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As the Industry is Poised to Explode, Players and Teams May Want to Take eSports IP Protection into Consideration

With the eSports industry poised to explode, players and teams need to seriously consider protecting their “brands.” Gamer IDs and team names can both be valuable intellectual property (IP) assets that should be safeguarded via trademark registration.

Photo courtesy of Ugur Akdemir (Unsplash.com)

Gamers Have Valuable eSports IP

In the video game world, your gamertag, team name and logo not only help you stand out from the competition but can also be extremely valuable. Examples of well-known video game teams that hold trademarks include EnVy, Liquid, and Evil Geniuses. Similarly, star gamer Jonathan Wendel has protected his gamer-tag, “FATAL1TY.”

At its core, a trademark is a brand name. A trademark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.

eSports players and teams can establish rights in a trademark by using it in commerce (i.e., participation in video game competitions) and do not need to register it with the U.S. Patent and Trademark Office (USPTO). However, it is generally advisable to take the time to file a formal registration. The benefits of federal trademark registration include a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration, as well as the ability to bring an infringement action concerning the mark in federal court.

For eSports players and teams looking to attract sponsorships or other forms of funding, it is imperative to protect your brand. Before entering into any legal agreement, companies will want to see that you have secured your intellectual property. Merchandising can also generate significant income for prominent gamers and their teams. However, before you can license your brand, you need to register it.

Seeking Trademark Protection for Your Gamer ID or Team Name

The first step to establishing federal trademark protection is to determine whether your gamer ID or team name is eligible for registration. By conducting a trademark search using the Trademark Electronic Application System (TEAS), you can verify that your name is not being used by someone else in the eSports industry. If your chosen name is close to some other well-known gamertag or team name, it’s time to go back to the drawing board.

Once you have settled on a name, the next big decision is what good and services you want to protect. While there are 45 different classes, common choices in the eSports industry include Class 041, which include “Organizing and conducting competitive and non-competitive games in the field of video games,” as well as “Entertainment services, namely, participation in video game competitions.” Class 025, which includes clothing items and similar merchandise, such as t-shirts, sweatshirts, pants and hats, is also popular.

If you have already started using the mark for the goods or services you have selected, you can file based on that use. If not, you can file an intent-to-use application, which allows you to protect the mark based on its planned use, provided that you begin using it in commerce within a certain timeframe.

Finally, you don’t need an attorney to file a trademark application. However, it is usually a good idea. In fact, the USPTO recommends that trademark registrants be represented by legal counsel who can walk them through the process and get it right the first time around. At Scarinci Hollenbeck, our intellectual property attorneys routinely register marks, maintain them, and work with clients to ensure they remain protected.

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, Joseph Tringali, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

The post eSports IP Protection for Gamer IDs and Team Names appeared first on Scarinci Hollenbeck.

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Ninth Circuit Rules Monkey May Not Hold Copyright Under U.S. Copyright Act

Naruto, arguably the world’s most famous crested macaque, has lost his long-standing legal battle over a “selfie” she took back in 2011. A non-human may not hold copyright under the U.S. Copyright Act, according to the Ninth Circuit Court of Appeals.

Photo courtesy of Naruto, the crested black macaque (Photo available via Public Domain)

Monkey Selfie Prompts Lawsuits

In 2011, British photographer David Slater traveled to Indonesia to capture the crested black macaque. While he was shooting, one of the primates hijacked his camera and took over 100 selfies. Not surprisingly, one of the photos that Naruto took of herself went viral after Slater posted it online.

Wikimedia Foundation, which owns Wikipedia, posted the “selfie” in its online database of public domain images. Upon discovering the image, Slater demanded that the company remove it. He argued that the copyright should vest in him because he owns the camera that captured the image and expended significant resources to capture the shot. Wikipedia refused to take down the photo, maintaining that the selfie is in the public domain because “non-human authors” are not granted an automatic copyright of photographs that they take.

The U.S. Copyright Office agreed. In 2014, it clarified that works created by non-humans are not entitled to copyright protection. “To qualify as a work of ‘authorship’ a work must be created by a human being…. Works that do not satisfy this requirement are not copyrightable,” the Copyright Office advised. “The Office will not register works produced by nature, animals, or plants.”

The same year, Slater and Wildlife Personalities, Ltd. published the monkey selfies in a book that Slater created through Blurb, Inc.’s website. The publication of the photos prompted the People for the Ethical Treatment of Animals (PETA) to file suit against Slater and the publisher. The animal rights group, which filed suit under a legal principle that allows someone to sue in the name of another person who is unable to do so, maintained that the macaque was the rightful copyright owner. The copyright infringement suit argued:

Naruto has the right to own and benefit from the copyright in the Monkey Selfies in the same manner and to the same extent as any other author. Had the Monkey Selfies been made by a human using Slater’s unattended camera, that human would be declared the photographs’ author and copyright owner.

In 2016, U.S. District Judge William Orrick held that the monkey could not hold a copyright. “Congress and the President can extend the protection of law to animals as well as humans, there is no indication that they did so in the Copyright Act.” PETA and Slater subsequently reached a settlement and sought to dismiss the suit. The settlement required Slater to donate 25 percent of any future revenue generated from using or selling the monkey selfies to charities that protect the crested macaques’ habitat in Indonesia. However, the Ninth Circuit refused to dismiss the appeal, electing to address the standing issue raised in the case.

Ninth Circuit Ends Copyright Lawsuit

The Ninth Circuit ruled in April that the monkey lacks statutory standing to bring a copyright infringement lawsuit under the Copyright Act. “Our court’s precedent requires us to conclude that the monkey’s claim has standing under Article III of the United States Constitution. Nonetheless, we conclude that this monkey — and all animals, since they are not human — lacks statutory standing under the Copyright Act. We therefore affirm the judgment of the district court,” Judge Carlos Bea wrote.

Interestingly, the Ninth Circuit found that the monkey’s claim has standing under Article III of the U.S. Constitution under its prior decision in Cetacean Cmty. v. Bush, 386 F.3d 1169 (9th Cir. 2004). In that case, the Ninth Circuit held that all of the world’s whales, dolphins, and porpoises (collectively known as “cetaceans”), through their self- appointed lawyer, alleged facts sufficient to establish standing under Article III. With regard to Naruto, the Ninth Circuit concluded that the monkey had suffered concrete and particularized economic harms as a result of the infringing conduct, harms that could be redressed by a judgment declaring Naruto as the author and owner of the selfies. Nonetheless, the Ninth Circuit dismissed the suit due to Naruto’s lack of statutory standing to bring the copyright infringement suit, concluding that animals lack statutory standing to sue under the Copyright Act.

In reaching its decision, the Ninth Circuit also questioned PETA’s motives in bringing the suit and seeking to dismiss its appeal rather than face a court loss that would be against its ideological interests. A footnote in the opinion states:

But now, in the wake of PETA’s proposed dismissal, Naruto is left without an advocate, his supposed “friend” having abandoned Naruto’s substantive claims in what appears to be an effort to prevent the publication of a decision adverse to PETA’s institutional interests. Were he capable of recognizing this abandonment, we wonder whether Naruto might initiate an action for breach of confidential relationship against his (former) next friend, PETA, for its failure to pursue his interests before its own.

Nonetheless, PETA characterized the decision as a partial victory. “The court reaffirmed that nonhuman animals have the constitutional right to bring a case to federal court when they’ve been wronged, but the opinion still missed the point, which was that Naruto the macaque undeniably took the photos, and denying him the right to sue under the U.S. Copyright Act emphasizes what PETA has argued all along — that he is discriminated against simply because he’s a nonhuman animal,” PETA said in a statement.

If you have any questions, please contact us

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

The post No Monkey Business – Ninth Circuit Rules Monkey Can’t Bring Copyright Suit Over Selfie appeared first on Scarinci Hollenbeck.

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Trademark Registration is One of the Best Ways to Protect Your Business’s Valuable Assets

If you don’t have the proper legal safeguards in place, another business could capitalize on the brand you’ve worked so hard to build. Trademark registration is one of the best and most cost-effective ways to protect valuable assets, such as your brand, logos and slogans and your business name when used in connection with the sale of goods or services.

Photo courtesy of Raw Pixel (Unsplash.com)

Trademark Registration Eligibility

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Provided that your brands, logos and slogans are distinctive, identify your good or services, and are not likely to be confused with a pre-existing trademark, trademark registration can be used to prevent them from being used by a competitor. 

Not all brands are eligible for trademark registration. For instance, the USPTO won’t register a trademark for a merely descriptive name, i.e. you can also demonstrate that the brand has been used so frequently that consumers automatically associate it with your product or service.

If you can’t register your business name, there are still some legal protections available, such as trade name reservation. A trade name is the official name a business uses in the course of doing business. It is also often referred to as a DBA name, which stands for “doing business as.”

Most states require a new public business entity to have a name which is not the same (or similar) as another active business. Corporations and limited liability companies register their trade names when filing formation documents with the state of incorporation. In addition, partnerships and sole proprietorships must obtain a “Trade Name Certificate to Operate” from the clerk in each county where business will be conducted.

Benefits of Federal Trademark Protection

Because it can be so valuable, businesses should consider the availability of trademark registration before investing significant time and effort into building a brand. By conducting a trademark search with the assistance of a trademark attorney, you can verify that your proposed business name, logo or slogan is not being used by someone else in connection with similar goods and services.

You can establish rights in a trademark based on the use of the mark in commerce without seeking registration with the U.S. Patent and Trademark Office (USPTO). However, it is generally advisable to take the time to file a formal trademark application. The benefits of federal trademark registration include:

  • Public notice of ownership of the mark;
  • A legal presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ®; and
  • Listing in the United States Patent and Trademark Office’s online databases, which will deter others from registering the same or similar mark and prevent infringers from claiming ignorance of the mark.’
  • The ability to register one’s brand with the Trademark Clearinghouse, for domain name protection purposes.
Working with an Attorney to Facilitate the Process

The U.S. Patent and Trademark Office (USPTO) recommends that trademark applicants be represented by legal counsel. An experienced trademark attorney must assist with the process of protecting a trademark by:

  • Conducting a comprehensive trademark search before you file your application;
  • Preparing your application, including the description of your goods and services;
  • Responding to correspondence from the Trademark Office’s examining attorney, such as requests for additional information;
  • Appealing decisions by the examining attorney, such as a refusal to register; and
  • Helping your business enforce your trademark after registration.

Retaining a lawyer also not only significantly increases the odds that your trademark will be approved, but also that the registrations will be more likely to be found valid if challenged, and will have sufficient strength to exclude competitors.

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 and that infringers are deterred. We welcome you to contact us to explore how we can help protect your company’s brands.

If you have any questions, please contact us

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

The post Trademark Registration Is the Strongest Method to Safeguard Your Brand appeared first on Scarinci Hollenbeck.

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In Oil States Energy Services LLC v Greene’s Energy Group LLC, SCOTUS Confirms Inter Partes Review under America Invents Act is Constitutional

In Oil States Energy Services LLC v Greene’s Energy Group LLC, the U.S. Supreme Court confirmed that inter partes review under the America Invents Act (AIA) is constitutional. For businesses that rely on inter partes review, the Court’s decision confirms that the process will remain available for the foreseeable future.

Photo courtesy of Samuel Zeller (Unsplash.com)

Inter Partes Review Under the AIA

Inter partes review is an adversarial administrative proceeding under which parties can request that the Patent Trial and Appeal Board (Board) take a second look at the patentability of the claims in an issued patent. Since 2012, more than 6,000 inter partes review (IPR) petitions have been filed.

Inter partes review may be used to challenge patents based only on lack of novelty or obviousness. In general, any person may petition for inter partes review; however, the Patent Trial and Appeal Board may only institute an inter partes review if “there is a reasonable likelihood that the petitioner would prevail” with respect to at least one of its challenges to the validity of a patent.

Inter partes patent review proceedings are designed to be faster and less costly than traditional patent litigation. They generally involve limited discovery, affidavits and declarations, hearings, and written memoranda. At the close of the IPR proceedings, the Board issues a final written decision addressing the patentability of the claims at issue. A final decision by the Board is subject review by the Federal Circuit Court of Appeals.

After any appeals are exhausted and the Board’s decision becomes final, the U.S. Patent and Trademark Office (USPTO) issues a “certificate” cancelling any claims of the patent that were deemed unpatentable, confirming any claims of the patent that were deemed patentable, and “incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.”

Constitutional Challenge to IPR Proceedings

Oil States Energy Services, LLC, obtained a patent relating to technology for protecting wellhead equipment used in hydraulic fracturing. It sued respondent Greene’s Energy Group, LLC, in Federal District Court for infringement. Greene’s Energy subsequently challenged the patent’s validity in the District Court and also petitioned the USPTO for inter partes review. The District Court issued a claim-construction order favoring Oil States. Meanwhile, the Board issued a decision concluding that Oil States’ claims were unpatentable.

Oil States appealed to the Federal Circuit. In addition to its patentability arguments, it challenged the constitutionality of inter partes review, arguing that actions to revoke a patent must be tried in an Article III court before a jury. While Greene’s Energy’s appeal was pending, the Federal Circuit rejected the same constitutional arguments in MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1288–93 (2015). The Federal Circuit subsequently summarily affirmed the Board’s decision with respect to Oil States.

Supreme Court Upholds Inter Partes Review

By a vote of 7-2, the Court confirmed that that inter partes review proceedings do not violate Article III or the Seventh Amendment. Justice Clarence Thomas wrote on behalf of the majority.

In deciding the Article III challenge, the Court relied on the public rights doctrine, under which Congress has significant latitude to assign adjudication of public rights to entities other than Article III courts. Quoting Ex parte Bakelite Corp., 279 U. S. 438, 451 (1929), Justice Thomas explained that the public-rights doctrine applies to matters “arising between the government and others, which from their nature do not require judicial determination and yet are susceptible of it.”

The Court went on to conclude that “[i]nter partes review falls squarely within the public rights doctrine.” As Justice Thomas explained:

This Court has recognized, and the parties do not dispute, that the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration. Thus, the PTO can do so without violating Article III.

The Court further held that inter partes review does not violate the Seventh Amendment. Citing Granfinanciera, S.A. v. Nordberg, 492 U.S. 33 (1989), Justice Thomas noted that when Congress properly assigns a matter to adjudication in a non-Article III tribunal, “the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder.” Accordingly, the Court ruled that its rejection of Oil States’ Article III challenge also resolved its Seventh Amendment challenge.

In its opinion, the Court emphasized that its decision was narrow and limited to the constitutionality of IPR proceedings.  The Court’s decision also noted that it did not address other potential challenges to IPR proceedings. “The decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause,” Justice Thomas wrote. In short, the Supreme Court’s decision in Oil States Energy Services LLC v. Greene’s Energy Group, LLC upholds the inter partes review process under the constitutional challenges presented. However, it does not insulate it from future constitutional challenges on other grounds.

Additional SCOTUS Patent Decision

Separately, the Supreme Court ruled in SAS Institute Inc. v. Iancu that the USPTO’s existing practice of adjudicating some, but not all, claims challenged by an IPR petitioner is improper. We have discussed the decision in a separate article.

If you have any questions about the case, please contact us

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

The post SCOTUS Upholds Inter Partes Patent Reviews in Oil States Energy Services LLC v Greene’s Energy Group LLC appeared first on Scarinci Hollenbeck.

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In SAS Institute Inc v Iancu, SCOTUS Ruled That When the USPTO Conducts Inter Partes Review, it Must Decide Patentability of All Challenged Claims

In SAS Institute Inc v Iancu, the U.S. Supreme Court ruled that when the United States Patent and Trademark Office (USPTO) conducts an inter partes review, it must decide the patentability of all challenged claims. The decision follows the Court’s prior ruling in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC upholding the validity of the entire inter partes review process.

Photo courtesy of Samuel Zeller (Unsplash.com)

Legal and Factual Background of SAS Institute Inc v Iancu

Inter partes review (IPR) allows private parties to challenge previously issued patent claims in an adversarial process before USPTO. The Director of the USPTO may institute a review after determining “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Pursuant to 35 U.S.C. §318(a), the USPTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner” at the close of the litigation.

SAS Institute Inc. (SAS) sought review of respondent ComplementSoft’s software patent, alleging that all 16 of the patent’s claims were unpatentable. Relying on a USPTO regulation (37 CFR §42.108(a)) recognizing a power of “partial institution,” the Director instituted review on some of the claims and denied review on the rest. The Patent Trial and Appeal Board’s (Board) final decision addressed only the claims on which the Director had instituted review. On appeal, the Federal Circuit rejected SAS’s argument that §318(a) required the Board to decide the patentability of every claim challenged in the IPR petition.

Supreme Court Rejects USPTO Regulation

By a vote of 5-4, the Supreme Court reversed. In an opinion written by Justice Neil Gorsuch, the majority held that the USPTO must decide the patentability of all challenged claims. 

In reaching its decision, the Court relied on the plain text of §318(a). “The word ‘shall’ generally imposes a nondiscretionary duty, and the word ‘any’ ordinarily implies every member of a group,” Justice Gorsuch explained. “Thus, §318(a) means that the Board must address every claim the petitioner has challenged.”

The Court also rejected the USPTO’s argument that the Director has the discretion to institute a partial review, concluding that both the text and context strongly counsel against inferring such a power. Justice Gorsuch wrote:

Section 314(a)’s requirement that the Director find “a reasonable likelihood” that the petitioner will prevail on “at least 1 of the claims challenged in the petition” suggests, if anything, a regime where a reasonable prospect of success on a single claim justifies review of them all. Again, if Congress had wanted to adopt the Director’s claim-by-claim approach, it knew how to do so. See §304. Nor does it follow that, because §314(a) invests the Director with discretion on the question whether to institute review, it also invests him with discretion regarding what claims that review will encompass.

Justice Gorsuch went on to note that the USPTO should raise its concerns about IPR proceedings with Congress. “The Director’s policy argument—that partial institution is efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others—is properly addressed to Congress, not this Court,” he wrote. 

The Court’s decision in SAS Institute Inc. v. Iancu will likely impact how both petitioners and patent holders approach IPR proceedings. We encourage businesses to consult with an experienced patent attorney regarding the potential implications for your organization.

If you have any questions about the case, please contact us

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

The post SAS Institute Inc v Iancu: SCOTUS Rules Inter Partes Review Proceedings Must Address All Claims appeared first on Scarinci Hollenbeck.

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SCOTUS To Address International Patent Damages in WesternGeco LLC (Schlumberger) v. ION Geophysical Corp.

The U.S. Supreme Court recently granted certiorari in WesternGeco LLC (Schlumberger) v. ION Geophysical Corp. The key question before the Court is whether lost profits incurred outside of the United States are recoverable in patent infringement cases.

Photo courtesy of Matteo Bernardis (Unsplash.com)

Recovering Patent Damages 

Under the Patent Act of 1952, when a patent owner prevails in an infringement action, “the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer.” Such damages may include lost profits that the patent owner would have earned but for the infringement. Yale Lock Mfg. Co. v. Sargent, 117 U.S. 536, 552-553 (1886).

Issues in WesternGeco LLC (Schlumberger) v. ION Geophysical Corp.

WesternGeco developed and patented technology used in geological surveys to search for oil and gas under the ocean floor. In late 2007, ION Geophysical Corp. began selling a competing survey system. ION shipped components of its system from its Louisiana warehouse to surveying companies abroad for those companies to combine the components into a surveying system. Equipped with ION’s system, ION’s customers would compete directly with WesternGeco for survey contracts.

WesternGeco sued ION for infringement under 35 U.S.C. §§ 271(f). Under 35 U.S.C. § 271(f), it is an act of patent infringement to supply “components of a patented invention,” “from the United States,” knowing or intending that the components be combined “outside of the United States,” in a manner that “would infringe the patent if such combination occurred within the United States.”

The jury found ION liable for patent infringement and awarded damages, which included a $12.5 million royalty component and a $93.4 million lost profits component. The district court upheld the verdict.

Despite affirming ION was liable for infringement under § 271(f), the majority of a divided panel of Federal Circuit held that WesternGeco was not entitled to lost profits. The court of appeals reasoned that even when Congress has overridden the presumption against extraterritorial application of the law in creating liability, the presumption must be applied a second time to restrict damages. The dissenters disagreed with the interpretation, arguing that it created a “near-absolute bar to the consideration of a patentee’s foreign lost profits [that] is contrary to the precedent both of this court and was rejected by the Federal Circuit of the Supreme Court.”

After WesternGeco’s petition for rehearing en banc was rejected by the Federal Circuit, it appealed to the U.S. Supreme Court. The specific question the Court has agreed to consider is:

Whether the U.S. Court of Appeals for the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases in which patent infringement is proven under 35 U.S.C. § 271(f)?

The Court has scheduled oral arguments in this case for April 16, 2018(with Justice Alito being recused). A decision is expected before the term ends in June. We will continue to track the progress of this case and will post updates as they become available.

If you have any questions about the case, please contact us

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

The post Supreme Court to Address International Patent Damages appeared first on Scarinci Hollenbeck.

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Is Your Company’s Trademark Incontestable?

Is your company’s trademark incontestable? While US business owners generally understand the benefits of federally registering their trademarks, many are unaware that you can go one step further in protecting your intellectual property rights.

Photo courtesy of Dan Schiumarini (Unsplash.com)

Benefits of Federal Trademark Registration

Most US businesses have a brand name, slogan or logo that distinguishes their products or services from everybody else. Over time, trademarks can become one of your most valuable assets.

In the US, businesses can establish legal rights in a trademark based on use of the mark in commerce without seeking registration with the U.S. Patent and Trademark Office (USPTO). However, it is advisable to take the time to file a formal registration. The benefits of federal trademark registration include a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration, as well as the ability to bring an infringement action and use it as evidence in federal court.

Section 15 Declaration

After five years of consecutive use from the date of federal registration, a trademark may be declared incontestable. While trademark owners need not pursue a Declaration of Incontestability, it does afford greater legal protection.

Pursuant to Section 15 of the Trademark Act, 15 U.S.C. §1065, the owner of the registration must file an affidavit or declaration stating that the trademark has been in continuous use in commerce for a period of five years after the date of registration. The specific requirements of the Section 15 Declaration include:

  • The Section 15 Declaration must specify the goods, services, or nature of the collective membership organization recited in the registration on or in connection with which the mark has been in continuous use in commerce for the five-year period after the date of registration and is still in use in commerce.
  • The Section 15 Declaration must state that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods, services, or collective membership organization, or to the owner’s right to register the mark or to keep the mark on the register. It must also state that there is no proceeding involving these rights pending in the USPTO or the courts. 
  • The Section 15 Declaration must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20by the owner of the registration or a person properly authorized to sign on behalf of the owner of the registration.  A “person who is properly authorized to sign on behalf of the owner” is: (1) a person with legal authority to bind the owner; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or (3) an attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner. 

If the right to use the mark has become incontestable under Section 15, then the registration is conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce. Of course, it is important to highlight that an incontestable trademark is not completely ironclad. An incontestable mark that becomes generic or has been abandoned may be canceled at any time. Other potential legal challenges include allegations that a trademark is being used to misrepresent the source of the goods or services in connection with which it is used, or it was obtained fraudulently.

When seeking to make your trademark incontestable, it is advisable to work with an experienced New York intellectual property attorney who can walk you through the process. Contact us to find out how we can help.

If you have any questions about your company’s trademark, please contact us

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

The post US Companies Can Make Their Trademark Incontestable appeared first on Scarinci Hollenbeck.

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The U.S. Copyright Office Will Now Accept Copyright Assignments & Other Documents With Electronic Signatures

The U.S. Copyright Office is finally abandoning its requirement for a handwritten, signature. The agency will now accept copyright assignments and other documents with electronic signatures for recordation.

Photo courtesy of Dose Media (Unsplash.com)

Enforcement of Electronic Signatures 

When it comes to executing business contracts, electronic signatures are generally considered valid. Under the Electronic Signatures in Global and National Commerce Act (ESIGN), which went into effect in 2000, digital and electronic signatures are just as legal as their paper and ink counterparts for transactions in or affecting interstate or foreign commerce. It specifically provides that a contract or signature “may not be denied legal effect, validity, or enforceability solely because it is in electronic form.”

The E-Sign Act defines an e-signature as “an electronic sound, symbol, process attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record and be legally bound.” It allows the use of electronic records to satisfy any statute, regulation, or rule of law requiring that such information be provided in writing, if the consumer has affirmatively consented to such use and has not withdrawn such consent.

New Copyright Regulation

As with many federal regulations, there are a few notable exceptions. Up until recently, documents recorded with the U.S. Copyright Office required a “wet” signature. As opposed to an electronic signature, a “wet” signature is created when a person physically marks a document, a nod to the process of waiting for ink to dry.

Pursuant to 17 U.S.C. § 205(a), which establishes the conditions under which the Copyright Office can record transfers and other documents:

Any transfer of copyright ownership or other document pertaining to a copyright may be recorded in the Copyright Office if the document filed for recordation bears the actual signature of the person who executed it, or if it is accompanied by a sworn or official certification that it is a true copy of the original, signed document. A sworn or official certification may be submitted to the Copyright Office electronically, pursuant to regulations established by the Register of Copyrights.

The Copyright Office previously interpreted the above-provision to mean that where a submitted document lacks a handwritten, wet signature (such as when it is signed electronically), the document is a “copy,” which must be accompanied by a sworn or official certification. In an attempt to further modernize its operations, the Copyright office recently implemented new rules for the recordation of transfers of copyright ownership, other documents pertaining to a copyright, and notices of termination.

The copyright regulations now define ‘‘actual signature’’ as any legally binding signature, including an electronic signature as defined by the E-Sign Act. They also require that where an actual signature is not a handwritten or typewritten name, such as when an individual clicks a button on a Web site or application to indicate agreement to contractual terms, the remitter should be required to submit evidence demonstrating the existence of the signature, such as by appending a database entry or confirmation email to a copy of the terms showing that a particular user agreed to them by clicking ‘‘yes’’ on a particular date. The Copyright Office will not evaluate the evidence submitted in such cases, but will presume that the signature requirement has been satisfied and record the document (if all other requirements for recordation have been met). The regulations provide, however, that this presumption is without prejudice to any party claiming that the document was not signed, including in court.

Next Steps for Businesses

Given the proliferation of online clickwrap agreements, the new regulations provide much-needed clarity that e-signatures can be used to satisfy the written signature requirements of the Copyright Act. To determine how the elimination of the “wet” signature requirement may impact your company’s operations, we recommend consulting with an experienced IP attorney.

Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, at 201-806-3364.

The post U.S. Copyright Office Finally Embraces Electronic Signatures appeared first on Scarinci Hollenbeck.

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If Your Business Develops Proprietary Computer Programs, It Is Advisable to Seek Software Copyright Registration 

If your business develops proprietary computer programs, it is wise to seek federal copyright protection. Given the legal remedies that it provides, software copyright registration is relatively easy and inexpensive.

Photo courtesy of Seth Schwiet (Unsplash.com)

Registration with the U.S. Copyright Office is required prior to bringing in a lawsuit for copyright infringement. If the work is registered, copyright owners may also seek an award of statutory damages of up to $30,000 per work and up to $150,000 per work in the case of willful infringement.

Notably, copyright protection for a computer program extends to all of the copyrightable expression embodied in the program. However, it does not cover the functional aspects of a computer program, such as the program’s algorithms, formatting, functions, logic, or system design.

Computer Program Copyright Registration Basics

As detailed in the U.S. Copyright Office’s Circular 61, an application for copyright registration contains three essential elements: a completed application form, a nonrefundable filing fee, and a nonreturnable deposit. The term “deposit” refers to a copy or copies of the work being registered and “deposited” with the Copyright Office.

In most cases, each version of a computer program containing new, copyrightable authorship is considered a separate work. Accordingly, a copyright registration for each new software version covers the new material that the author contributed to that version, including any changes, revisions, additions, or other modifications that were made. With some limited exceptions, the registration does not cover earlier versions of the same program or preexisting material that may be contained within the source code. For instance, a registration for a specific version of a program does not cover:

  • Previously published source code;
  • Previously registered source code;
  • Source code in the public domain; or
  • Copyrightable source code owned by a third party.

As with any legal rule, there are exceptions. Most notably, a registration may cover both new and preexisting source code if (1) the preexisting source code has never been published or registered, and (2) the claimant owns the copyright in both the new and the preexisting source code. In such circumstances, applicants must alert the U.S. Copyright Office when submitting the application.

Deposit Requirement for Software Copyright Registration

Businesses seeking to register a computer program must submit the source code for the specific version of the software they want to register. The specific deposit requirements depend on the type of work and whether it contains trade secret material.

With regard to code without trade secret material, applicants must submit one copy of the first 25 pages and last 25 pages of the source code for the specific version you want to register. If the code does contain trade secrets, businesses have several “special relief” options, such as submitting one copy of the first 25 pages and last 25 pages, blocking out the portions of the code containing trade secret material, provided the blocked-out portions are less than fifty percent of the deposit. Another option (among others) is to submit one copy of the first 25 pages and last 25 pages of the object code for the program, together with 10 or more consecutive pages of source code, blocking out none of the source code. It is important to highlight that the Copyright Office strictly applies its rules for submitting source code containing trade secret material, and will refuse to accept a deposit that does not conform to the standards of redaction.

The type of work may also dictate the deposit requirements. For instance, if the computer program is fixed in a CD-ROM, applicants must submit one complete copy of the entire CD-ROM package, including any instructional material for the program. If the same party owns the copyright in the program code and the screen displays, the program and any related screen displays can be registered with the same application. However, if different parties own the copyright in the program code and the screen displays, separate applications are required.

A similar rule applies to video games. Entities can register the audiovisual material for a video game and the computer program that runs it with one application if the same party owns the copyright in the program and the audiovisual material. If the works have been published, they must have been published together as a single unit. If the program and the audiovisual material were published separately, or if different parties own them, each element is considered a separate work, and a separate application must be submitted for each.

In most cases, applicants may upload their source code directly to the Copyright Office’s electronic registration system. Alternatively, the source code may be printed out on paper and mailed.

While businesses are not required in return, an attorney to file a copyright application, it is advisable to work with experienced legal counsel who can walk you through the process and ensure that it is complete and accurate. In addition, a New York City technology attorney can also help you to license and enforce your copyright once it is registered.

Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, at 201-806-3364.

The post What Businesses Need to Know About Software Copyright Registration appeared first on Scarinci Hollenbeck.

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When Legal Disputes Arise, a Cease and Desist Letter Can Be a Quick, Effective, and Inexpensive Way to Resolve It

When legal disputes arise, a cease and desist letter can be a quick, effective, and inexpensive way to resolve it. In basic terms, a cease and desist letter is intended to put the receiving party on notice that you believe they are committing an illegal act. It also advises that if they do not stop, you plan to take legal action. Cease and desist letters can be used to address a wide range of legal situations, including breach of contract, violation of a non-disclosure or non-compete agreement, and patent, copyright, or trademark infringement.

Photo courtesy of Morguefile.com

Benefits of a Cease and Desist Letter

While cease and desist letters don’t necessarily carry any legal weight, they have several important benefits. Most notably, it can be a relatively inexpensive way to resolve many legal disputes, particularly legal disagreements involving intellectual property. Where infringement is readily apparent, the infringers often understand that it is in their best interest to stop the misuse and cooperate with the IP owner to resolve the matter amicably. Even in less clear-cut cases, a cease and desist letter can often prompt settlement discussions and avoid costly litigation.

Even when litigation is inevitable, a cease and desist letter is still advantageous. It establishes actual notice of the claimed rights and may give rise to a claim of intentional breach or infringement if the illegal conduct continues after receipt of the letter. Cease and desist letters also demonstrate that the parties attempted to resolve their dispute prior to commencing litigation, which courts require. It might also serve to put a third party on notice of contract provisions which would then give rise to a possible cause of action for interference with contractual relationship.

Anatomy of a Cease and Desist Letter

Cease and desist letters can take a variety of forms. Recently, companies have made headlines for C&Ds that use a humorous, rather than threatening, tone to send a message.

A-B InBev, which manufactures Bud Light, recently sent a cease-and-desist letter written on parchment and delivered by a town crier. The letter alleged that Modist Brewing Company’s new “Dilly Dilly” Mosaic Double IPA, named after the popular catchphrase from Bud Light’s recent medieval-themed advertisement campaign, infringes A-B InBev’s trademark. The letter stated:

Dear friend of the Crown, Modist Brewing Company. Congratulations on the launch of your new beer, Dilly Dilly Mosaic Double IPA! Let it be known that we believe any beer shared between friends is a fine beer indeed. And we are duly flattered by your loyal tribute. However, “Dilly Dilly” is the motto of our realm, so we humbly ask that you keep this to a limited-edition, one-time-only run. This is by order of the king. Disobedience shall be met with additional scrolls, then a formal warning, and finally, a private tour of the Pit of Misery. Please send a raven, letter or electronic mail to let us know that you agree to this request. Also, we will be in your fair citadel of Minneapolis for the Super Bowl, and would love to offer two thrones to said game for two of your finest employees to watch the festivities and enjoy a few Bud Lights. On us. Yours truthfully, Bud Light.

Netflix also struck a playful, casual tone in a cease and desist letter sent to a Chicago bar that used the “Stranger Things” name without authorization. When New Jersey businesses don’t have to flex their creative muscles when sending a C&D, a cease and desist letter should include, at minimum:

  • The sender’s name and contact information;
  • The name and contact information of the recipient;
  • A clear description of the conduct that you are ordering cease
  • A clear description of your legal rights, i.e. the IP owned by the sender or contract provision that was violated
  • A demand to stop
  • A warning threatening further legal action
  • A time limit to comply, i.e. 10 days or two weeks

There are alternatives to sending a cease and desist letter. In some cases, it is worthwhile to take a softer and less formal approach, such as calling or emailing the other party about the issue. On the other end of the spectrum, it is sometimes necessary to directly file suit to protect your legal rights. To determine the best course of action, it is advisable to consult with an experienced business attorney.

If you have any questions or if you would like to discuss your copyright, trademark, or patent legal needs, feel free to contact me, William Samuels, at 201-806-3364.

The post Cease and Desist Letter 101 for NJ Businesses appeared first on Scarinci Hollenbeck.

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