Our colleague at Employer Law Report, Brian Hall, conveys his thoughts about the first installment of our 2015 Technology Seminar Series. This May 13 seminar focuses on big data, data analytics and the law: What your company needs to know about the next big thing. Read more about what Brian plans to discuss at the seminar.
You may have heard about the dispute of copyright ownership over a selfie taken by a macaque in 2011. The wildlife photographer who owned the camera claimed ownership when a website published the photo without his permission.
Under U.S. law, copyright in a photograph is the property of the person who presses the shutter on the camera — not the person who owns the camera, and not even the person in the photo. Unless a written agreement exists that makes the photo a work made for hire, any person you ask to take your picture with your camera owns the copyright in that photo — not you. How many of us have those photos on our cameras or cell phones? Selfies appear to be a better idea. But do monkeys own copyrights?
The answer is: “No, they do not.” The U.S. Copyright Office issued a document in December 2014, reiterating that it will not register works produced by nature, animals or plants. According to the Copyright Office, a photograph taken by a monkey is unprotected intellectual property. The monkey selfie falls into the public domain and may be used by anyone without permission.
So maybe the answer to owning those vacation photos of yourself is a drone? The Copyright Act states that copyright protection subsists in original works of authorship that are made either directly or with the aid of a machine or device. Copyright in photos from a drone operated directly by a human most likely are owned by that human — but make sure you do not preprogram the drone to operate without a human.
In trademark infringement litigation, the critical and usually pivotal issue is whether there is a likelihood of confusion between two allegedly similar marks. Eliminating a defendant’s ability to defend against an allegation of likelihood of confusion can be tantamount to establishing liability against the defendant. Yet, that will be the situation for many defendants following the U.S. Supreme Court’s March 24, 2015 decision in B& B Hardware, Inc. v. Hargis Industries, Inc. In that case, the Supreme Court held a defendant can be precluded from contesting “likelihood of confusion” if that issue, or a non-materially different issue, was previously decided between the parties in the Trademark Trial and Appeal Board (TTAB), a tribunal in the U.S Patent and Trademark Office (USPTO).
At first blush, the decision might not appear unusual. The doctrine of “issue preclusion,” a doctrine that prevents a party from relitigating an issue previously decided between parties, is long established law. TTAB decisions, however, are different for several reasons. First, the TTAB is part of an administrative agency (the USPTO), not part of the judicial system. Second, TTAB decisions are based on “the mark as shown in the application [for trademark registration] and as used on the good described in the application,” not the mark as actually used in the marketplace. Third, and perhaps far more significant in practical terms, many trademark registration proceedings in the past have been conducted under the assumption that the stakes involved in the proceeding were relatively modest. TTAB proceeds were viewed as relating to only to trademark registration issues, and not involving injunctive relief or monetary damages. After B&B, that isolation of a TTAB decision from injunctive relief and monetary damages, though still theoretically true, might become illusory. Continue Reading
ICANN has made it possible to serve up every brand owner’s worst nightmare; welcome to [yourbrand].sucks. ICANN and registries of new gTLDs have painted a rosy picture of the new Internet landscape, advocating that the introduction of new top level domains, like .app and .restaurant is a way to increase choice and competition. Unfortunately, the introduction of the new gTLDs has created a harsh reality for brand owners who are forced to decide how far they are willing to go to protect their valuable brands through the preemptive purchase of domain names with otherwise undesirable gTLDs.
Would-be gTLD domain registries were required to pay at least $175,000 to obtain the right to offer domain names with a new gTLD of their choice, so it was understood that the cost to domain registrants for a second level domain wouldn’t necessarily be cheap. Plus, the registrars need to mark the prices up to account for integration, registration and the continued maintenance of the domains. When brand owners find themselves paying top dollar for second level domain names only for the purpose of preventing someone from disparaging their brand, exorbitant registration costs may feel like blackmail. Continue Reading
The Sixth Circuit Court of Appeals recently took a broad view of preemption under the Uniform Trade Secrets Act (UTSA) and held that Ohio’s version of the UTSA preempted state-law claims for tortious interference with prospective business relationships and conspiracy to misappropriate trade secrets because those claims arose from the same set of facts as a trade secret misappropriation claim. Stolle Machinery Co., LLC v. RAM Precision Industries, No. 13-4103 (6th Cir. Mar. 16, 2015). In reaching its holding, the Sixth Circuit noted that federal and state courts across the nation are divided about the scope of trade secret preemption under the UTSA, and the Supreme Court of Ohio has not yet addressed this issue.
The UTSA provides for damages and injunctive relief to a plaintiff whose trade secrets have been misappropriated. The UTSA contains a preemption clause that preempts “conflicting tort, restitutionary and other laws” of a state which provide civil remedies for misappropriation of a trade secret. Continue Reading
A federal court recently agreed with the Federal Trade Commission (FTC) that an advertiser should be held accountable for the deceptive acts and practices of its affiliate marketers, and ordered that the advertiser disgorge the entire $11.9 million in payments it received. The court held that the advertiser violated Section 5 of the Federal Trade Commission Act (FTC Act) as a matter of law because its affiliate marketers used “fake news sites” to promote products sold online. According to the court, “no reasonable jury could deny” that the advertiser “both participated in, and had the authority to control, the affiliate marketers conduct in so far as it related to the fake news sites.” The court also held that the advertiser was not entitled to immunity under Section 230 of the Communications Decency Act (CDA). Federal Trade Commission v. LeanSpa, LLC, No. 3:11-CV-1715 (D. Conn. Mar. 5, 2015).
The advertiser, LeadClick Media, Inc. (LeadClick), “fiercely disputed” that it had the authority to control the affiliate marketers, and that it was responsible for creating or developing the deceptive content provided on the fake news sites. Even though LeadClick did not create the fake news sites, the court denied LeadClick Section 230 immunity because LeadClick knew that its affiliate marketers used fake news pages, had communications with these affiliate marketers regarding what products to advertise, screened advertisements according to merchants’ preferences, and provided affiliate marketers with a way to direct consumers from genuine news sites to fake news sites. Continue Reading
Canada’s anti-spam law (CASL), enforced by the Canadian Radio-television and Telecommunications Commission (CRTC), requires that businesses and organizations secure a recipient’s express or implied consent before sending “commercial electronic messages” (CEM). A CEM is any electronic message that encourages participation in a commercial activity, such as a coupon or message about a promotion of the organization, an e-vite, and newsletters sent using email, text messaging or certain forms of messages sent through social networks. The legislation imposes severe fines for non-compliance and leaves open the possibility for private or class actions for damages. CASL has been deemed one of the toughest pieces of anti-spam legislation.
The biggest feature of CASL is the consent requirement, which requires Canadian and global organizations that send CEMs within, from or to Canada to obtain consent from recipients before sending the messages. This requirement does not apply to CEMs merely routed through Canada. The requirement only applies to communications sent to electronic addresses.
Consent may be obtained expressly or may be implied, and it is imperative that an organization, which has the burden of proving that consent was obtained, keep records as to how it obtained consent. Continue Reading
The Internet was in a tizzy back in 2011 when ICM Registry began selling .xxx domain names for use by adult entertainment providers, selling nearly 250,000 addresses and netting more than $50 million. Just last year the registry sold sex.xxx for $3 million dollars, the highest price paid for a non-dot-com address. Which leads us to wonder if the addition of .adult and .porn will generate the same concerns and profits. ICM Registry has set aside nearly 1,000 domain names such as sex.porn, hoping to replicate the success they had with .xxx. But the concern for many trademark holders, as was the case with .xxx, is how to protect their brands during the launch of .adult and .porn?
ICM Registry has set up an elaborate registration period, in effect now through the launch to the general public, which is expected in early June. The two gTLDs opened their Sunrise periods March 2, which will give trademark holders who are registered in the Trademark Clearinghouse (TMCH) the opportunity to secure their registered trademark within the new top level domains. Domains names are available on a first-come, first-served basis to validated marks in the TMCH. The cost of registration fees will be the standard registration fees without any additional sunrise application fees.
Once the Sunrise period has closed, .adult and .porn will launch a Sunrise B period from April 6 to April 30 for .xxx Sunrise B applicants. Sunrise B applicants consist of trademark owners who participated in the .xxx Sunrise B Program and are given a priority option to register matching marks in .adult and .porn before the gTLDs become available to the general public. Following these periods, the gTLDs will open a Domain Matching Program set for May 6 to May 31. During this time, any .xxx registrants can secure available second level domains in .adult and .porn for which they hold a valid .xxx registration. To participate in this phase, a .xxx name must be registered by April 30. Once completed, general availability will begin June 4. Continue Reading
Our colleagues at the Employer Law Report blog report that Gawker Media LLC has asked a district court to limit plaintiff’s use of social media for providing notice of a class action lawsuit to potential class members. With concerns about maintaining objectivity and the possibility that plaintiff’s complaints could go viral, the case presents a new frontier for class action notification, and could have an impact on group sizes, public awareness and impartiality. Read the complete article.
Though the U.S. Patent and Trademark Office (USPTO) has reduced patent prosecution time a bit during the past five years, it still takes, on average, at least 18 months before the patent examiner acts upon an application. Throw in two or more office actions, and the average pendency of a patent application is more than three years from the filing date to either issuance or abandonment. However, a number of programs are available that can significantly reduce prosecution time.
Track One prioritized examination (PE) was introduced in September 2011 and provides expedited examination of a patent application for an additional fee. Though the additional fee is $4,140 ($2,070 for small entities), examination is significantly compressed. On average, PE results in either a notice of allowance or a final rejection in about seven months. Applicants must request PE at the time the application is filed, or at the time a request for continued examination (RCE) is filed.1
Accelerated examination (AE) also continues to be available, but is generally less desirable than prioritized examination. An AE petition only requires an additional fee of $140, but the other requirements are burdensome. In particular, the applicant must not only conduct a patentabilty search before filing the application, but also submit an Examination Support Document (ESD). The ESD must identify where each claim limitation is supported in the specification and describe how each claim is patentable over the closest prior art — including identifying any claim limitations that are disclosed in the prior art. As a result, many applicants will find prioritized examination to be the more affordable option. In addition, the information required to be included in the ESD may affect patent scope during enforcement proceedings against infringers. Continue Reading