket, Which Involves the Federal Ban on Registering “Scandalous” Trademarks…

The U.S. Supreme Court continues to add intellectual property cases to its docket. The latest potential blockbuster is Iancu v. Brunetti, which involves the federal ban on registering  “scandalous” and “immoral” trademarks.

Facts of Iancu v. Brunetti

The dispute arises from the USPTO’s refusal of Erik Brunetti’s application to register the mark “FUCT” for his clothing line. A Trademark Examining Attorney relied on Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), which provides in pertinent part that a trademark shall be refused registration if it “[c]onsists of or comprises immoral…or scandalous matter.” A mark is considered scandalous or immoral if a “substantial composite of the general public” would find the mark “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.”  Specifically the examiner found that “FUCT” is the past tense of “F-CK”, and “is scandalous because it is discouraging and… total[ly] vulgar.”

The Trademark Trial and Appeal Board affirmed the denial, agreeing that “a substantial composite of the general public would find this designation vulgar.” It also concluded that “the Trademark Trial and Appeal Board is not the appropriate forum for re-evaluating the impacts of any evolving First Amendment jurisprudence within Article III courts upon determinations under Section 2(a) of the Lanham Act.”

On appeal, the Federal Circuit asked the parties to submit briefs explaining how the constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in Matal v. Tam. In that case, the Court struck down the federal ban on registering disparaging trademarks, holding that it violated the First Amendment to the U.S. Constitution. “We now hold that this provision violates the Free Speech Clause of the First Amendment,” Justice Samuel Alito wrote. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

While the USPTO argued that the ban on scandalous marks is distinct because it is not based on the speaker’s viewpoint, the Federal Circuit ultimately concluded that it also violated the First Amendment. “[W]e conclude the provision impermissibly discriminates based on content in violation of the First Amendment,” the Federal Circuit’s opinion states.

Notably, the Federal Circuit did agree that the “trademark at issue [‘FUCT’] is vulgar.” Nonetheless, it concluded that the “government has offered no substantial government interest for policing offensive speech” in the context of its trademark registration program. “There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace,” the court explained. “The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”

Arguments Raised in Iancu v. Brunetti

On January 4, the U.S. Supreme Court agreed to review the Federal Circuit’s decision. The justices will specifically consider the following question: “Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

The USPTO argues that the Federal Circuit erred in holding that the scandalous-marks provision is unconstitutional. “The scandalous-marks provision does not prohibit any speech, proscribe any conduct, or restrict the use of any trademark. Nor does it restrict a mark owner’s common-law trademark protections,” the government argued in its petition for certiorari. “Rather, it simply directs the USPTO to refuse, on a viewpoint-neutral basis, to provide the benefits of federal registration to scandalous marks.”

In response, Brunetti argues that determining which trademarks are scandalous is not viewpoint neutral. “In short, the Scandalous Clause is not a content-neutral rule that rejects all profanity, excretory and sexual content,” his brief argues. “Instead, the government is selectively approving or refusing profanity, excretory and sexual content based upon the level of perceived offensiveness.” In support, Brunetti notes that the government is often inconsistent in determining what marks qualify as scandalous. “Raising babies is sweet, making babies is disgusting. Kissing is fine, sex is dirty. Feminism is good, misogyny is bad. The word PENIS is allowed, an outline of a penis is not,” argues Brunetti.

The Court has not yet scheduled oral arguments in the case. A decision is expected by the end of the term in June. The attorneys of the Scarinci Hollenbeck Intellectual Property Group will continue to track its process and provide updates as they become available.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post Supreme Court to Determine If Scandalous Trademark Ban Is Unconstitutional appeared first on Scarinci Hollenbeck.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
The Girl Scouts of America Recently Filed a Trademark Infringement Lawsuit Against the Boy Scouts of America

As the Boy Scouts of America begins to allow girls into its ranks, it’s coexistence with the Girl Scouts of the United States of America is on shaky ground. In a trademark infringement lawsuit filed in New York district court, the Girl Scouts of the United States of America (Girls Scouts or GSUSA) allege that Boys Scouts of America (Boy Scouts or BSA) is causing significant consumer confusion with the way it is touting its new programs.

Photo courtesy of Emma Tin (Unsplash.com)

“BSA is now using its trademarks in a manner that is both new and uniquely damaging to GSUSA,” the complaint in Girl Scouts of the United States of America v. Boy Scouts of America maintains. “Such misconduct will … marginalize the Girl Scouts movement by causing the public to believe that GSUSA’s extraordinarily successful services are not true or official ‘Scouting’ programs.”

Boy Scouts New “Scouts” Program

The Girl Scouts and Boy Scouts both have congressional charters under which they are granted the exclusive rights to emblems, badges, marks and words associated with “Girl Scouts” and “Boy Scouts,” respectively. While each organization offers youth development services and programs with the word “Scout,” “Scouts” and “Scouting”, the terms have traditionally either been preceded by words like “Boy” or “Girl” that have highlighted the gender-specific nature of each organization’s programs, or appeared in a context making clear that the programs at issue were developed by one organization or the other.

Last year, the Boy Scouts announced that it would begin admitting girls. In May, the organization further announced that it was changing the name of the organization to “Scouts BSA” and that its members would be called “Scouts.” In connection with these changes, the Boy Scouts launched the Scout Me In campaign, which the Boy Scouts says celebrates its “expansion to serve families and welcome girls and boys into Scouting in communities across the country.”

Girls Scouts Allegations of Trademark Infringement

The Girl Scouts’ trademark infringement lawsuit maintains that the Boy Scouts’ new programs for girls and associated marketing campaigns are infringing their right to use the “Scout” and “Scouting” marks in marketing to girls. According to the suit: “With respect to the term SCOUTS and SCOUTING in particular, by virtue of the long history of use of the GIRL SCOUTS trademark by GSUSA, the consuming public has come to recognize SCOUTS and SCOUTING as trademarks that, like the other GS Marks, belong exclusively to GSUSA when used in connection with leadership programs and related services for girls. The Girl Scouts further maintain:

BSA does not have the right under either federal or New York law to use terms like SCOUTS or SCOUTING by themselves in connection with services offered to girls, or to rebrand itself as “the Scouts” and thereby falsely communicate to the American public that it is now the organization exclusively associated with leadership development services offered under that mark to girls. Such misconduct will not only cause confusion among the public, damage the goodwill of GSUSA’s GIRL SCOUTS trademarks, and erode its core brand identity, but it will also marginalize the GIRL SCOUTS Movement by causing the public to believe that GSUSA’s extraordinarily successful services are not true or official “Scouting” programs, but niche services with limited utility and appeal.

The Girl Scouts’ complaint also argues that the Boy Scouts’ trademark misuse is leading to widespread consumer confusion. “Since BSA’s announcement that it would admit girls to its core programs, GSUSA’s fears about the damage that would be caused to its trademarks and the mission those trademarks symbolize have been realized,” the complaint states. “Throughout the country, families, schools and communities have been told that GSUSA and BSA have merged, or even that GSUSA no longer exists. Parents interested in signing up for Girl Scouts programs have instead mistakenly signed up for the new girls’ programs offered by BSA.”

This is not the first lawsuit between the Boy Scouts and the Girl Scouts. In 1915, when the Girl Guides changed their name to “Girl Scouts”, the Boy Scouts sued them, alleging that they has “sissified” the word “Scout”.

The pending Girl Scouts’ suit seeks a court order blocking the Boy Scouts from using the term “Scout,” “Scouts,” “Scouting” or “Scouts BSA” without an “inherently distinctive or distinguishing term appearing immediately before it.” We will report on further developments.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post Girl Scouts and Boy Scouts Locked in Trademark Battle appeared first on Scarinci Hollenbeck.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., SCOTUS Must Decide Whether Private Sales Trigger On-Sale Bar

In early December, the U.S. Supreme Court heard oral arguments in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., one of the most closely watched intellectual property cases of the term. The key issue before the Court is whether private sales trigger the on-sale bar, as amended under the Leahy-Smith America Invents Act (AIA).

Photo courtesy of Free Stocks (Unsplash.com)

Pursuant to the on-sale bar, an invention is ineligible for patent protection if it has been offered for sale for over one year prior to the patent filing. Historically, the on-sale bar applied to any sale of an invention, even if the sale was conducted privately.

Court Must Interpret AIA Amendment to On-Sale Bar

As discussed more fully in a prior article, the AIA converted the U.S. patent system from a first to invent system to a first to file system. To facilitate these changes, Congress amended the statutory definition of prior art, including the on-sale bar. 35 U.S.C. 102(b) now states:

A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

The question before the Court is whether the above language, specifically the phrase “otherwise available to the public,” changes the types of transactions covered by the on-sale bar. The U.S. Patent and Trademark Office (USPTO) asserts that the phrase limits the scope of the on-sale bar to only cover publicly available sales activity. However, the Federal Circuit disagreed. It held that the public disclosure of the existence of a commercial sale invalidates a patent, even if the claimed invention itself remains secret and is not available to the public.

In reaching its decision, the Federal Circuit noted that, prior to the AIA, it consistently held that an inventor’s secret sale of an invention to another party could constitute a “commercial offer for sale.” It went on to conclude that there was insufficient evidence to reverse that precedent, finding that Congress’s intent to change the law was not sufficiently clear.

Oral Arguments in Helsinn Healthcare v. Teva Pharmaceuticals

Petitioner Helsinn Healthcare S.A. (Helsinn) maintains that the AIA’s version of the on-sale bar limits its scope to only cover publicly available sales activity. Meanwhile, Teva Pharmaceuticals USA, Inc. (Teva) contends that Helsinn triggered the on-sale bar when it entered into a confidential licensing agreement.

During oral arguments, Helsinn’s counsel argued that there is a distinction between “sale” and “on sale,” maintaining that the language used in the AIA requires availability to the public. “The on-sale bar, like the other bars in the definition, reaches only a disclosure that makes the claimed invention available to the public,” Kannon Shanmugam told the court. “That interpretation is consistent with the plain text of the definition and its legislative history.”

Several justices, most notably Justice Brett Kavanaugh, questioned the distinction. “Isn’t it always the case that if you offer it to even one person or to a small group of people, it’s on sale?” he asked.

Justice Kavanaugh was also skeptical of Helsinn’s reliance on the AIA’s legislative history to suggest that Congress intended to bring private agreements under the purview of the on-sale bar. “If that was a clarification, it was a terrible clarification because there were a lot of efforts, as you well know, to actually change the ‘on sale’ language, and those all failed,” he stated.

Justices Samuel Alito and Elena Kagan seemed to buy the argument that the AIA separated public sales from private sales with respect to the on-sale bar. While questioning Teva Pharmaceuticals’ attorney, Justice Alito said:

Well, I think the most serious argument you have to deal with is the meaning — the plain meaning — the fairly plain meaning of the new statutory language. So you say ‘on sale’ means on sale publicly or on sale privately, right? . . . suppose that the statute had been amended to read just the way it does, except . . .with one exception. So it says the . . . claimed invention was patented, described in a printed publication, or in public use, on sale publicly or on sale privately, or otherwise available to the public. That would be nonsense, wouldn’t it?

SCOTUS to Rule By June 2019

Based on oral arguments, it is possible that the justices could overturn the Federal Circuit’s decision. Of course, we won’t know for sure until the Court releases its opinion sometime before the term ends in June 2019. Either way, the Supreme Court’s decision will hopefully create a clear test for whether a patent transaction falls under the on-sale bar.

If you have any questions, please contact us

If you have any questions or if you would like to discuss how the Court’s decision may impact your company’s trademark rights, contact me, Jason LaBerteaux, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post Supreme Court to Decide Whether Private Sales Trigger On-Sale Bar appeared first on Scarinci Hollenbeck.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
A Recent Federal Court Decision Considers the Amount of Creativity Required for Copyright Protection

A recent federal court decision involving the alleged copyright infringement of teeth photographs is generating attention, both for its excessive puns and its interpretation of the amount of creativity required for copyright protection. “Meeting the standard for creativity is not like pulling teeth,” Judge Mark E. Walker of the Northern District of Florida wrote in Pohl v. MH SUB I LLC (d/b/a Officite). However, he still found that a Boca Raton dentist failed to demonstrate that before-and-after photos of his cosmetic dentistry met the bar.

Photo courtesy of Lesly Juarez (Unsplash.com) Facts of the Case

Dr. Mitchell A. Pohl, a practicing dentist in Boca Raton, Florida, began taking before-and-after photographs of his cosmetic dental work for his practice’s website. The pair of photographs at issue displays his patient Belinda’s teeth — one before the dental work and the other after the dental work. Each photo consists of her teeth, her lips, and a small area around her mouth.

In November 2005, Pohl registered the photos with the U.S. Copyright Office. In April 2016, Pohl performed a reverse-image search on Google of the before-and-after photos of patient Belinda. In doing so, Pohl claims to have discovered seven websites displaying the copyrighted images. All seven websites identified Defendant Officite as the designer or developer. Pohl subsequently filed suit for copyright infringement.

Creativity Required for Copyright Protection

In Feist Publications Inc. v. Rural Telephone Service Co., the U.S. Supreme Court addressed the minimum constitutional standards for copyright protection. In a unanimous decision, the Court held that a telephone directory containing an alphabetical list of subscribers, along with their corresponding towns and telephone numbers, failed to meet the constitutional standard of originality required for copyright protection. In reaching its decision, the Court clarified the degree of originality required for copyright protection. As Justice Sandra Day O’Connor explained:

The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws.

The Court further noted that the protection is not limitless. While the bar for creativity is low, it does exist. “This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that every element of the work may be protected,” Justice O’Connor wrote. “Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author.”

With regard to the telephone directory, the Court concluded it was “a garden-variety white pages directory, devoid of even the slightest trace of creativity.” Justice O’Connor further wrote:

Rural’s selection of listings could not be more obvious: it publishes the most basic information-name, town, and telephone number-about each person who applies to it for telephone service. This is “selection” of a sort, but it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression. Rural expended sufficient effort to make the white pages directory useful, but insufficient creativity to make it original.

Court’s Decision in Pohl v. MH SUB I LLC (d/b/a Officite)

Judge Walker relied on the Supreme Court precedent in ruling that the before-and-after teeth photos are not entitled to copyright protection. “Even though the deposited materials may have included the before-and-after photos, they are not copyrightable because no reasonable jury could find the photos are sufficiently creative or original to receive copyright protection,” he wrote.

Expressly citing Feist, Judge Walker concluded that Pohl’s described process of photographing Belinda’s teeth involves no “creative spark.” In so ruling, the judge rejected Pohl’s arguments that he exhibited creativity by selecting the camera, posing the subject matter, and determining the lighting and photo angle before taking the photographs. Judge Walker wrote:

Pohl does not know what type of camera he used — or even if it was a digital camera or one requiring film. He does not know if patient Belinda was sitting or standing when he photographed her mouth. Id. To the extent he posed her for the camera, it was to tilt her head, lift her chin up or down, instruct her to smile, or to tell her to look at the camera.  As for lighting, there is no creativity in merely having sufficient lighting in the room where Pohl took the photographs. He offers no evidence regarding the shading or lighting of the photographs. The photo angle involved Pohl “mov[ing] the camera in and out until I get it in focus,” — the most rudimentary and basic task for photographers since the era of the daguerreotype. The whole process took no more than five minutes. 

In further support of his decision, Judge Walker cited prior federal court rulings denying copyright protection to commercial photographs. They included Oriental Art Printing, Inc. v. Goldstar Printing Corp., in which a New York federal court held that generic photos of Chinese food served a utilitarian purpose and were not creative. “[P]laintiffs’ photographs serve a purely utilitarian purpose: to identify for restaurant customers those dishes on a take-out menu, such that the customers may achieve a better understanding of what a particular dish contains,” the court wrote in that case.

Judge Walker employed the same reasoning to find that Pohl’s images lacked a creative spark. “There is nothing remotely creative about taking close-up photographs of teeth,” the judge concluded. “The before-and-after shots served the purely utilitarian purpose of displaying examples … to potential customers.”

Key Takeaway

The decision in Pohl v. MH SUB I LLC (d/b/a Officite) arguably makes it more difficult for businesses to gain copyright protection for similar types of advertising photos. To ensure images are protected, owners must be able to show that the photos are creative, at least in some small way.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, William R. Samuels, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post How Much Creativity Is Required for Copyright Protection? appeared first on Scarinci Hollenbeck.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
Under a New Rule Proposed by the USPTO, Foreign Trademark Applicants and Registrants Must Be Represented by a Licensed U.S. Attorney

Foreign trademark applicants and registratants must be represented by a licensed U.S. attorney under a new rule proposed by the U.S. Patent and Trademark Office. The rule would take effect in July.

Photo courtesy of Marten Bjork (Unsplash.com)
USPTO Proposed Rule

Under the USPTO’s proposed trademark rule, foreign trademark applicants and registrants must be represented by an attorney in good standing of the bar of the highest court of a State in the U.S. (including the District of Columbia and any Commonwealth or territory of the U.S.) to file trademark documents with the USPTO.

According to the USPTO, a requirement that foreigners be represented by a U.S. licensed attorney will:

 (i) ensure that the USPTO can effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters; (ii) provide greater confidence to foreign applicants and the public that registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims; and (iii) aid USPTO efforts to improve accuracy of the U.S. Trademark Register.

In addition to the reasons detailed above, there is speculation that the new requirement is intended to deter the recent uptick in pro se trademark filings by Chinese citizens. The Chinese Government currently provides a subsidy of $790 for successful trademark applications, which provides a financial incentive to obtain trademark protection regardless of any sincere intention to commercialize such rights.

The formal rule is expected to include an exception for trademark applications filed under the Madrid Protocol, which makes it possible to register a mark in several territories through one procedure. The system is administered by the World Intellectual Property Organization (WIPO) and governed by two international treaties, the Madrid Agreement and the Madrid Protocol.

The USPTO plans to issue a Notice of Proposed Rulemaking sometime this month. The public comment period will end in February, with a final action next June that will become effective in July 2019.

Benefits of Being Represented by a Trademark Attorney

Both U.S. and foreign trademark applicants have a higher likelihood of success when retaining an experienced trademark attorney. As we have discussed in prior articles, trademark applications filed with assistance of an attorney have a far higher success rate, according to published studies.

The benefits of working with counsel include the option of performing limited or comprehensive trademark searches before you file your application; preparing your trademark application, including the appropriate description of your goods and services; corresponding with the Trademark Office’s examining attorney on your behalf, such as responding to preliminary refusals and requests for additional information; filing appeals when necessary; and assisting your business in maintaining and policing your trademark after registration.

At Scarinci Hollenbeck, our Intellectual Property attorneys routinely clear trademarks domestically and abroad, register the marks, maintain them, and work with clients to ensure they remain protected.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post USPTO to Require Foreign Trademark Applicants and Registrants to Retain US Lawyers appeared first on Scarinci Hollenbeck.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
U.S. Supreme Court to Consider What Happens to a Trademark License in Bankruptcy

The U.S. Supreme Court recently added another intellectual property case to its docket. The issue in Mission Product Holdings Inc. v. Tempnology, LLC is what happens to the rights of a trademark licensee when a bankruptcy debtor rejects a license agreement during Chapter 11 proceedings.

Photo courtesy of Raw Pixel (Unsplash.com)

Intellectual Property Under Bankruptcy Law

In most cases, when a business files for protection under Chapter 11 of the Bankruptcy Code, the trustee or the debtor-in-possession may secure court approval to “reject” any executory contract of the debtor. Under Section 365(g)(1) of U.S. bankruptcy code, the other party to the contract can pursue a damages claim for breach, but may not compel further performance.

Intellectual property is treated differently. Pursuant to 11 U.S.C. § 365(n)(1), when the rejected contract is one “under which the debtor is a licensor of a right to intellectual property,” the licensee may elect to “retain its rights . . . to such intellectual property,” thereby continuing the debtor’s duty to license the intellectual property. “Intellectual property” is defined in the Bankruptcy Act to include patents and copyrights, but not trademarks.

Because it is not directly addressed in the Bankruptcy Code, the circuit courts are split on whether the rejection of a trademark licensing agreement terminates a licensee’s rights.  In 1985, the Fourth Circuit held in Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc. that a debtor-licensor’s rejection of a licensing agreement involving a metal-coating process extinguished the licensee’s right to continue practicing the IP covering that process. In response to the court’s controversial ruling, Congress enacted 11 U.S.C. § 365(n)(1). However, that statute addressed patent rights, but failed to address trademark rights.

In 2012, the Seventh Circuit held in Sunbeam Products, Inc. v. Chicago Manufacturing, LLC that the rejection of a trademark license does not strip the licensee of its right to use the trademark. The appeals court reasoned that under §365(g), rejection is simply ‘“a breach”’ of the rejected contract, and “in bankruptcy, as outside of it,” following a breach, “the other party’s rights remain in place.”

Facts of Mission Product Holdings Inc. v. Tempnology, LLC

On November 21, 2012, Mission Product Holdings Inc. (Mission) and Tempnology, LLC (Tempnology) executed a Co-Marketing and Distribution Agreement (the “Agreement”). The Agreement granted Mission a non-exclusive, worldwide, perpetual license to use for any purpose (including manufacture and sale) all of Tempnology’s products, inventions, and designs and all of Tempnology’s intellectual property rights (other than trademarks and domain names) with respect to those products, inventions, and designs. Agreement §15(b), App. 120a-121a.

The Agreement granted Mission a non-exclusive, worldwide (except for certain countries in East Asia) license to use Tempnology’s trademarks on the Tempnology products Mission distributed  for the term of the Agreement. The license also granted Mission the exclusive right to sell certain patented and trademarked products in the United States.

On June 30, 2014, Mission exercised its right to terminate the Agreement without cause, triggering the Agreement’s wind-down period. The next month, Tempnology purported to terminate the Agreement for cause and stopped performing under the Agreement. In June 2015, an arbitrator ruled that Tempnology’s purported termination for cause was improper. Before a second phase of arbitration could address Mission’s claim that Tempnology had breached the Agreement by failing to perform, Tempnology filed a voluntary petition for Chapter 11 bankruptcy, halting the arbitration proceedings.

The bankruptcy court ruled that Mission retained its non-exclusive, license to use Tempnology’s patents post-rejection, but held that rejection of the Agreement terminated Mission’s trademark and exclusive-distribution rights.

The Bankruptcy Appellate Panel for the First Circuit (BAP) affirmed that the trademark license did not survive. However, it concluded that “rejection of the Agreement did not vaporize Mission’s trademark rights under the Agreement.” Relying on Sunbeam, it held that the rejection was a breach of contract, but did not terminate licensee’s rights.

A divided panel of the First Circuit disagreed. It held that Mission’s right to use Debtor’s trademarks did not survive rejection of the Agreement. The majority reasoned that it was not “possible to free a debtor from any continuing performance obligations under a trademark license even while preserving the licensee’s right to use the trademark,” explaining that Tempnology would be required to “monitor and exercise control over the quality of the goods” produced by Mission to protect the “continued validity” of its trademarks.

Issues Before the Supreme Court

In its appeal to the U.S. Supreme Court, Mission argued that the First Circuit’s decision not only deepened the circuit split, but is clearly erroneous.  According to Mission, the First Circuit’s ruling “contravenes the text and purpose of the Bankruptcy Code, as well as the weight of authority among courts and scholars regarding the meaning of rejection.” As the petition for certiorari argues:

Rejection of an executory contract is merely a breach. It enables the debtor to decline to perform its future obligations under a contract if the cost of doing so outweighs the contract’s benefit to the estate. And it allows the estate to pay the resulting damages pro rata (typically in cents on the dollar) along with other claims that arose before the bankruptcy filing. But it does not enable the debtor to take back rights already granted to a licensee so that the debtor can cut a better deal for those rights.

The Supreme Court granted the petition on October 26, 2018. The justices have agreed to consider whether “rejection” of a trademark license agreement terminates rights of the licensee.

The Court has yet to schedule oral arguments in Mission Product Holdings Inc. v. Tempnology, LLC. Nevertheless, a decision is expected by the end of the term in June. We will follow the progress of this case and report on updates.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David A. Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post What Happens to a Trademark License in Bankruptcy? appeared first on Scarinci Hollenbeck.

Read Full Article

Read for later

Articles marked as Favorite are saved for later viewing.
close
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 

Separate tags by commas
To access this feature, please upgrade your account.
Start your free month
Free Preview