Decoding IP Blog https://www.decodingip.com Protorae Law’s DecodingIP™ podcast covers intellectual property IP and technology topics, including patent, trademark, and copyright issues, and fun tech and pop culture IP issues making headlines. We don’t deliver canned, boring summaries of lawsuits or use confusing legalese. Instead, we explain what the intellectual property issues that are grabbing headlines mean for you and your business, in plain English. Wed, 02 Aug 2017 16:32:41 +0000 en-US hourly 1 /wp-content/uploads/decodingip_bulb-1-138x150.png Decoding IP Blog https://www.decodingip.com 32 32 DecodingIP clean DecodingIP decodingIP@protoraelaw.com decodingIP@protoraelaw.com (DecodingIP) DecodingIP Decoding IP Blog https://www.decodingip.com/wp-content/uploads/powerpress/decodingip_3000px_podcast.jpg https://www.decodingip.com podcast@decodingip.com Cloudigy Law’s DecodingIP™ podcast covers intellectual property IP and technology topics, including patent, trademark, and copyright issues, and fun tech and pop culture IP issues making headlines. We don’t deliver canned, boring summaries of lawsuits or use confusing legalese. Instead, we explain what the intellectual property issues that are grabbing headlines mean for you and your business, in plain English. TV-G A Sad Day for Happy-Talk https://www.decodingip.com/sad-day-happy-talk/ Tue, 27 Jun 2017 13:12:59 +0000 https://www.decodingip.com/?p=26330 <p>In a highly anticipated ruling, the Supreme Court of the United States recently held that the disparagement clause of federal trademark law violates the First Amendment. This disparagement clause refused federal trademark registration for trademarks that are likely to disparage people, institutions, or beliefs. All eight participating justices agreed that trademarks are private, not government, […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/antigone/">Antigone Peyton</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> In a highly anticipated ruling, the Supreme Court of the United States recently held that the disparagement clause of federal trademark law violates the First Amendment. This disparagement clause refused federal trademark registration for trademarks that are likely to disparage people, institutions, or beliefs.

All eight participating justices agreed that trademarks are private, not government, speech, and that the disparagement clause discriminates based on viewpoint. Describing it as a “happy-talk clause” “mandating positivity” – because it permits an applicant to register a positive or benign mark, but not a derogatory one – the Court found that the disparagement clause constitutes viewpoint discrimination that cannot withstand constitutional scrutiny.

Join Antigone Peyton and Kandis Koustenis with Decoding IP as they discuss this important decision, which will also affect the widely-publicized Washington Redskins case currently on appeal in the Fourth Circuit, and the future of the trademark’s similar ban on “scandalous” trademarks.

Photo Credit: Matt Wade via Creative Commons license.

This post written by: Antigone Peyton exclusively for Decoding IP Blog

]]>
In a highly anticipated ruling, the Supreme Court of the United States recently held that the disparagement clause of federal trademark law violates the First Amendment. This disparagement clause refused federal trademark registration for trademarks th... All eight participating justices agreed that trademarks are private, not government, speech, and that the disparagement clause discriminates based on viewpoint. Describing it as a “happy-talk clause” “mandating positivity” – because it permits an applicant to register a positive or benign mark, but not a derogatory one – the Court found that the disparagement clause constitutes viewpoint discrimination that cannot withstand constitutional scrutiny.
Join Antigone Peyton and Kandis Koustenis with Decoding IP as they discuss this important decision, which will also affect the widely-publicized Washington Redskins case currently on appeal in the Fourth Circuit, and the future of the trademark’s similar ban on “scandalous” trademarks.
Photo Credit: Matt Wade via Creative Commons license.
]]>
Antigone Peyton clean 31:20
RealDonaldTrump, Don’t Block Your Twitter Followers https://www.decodingip.com/donald-trump-dont-block-twitter-followers/ Thu, 22 Jun 2017 18:03:09 +0000 https://www.decodingip.com/?p=26320 <p>Sometimes a President can’t always do what he wants. But tell that to the owner of the Twitter handle @RealDonaldTrump, who happens to also be the current President of the United States and a new government actor. Mr. Trump has created more controversy by using his personal Twitter handle to send out information relating to […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/antigone/">Antigone Peyton</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> Sometimes a President can’t always do what he wants. But tell that to the owner of the Twitter handle @RealDonaldTrump, who happens to also be the current President of the United States and a new government actor. Mr. Trump has created more controversy by using his personal Twitter handle to send out information relating to his work and thoughts as POTUS while blocking followers who sent negative or critical responses on this microblogging platform. Recently, constitutional advocacy groups and well known former government officials have advised Mr. Trump that he does not have the right to block users on Twitter and told him to knock it off, or they’ll sue. Join Antigone Peyton and Jennifer Atkins for a lively discussion about the Twitter storm and the constitutional issues raised by the President’s use and management of a personal Twitter handle while tweeting about his activities and thoughts as the President.

Photo Credit: Rosaura Ochoa via Creative Commons license.

This post written by: Antigone Peyton exclusively for Decoding IP Blog

]]>
Sometimes a President can’t always do what he wants. But tell that to the owner of the Twitter handle @RealDonaldTrump, who happens to also be the current President of the United States and a new government actor. Mr. Antigone Peyton and Jennifer Atkins for a lively discussion about the Twitter storm and the constitutional issues raised by the President’s use and management of a personal Twitter handle while tweeting about his activities and thoughts as the President.
Photo Credit: Rosaura Ochoa via Creative Commons license.
]]>
Antigone Peyton clean 39:11
Social Media Influencers Get Fyre’d https://www.decodingip.com/social-media-influencers-get-fyred/ Fri, 26 May 2017 15:05:47 +0000 https://www.decodingip.com/?p=26313 <p>The ill-fated Fyre Festival drew delighted mockery from Internet denizens earlier this month and continues to draw lawsuits against the organizers. Social media “influencers” played a huge role in convincing people to buy tickets to the event that never happened and they are not escaping legal action. At least one case has been filed against […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/antigone/">Antigone Peyton</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> The ill-fated Fyre Festival drew delighted mockery from Internet denizens earlier this month and continues to draw lawsuits against the organizers. Social media “influencers” played a huge role in convincing people to buy tickets to the event that never happened and they are not escaping legal action. At least one case has been filed against social media influencers for fraud, negligent misrepresentation, and unfair trade practices under California law. Join Antigone Peyton and Jennifer Atkins as they discuss the pending case and the Federal Trade Commission-mandated obligations on social media influencers and the companies they promote. The Fyre Festival may not have changed the music festival world, but it may yet change the legal landscape of social media marketing for years to come.

Photo Credit: Rosaura Ochoa via Creative Commons license.

This post written by: Antigone Peyton exclusively for Decoding IP Blog

]]>
The ill-fated Fyre Festival drew delighted mockery from Internet denizens earlier this month and continues to draw lawsuits against the organizers. Social media “influencers” played a huge role in convincing people to buy tickets to the event that neve... Antigone Peyton and Jennifer Atkins as they discuss the pending case and the Federal Trade Commission-mandated obligations on social media influencers and the companies they promote. The Fyre Festival may not have changed the music festival world, but it may yet change the legal landscape of social media marketing for years to come.
Photo Credit: Rosaura Ochoa via Creative Commons license.
]]>
Antigone Peyton clean 31:58
Who’s First in Trademark https://www.decodingip.com/whos-first-trademark/ Thu, 11 May 2017 22:19:43 +0000 https://www.decodingip.com/?p=26238 <p>In the United States, trademark rights generally go to the first to use a mark in commerce as opposed to the first to file a mark with the trademark office. But what does that really mean? A recent trademark dispute case, Nexsan v. EMC, made headlines because it seemed to turn that basic premise on […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/kandis-koustenis/">Kandis Koustenis</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> In the United States, trademark rights generally go to the first to use a mark in commerce as opposed to the first to file a mark with the trademark office. But what does that really mean? A recent trademark dispute case, Nexsan v. EMC, made headlines because it seemed to turn that basic premise on its head, awarding trademark rights in the mark “Unity” for data storage systems to the first to file, Nexsan, although EMC claimed use of the mark a year before Nexan’s filing. What drove the decision? While EMC had used the name, it had done so inconsistently, internally, and under strict confidentiality agreements. The court concluded that use with customers under confidentiality restrictions did not constitute public use in commerce as required to establish trademark rights. There are lessons here for protecting intellectual property as you develop new products. Join Kandis Koustenis and Jennifer Atkins as they explain the first use doctrine in trademark, the interaction between trademark and patent law in terms of the impact of public disclosure, the advantages to early trademark filing, and ways you can protect your intellectual property rights during product development.

Photo Credit: opensource.com via Creative Commons license.

This post written by: Kandis Koustenis exclusively for Decoding IP Blog

]]>
In the United States, trademark rights generally go to the first to use a mark in commerce as opposed to the first to file a mark with the trademark office. But what does that really mean? A recent trademark dispute case, Nexsan v. EMC, Kandis Koustenis and Jennifer Atkins as they explain the first use doctrine in trademark, the interaction between trademark and patent law in terms of the impact of public disclosure, the advantages to early trademark filing, and ways you can protect your intellectual property rights during product development.
Photo Credit: opensource.com via Creative Commons license.
]]>
Kandis Koustenis clean 32:20 yes
Compulsory Licenses In The Digital Age https://www.decodingip.com/compulsory-licenses-digital-age/ Thu, 04 May 2017 19:48:11 +0000 https://www.decodingip.com/?p=26221 <p>Are Internet streaming services cable systems under Section 111 of the Copyright Act and therefore entitled to retransmit broadcast television under the compulsory license scheme? Under Section 111, cable systems can rebroadcast traditional broadcast television content in exchange for paying a statutory license fee to the Copyright Office at the Library of Congress. After the […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/jennifer-atkins/">Jennifer Atkins</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> Are Internet streaming services cable systems under Section 111 of the Copyright Act and therefore entitled to retransmit broadcast television under the compulsory license scheme? Under Section 111, cable systems can rebroadcast traditional broadcast television content in exchange for paying a statutory license fee to the Copyright Office at the Library of Congress. After the Supreme Court in American Broadcasting Companies, Inv. V. Aereo compared Internet streaming services to cable companies, FilmOn a company that streams television content over the Internet, argued that under the Supreme Court’s reasoning it should be entitled to participate in the compulsory license scheme. Broadcasters objected and brought two different lawsuits. Join Decoding IP’s Jennifer Atkins and Rebecca Cusey as they discuss the lawsuits, the history of the compulsory license scheme, and the impact of new technologies on our existing copyright legal framework.

Photo Credit: frankieleon via Creative Commons license.

This post written by: Jennifer Atkins exclusively for Decoding IP Blog

]]>
Are Internet streaming services cable systems under Section 111 of the Copyright Act and therefore entitled to retransmit broadcast television under the compulsory license scheme? Under Section 111, cable systems can rebroadcast traditional broadcast t... Jennifer Atkins and Rebecca Cusey as they discuss the lawsuits, the history of the compulsory license scheme, and the impact of new technologies on our existing copyright legal framework.
Photo Credit: frankieleon via Creative Commons license.
]]>
Jennifer Atkins clean 20:54
Copyright and the Meaning of Art https://www.decodingip.com/copyright-meaning-art/ Thu, 27 Apr 2017 22:44:13 +0000 https://www.decodingip.com/?p=26249 <p>The “Fearless Girl” statue sparked headlines around the world in March when it appeared opposite the famous “Charging Bull” statue at Manhattan’s Bowling Green. The statue, commissioned by State Street Global Advisors as an advertisement for its index fund of gender diverse companies, generated a fair amount of controversy. Among those upset about “Fearless Girl” […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/antigone/">Antigone Peyton</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> The “Fearless Girl” statue sparked headlines around the world in March when it appeared opposite the famous “Charging Bull” statue at Manhattan’s Bowling Green. The statue, commissioned by State Street Global Advisors as an advertisement for its index fund of gender diverse companies, generated a fair amount of controversy. Among those upset about “Fearless Girl” is the creator of “Charging Bull” – Arturo Di Modica. Di Modica claims that when the city allowed installation of “Fearless Girl” opposite “Charging Bull” it corrupted the artistic integrity of his artwork. He complains that when he installed “Charging Bull” in 1989, he intended it to be a symbol of the strength of the American free market and that “Fearless Girl” changes that meaning – making the Bull a villain to which the Girl stands up. Di Modica and his lawyers sent a letter alleging copyright violations and demanding that “Fearless Girl” be removed. Does the permitting of a second statute in a public place violate the copyright of the artist of the first statue? Do artists have rights in controlling the meaning of their works? Join Antigone Peyton and Jennifer Atkins as they discuss Di Modica’s potential copyright claims and the varying protection of “moral rights” in the United States and around the world.

Photo Credit: Anthony Quintano via Creative Commons license.

This post written by: Antigone Peyton exclusively for Decoding IP Blog

]]>
The “Fearless Girl” statue sparked headlines around the world in March when it appeared opposite the famous “Charging Bull” statue at Manhattan’s Bowling Green. The statue, commissioned by State Street Global Advisors as an advertisement for its index ... Antigone Peyton and Jennifer Atkins as they discuss Di Modica’s potential copyright claims and the varying protection of “moral rights” in the United States and around the world.
Photo Credit: Anthony Quintano via Creative Commons license.
]]>
Antigone Peyton clean 32:00 yes
Social Media & Copyright: Know Your Rights https://www.decodingip.com/copyright-social-media/ Tue, 10 Jan 2017 11:15:24 +0000 https://cloudigylaw.com/?p=6169 <p>Every couple of years, we see social media users publishing long posts containing broad declarations of copyright with lots of legalese. We want to shout from the rooftop: STOP!  Those posters are not doing anything to preserve their intellectual property rights. They simply spread misinformation about the nature of copyright in the age of social media. But we know that […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/jennifer-atkins/">Jennifer Atkins</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> Every couple of years, we see social media users publishing long posts containing broad declarations of copyright with lots of legalese. We want to shout from the rooftop: STOP!  Those posters are not doing anything to preserve their intellectual property rights. They simply spread misinformation about the nature of copyright in the age of social media. But we know that the continued popularity of those posts means is people are concerned about their rights in their own content. So on a recent Everyday IP show, we took some time to talk about social media platforms and copyright issues.

Know Your Rights

You cannot protect your rights by posting long screeds about copyright. But you can read the terms of service for your social media platform to educate yourself. When you choose to post content on social media, you give a license to the platform host to allow that content to be shown and shared, but you do not lose your rights. Check the terms of service so that you understand exactly how your content will be treated. Use watermarks on photos. Hire services that help you police the use of your own content.

Respect Others’ Rights

You also can follow some some basic rules of the road to protect your own content and to safely use content created by others. When you want to share content, always use in-platform sharing options. Contact content creators directly if you want to share or use their stuff outside of the platform where you found it. Always investigate the origins of creative content you want to use to make sure you know who holds the rights. Better yet: create your own content!

Want to know more about social media and copyrights? Check out the show and let us know if you have questions about how you are using content on social media platforms.

 

This post written by: Jennifer Atkins exclusively for Decoding IP Blog

]]>
Every couple of years, we see social media users publishing long posts containing broad declarations of copyright with lots of legalese. We want to shout from the rooftop: STOP!  Those posters are not doing anything to preserve their intellectual prope... Know Your Rights
You cannot protect your rights by posting long screeds about copyright. But you can read the terms of service for your social media platform to educate yourself. When you choose to post content on social media, you give a license to the platform host to allow that content to be shown and shared, but you do not lose your rights. Check the terms of service so that you understand exactly how your content will be treated. Use watermarks on photos. Hire services that help you police the use of your own content.
Respect Others’ Rights
You also can follow some some basic rules of the road to protect your own content and to safely use content created by others. When you want to share content, always use in-platform sharing options. Contact content creators directly if you want to share or use their stuff outside of the platform where you found it. Always investigate the origins of creative content you want to use to make sure you know who holds the rights. Better yet: create your own content!
Want to know more about social media and copyrights? Check out the show and let us know if you have questions about how you are using content on social media platforms.
 
]]>
Jennifer Atkins clean 30:36 yes
Is That Hashtag A #Trademark? https://www.decodingip.com/is-that-hashtag-a-trademark/ Mon, 28 Nov 2016 16:51:10 +0000 https://decodingip.com/?p=6122 <p>Hastags – a pound sign followed by a word or series of words with no space between – are ubiquitous on social media. People use them to spark and continue conversation about various topics on social media platforms. But can they be trademarked? #Trademark Applications Increasingly, companies are seeking to protect hashtags as trademarks. In 2015, applicants submitted […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/jennifer-atkins/">Jennifer Atkins</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> Hastags – a pound sign followed by a word or series of words with no space between – are ubiquitous on social media. People use them to spark and continue conversation about various topics on social media platforms. But can they be trademarked?2015 05 15_twitter hashtag

#Trademark Applications

Increasingly, companies are seeking to protect hashtags as trademarks. In 2015, applicants submitted more than 1,000 applications to the U.S. Patent & Trademark Office seeking trademark registration for hashtags. But how does trademark work in the context of hashtags, which by their nature are meant to be used by others?

During the summer Olympics, millions of people remarked on the various events as they happened using the hashtag #Rio2016. And the U.S. Olympic Committee made news when it sought to prevent any businesses from using that hashtag on social media accounts, claiming trademark protection. The news of the Committee’s enforcement action against small businesses wishing their hometown athletes luck resulted in social media backlash and in a lawsuit still playing out.

Can I Use My #Hashtag?

What is a business owner to do while the courts and the Trademark office continue to grapple with how hashtags fit into the landscape of trademark law? How are you using hastags on your corporate social media? What kind of trademark considerations should come into play as you build your own brand? Watch and listen to Antigone Peyton and Jennifer Atkins discuss these issues in Cloudigy’s inaugural Everyday IP live stream episode.

This post written by: Jennifer Atkins exclusively for Decoding IP Blog

]]>
Hastags – a pound sign followed by a word or series of words with no space between – are ubiquitous on social media. People use them to spark and continue conversation about various topics on social media platforms. But can they be trademarked? #Trademark Applications
Increasingly, companies are seeking to protect hashtags as trademarks. In 2015, applicants submitted more than 1,000 applications to the U.S. Patent & Trademark Office seeking trademark registration for hashtags. But how does trademark work in the context of hashtags, which by their nature are meant to be used by others?
During the summer Olympics, millions of people remarked on the various events as they happened using the hashtag #Rio2016. And the U.S. Olympic Committee made news when it sought to prevent any businesses from using that hashtag on social media accounts, claiming trademark protection. The news of the Committee’s enforcement action against small businesses wishing their hometown athletes luck resulted in social media backlash and in a lawsuit still playing out.
Can I Use My #Hashtag?
What is a business owner to do while the courts and the Trademark office continue to grapple with how hashtags fit into the landscape of trademark law? How are you using hastags on your corporate social media? What kind of trademark considerations should come into play as you build your own brand? Watch and listen to Antigone Peyton and Jennifer Atkins discuss these issues in Cloudigy’s inaugural Everyday IP live stream episode.
]]>
Jennifer Atkins clean 33:36
Little Pet Shop, Big Right of Publicity Problem https://www.decodingip.com/little-pet-shop-publicity-right/ Fri, 04 Nov 2016 18:19:03 +0000 https://decodingip.com/?p=6115 <p>When Hasbro introduced a hamster named “Harris Faulkner” to its “Littlest Pet Shop” line of animal character toys, it drew a multi-million dollar lawsuit from real-life television journalist Harris Faulkner. The complaint, filed in New Jersey, included claims for violation of the right of publicity under New Jersey common law and false advertising and false […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/kandis-koustenis/">Kandis Koustenis</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> how-big-is-your-little-pet-shop

When Hasbro introduced a hamster named “Harris Faulkner” to its “Littlest Pet Shop” line of animal character toys, it drew a multi-million dollar lawsuit from real-life television journalist Harris Faulkner. The complaint, filed in New Jersey, included claims for violation of the right of publicity under New Jersey common law and false advertising and false endorsement under the Lanham Act.

Name That Right

Ms. Faulkner does not hold a trademark on her name. As we have discussed before, no one can trademark the name of a living person without her consent. But barring someone from obtaining a trademark on a name is not the same as preventing them from using it. That’s where the right of publicity comes in.

The right of publicity is a key tool for the protection of personal intellectual property, like your name or your image. What the right of publicity consists of varies from state to state because it is a creature of state common law, not federal statute. In New Jersey, the right of publicity protects the use of someone’s name or likeness without her consent. Here, Ms. Faulkner argued that Hasbro used both her name and her likeness in its toy hamster.

Hasbro moved to dismiss the case, arguing that there was no similarity in likeness and that Ms. Faulkner could not maintain a case based on her name alone. Hasbro lost and the case quickly settled. The positions taken by the parties in the case highlight the shifting contours of rights over names in the digital age. And the case itself highlights the pitfalls of product naming decisions by business people and their in house counsel.

Join Kandis Koustenis and Jennifer Atkins as they discuss Harris Faulkner’s case against Hasbro, the value of the right of publicity, and practical pointers for product naming decisions for business owners and in-house counsel.

Photo Credit: Jen_rab used with permission and without modification under a creative commons license.

This post written by: Kandis Koustenis exclusively for Decoding IP Blog

]]>
When Hasbro introduced a hamster named “Harris Faulkner” to its “Littlest Pet Shop” line of animal character toys, it drew a multi-million dollar lawsuit from real-life television journalist Harris Faulkner. The complaint, filed in New Jersey, When Hasbro introduced a hamster named “Harris Faulkner” to its “Littlest Pet Shop” line of animal character toys, it drew a multi-million dollar lawsuit from real-life television journalist Harris Faulkner. The complaint, filed in New Jersey, included claims for violation of the right of publicity under New Jersey common law and false advertising and false endorsement under the Lanham Act.
Name That Right
Ms. Faulkner does not hold a trademark on her name. As we have discussed before, no one can trademark the name of a living person without her consent. But barring someone from obtaining a trademark on a name is not the same as preventing them from using it. That’s where the right of publicity comes in.
The right of publicity is a key tool for the protection of personal intellectual property, like your name or your image. What the right of publicity consists of varies from state to state because it is a creature of state common law, not federal statute. In New Jersey, the right of publicity protects the use of someone’s name or likeness without her consent. Here, Ms. Faulkner argued that Hasbro used both her name and her likeness in its toy hamster.
Hasbro moved to dismiss the case, arguing that there was no similarity in likeness and that Ms. Faulkner could not maintain a case based on her name alone. Hasbro lost and the case quickly settled. The positions taken by the parties in the case highlight the shifting contours of rights over names in the digital age. And the case itself highlights the pitfalls of product naming decisions by business people and their in house counsel.
Join Kandis Koustenis and Jennifer Atkins as they discuss Harris Faulkner’s case against Hasbro, the value of the right of publicity, and practical pointers for product naming decisions for business owners and in-house counsel.
Photo Credit: Jen_rab used with permission and without modification under a creative commons license.
]]>
Kandis Koustenis clean 25:15
The Billion Dollar Copyright https://www.decodingip.com/billion-dollar-copyright/ Sat, 20 Aug 2016 00:47:37 +0000 https://decodingip.com/?p=6071 <p>The use of photographs and other digital images on the web can be a tricky business. Copyright owners are increasingly taking steps to police their images by monitoring web content using automated means like web scrapers. Many online content creators have had to learn the hard way about the pitfalls and best practices in the […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/kandis-koustenis/">Kandis Koustenis</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> The use of photographs and other digital images on the web can be a tricky business. Copyright owners are increasingly taking steps to police their images by monitoring web content using automated means like web scrapers. Many online content creators have had to learn the hard way about the pitfalls and best practices in the world of copyrighted online content. We’ve previously discussed these issues in other contexts. But a recent headline-making case has brought attention to yet another twist for online copyrights in the form of a billion dollar copyright suit.

2016-08-19_highsmith_sues_getty

A Public Gift

Carol Highsmith is a well-known photographer who has traveled all over America on a mission “to produce a nationwide visual study of the United States in the early 21st Century.” Through her non-profit organization devoted to this mission, Ms. Highsmith has donated her works to the Library of Congress, which has called her donation “one of the greatest acts of generosity in the history of the Library.” The Carol M. Highsmith Archive, which is expected to grow to more than 100,000 photographs covering the entirety of the United States, is accessible royalty-free via the Library’s website. The only condition for public access and use of the images is to attribute them to the Library of Congress’ Highsmith archive.

Meanwhile, stock photo agency Getty Images and other related companies such as Alamy have been selling thousands of Ms. Highsmith’s images to the public for a fee, without ever identifying Ms. Highsmith as the author or informing their customers that the photographs are actually available for free via the Library of Congress. Remarkably, Getty and its affiliates would have been able to continue flying under the radar had they not sent Ms. Highsmith a threatening letter accusing her of copyright infringement for using one of her own photographs on her website and demanding payment of $120!

The Digital Millennium Copyright Act

In response to the letter, Ms. Highsmith sued Getty and its related companies for violation of the Digital Millennium Copyright Act (DMCA), seeking more than $1 billion in damages based on 18,755 separate violations of the DMCA – one violation for each of Ms. Highsmith’s photos on the Getty website. Section 1202 of the DMCA makes it unlawful to distribute a work with false copyright management information, or to remove copyright management information altogether. “Copyright management information” includes work-identifying information such as the title and author of the work, but it also includes terms and conditions for use of the work.

The lawsuit accuses Getty and the other defendants of violating the DMCA by falsely holding themselves out as the exclusive copyright owner, and falsely claiming that a user must purchase a copyright license from Getty in order to use the Highsmith images. Thus, the lawsuit states, Getty and the other defendants have “misappropriated Ms. Highsmith’s generous gift to the American people.” So far, none of the defendants have filed a formal answer to the initial complaint. In a public statement, however, Getty acknowledged that the images are in the public domain, but still maintains that it has the right to charge a fee for distributing the material.

Join Jennifer Atkins and Kandis Koustenis in their discussion of this high-profile case and its implications for copyright ownership and attribution, the public domain, and the DMCA.

Photo credit: Martin de Witte

This post written by: Kandis Koustenis exclusively for Decoding IP Blog

]]>
The use of photographs and other digital images on the web can be a tricky business. Copyright owners are increasingly taking steps to police their images by monitoring web content using automated means like web scrapers. We’ve previously discussed these issues in other contexts. But a recent headline-making case has brought attention to yet another twist for online copyrights in the form of a billion dollar copyright suit.

A Public Gift
Carol Highsmith is a well-known photographer who has traveled all over America on a mission “to produce a nationwide visual study of the United States in the early 21st Century.” Through her non-profit organization devoted to this mission, Ms. Highsmith has donated her works to the Library of Congress, which has called her donation “one of the greatest acts of generosity in the history of the Library.” The Carol M. Highsmith Archive, which is expected to grow to more than 100,000 photographs covering the entirety of the United States, is accessible royalty-free via the Library’s website. The only condition for public access and use of the images is to attribute them to the Library of Congress’ Highsmith archive.
Meanwhile, stock photo agency Getty Images and other related companies such as Alamy have been selling thousands of Ms. Highsmith’s images to the public for a fee, without ever identifying Ms. Highsmith as the author or informing their customers that the photographs are actually available for free via the Library of Congress. Remarkably, Getty and its affiliates would have been able to continue flying under the radar had they not sent Ms. Highsmith a threatening letter accusing her of copyright infringement for using one of her own photographs on her website and demanding payment of $120!
The Digital Millennium Copyright Act
In response to the letter, Ms. Highsmith sued Getty and its related companies for violation of the Digital Millennium Copyright Act (DMCA), seeking more than $1 billion in damages based on 18,755 separate violations of the DMCA – one violation for each of Ms. Highsmith’s photos on the Getty website. Section 1202 of the DMCA makes it unlawful to distribute a work with false copyright management information, or to remove copyright management information altogether. “Copyright management information” includes work-identifying information such as the title and author of the work, but it also includes terms and conditions for use of the work.
The lawsuit accuses Getty and the other defendants of violating the DMCA by falsely holding themselves out as the exclusive copyright owner, and falsely claiming that a user must purchase a copyright license from Getty in order to use the Highsmith images. Thus, the lawsuit states, Getty and the other defendants have “misappropriated Ms. Highsmith’s generous gift to the American people.” So far, none of the defendants have filed a formal answer to the initial complaint. In a public statement, however, Getty acknowledged that the images are in the public domain, but still maintains that it has the right to charge a fee for distributing the material.
Join Jennifer Atkins
Kandis Koustenis clean 40:23
Trademark Lessons From Crazy Horse Strip Clubs https://www.decodingip.com/trademark-lessons-crazy-horse/ Tue, 16 Aug 2016 20:24:44 +0000 https://decodingip.com/?p=6061 <p>Better known for juicy tales of mobsters, adult film stars, and general shenanigans, the now-closed Las Vegas strip club “Crazy Horse Too” plays a role in providing important lessons in trademark law. The Ninth Circuit Court of Appeals recently put to rest a dispute over the “Crazy Horse” trademark for strip clubs in the United […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/jennifer-atkins/">Jennifer Atkins</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> Better known for juicy tales of mobsters, adult film stars, and general shenanigans, the now-closed Las Vegas strip club “Crazy Horse Too” plays a role in providing important lessons in trademark law. The Ninth Circuit Court of Appeals recently put to rest a dispute over the “Crazy Horse” trademark for strip clubs in the United States. The case involved one registration, three refusals, a cancellation proceeding, two contracts, and one lawsuit, collectively illustrating important lessons for trademark owners.

2016-08-16_crazy_horse

From the Champs Elysees to the Vegas Strip

People have used “Crazy Horse” for strip club names in multiple locations across the United States after the original venue famously opened on the Avenue des Champs Elysees in Paris in the 1960s. Yet, somewhat surprisingly, it was not until 2006 that a North Carolina operator registered the trademark in the United States. When club owners in Nevada and Ohio also tried to register the mark, they were denied.

A cancellation proceeding ensued and was settled with a co-existence agreement between the Las Vegas, Nevada club operator and the North Carolina mark holder, leaving the trademark intact. Later, the North Carolina owner of the mark assigned the mark to the Ohio applicant, who set about licensing the brand throughout the United States. However, the Las Vegas club owner refused to pay license fees and the dispute ended up in court pitting the co-existence agreement against the trademark assignment. The district court held that the co-existence agreement was valid against the assigned trademark and that the Las Vegas owner did not owe any licensing fees. The Ninth Circuit affirmed.

Join Kandis Koustenis and Jennifer Atkins as they discuss the interesting but complex history of the case and the important lessons that can be learned for trademark holders about licensing and co-existence agreements.

Photo credit: THX0477

This post written by: Jennifer Atkins exclusively for Decoding IP Blog

]]> Better known for juicy tales of mobsters, adult film stars, and general shenanigans, the now-closed Las Vegas strip club “Crazy Horse Too” plays a role in providing important lessons in trademark law. The Ninth Circuit Court of Appeals recently put to ...
From the Champs Elysees to the Vegas Strip
People have used “Crazy Horse” for strip club names in multiple locations across the United States after the original venue famously opened on the Avenue des Champs Elysees in Paris in the 1960s. Yet, somewhat surprisingly, it was not until 2006 that a North Carolina operator registered the trademark in the United States. When club owners in Nevada and Ohio also tried to register the mark, they were denied.
A cancellation proceeding ensued and was settled with a co-existence agreement between the Las Vegas, Nevada club operator and the North Carolina mark holder, leaving the trademark intact. Later, the North Carolina owner of the mark assigned the mark to the Ohio applicant, who set about licensing the brand throughout the United States. However, the Las Vegas club owner refused to pay license fees and the dispute ended up in court pitting the co-existence agreement against the trademark assignment. The district court held that the co-existence agreement was valid against the assigned trademark and that the Las Vegas owner did not owe any licensing fees. The Ninth Circuit affirmed.
Join Kandis Koustenis and Jennifer Atkins as they discuss the interesting but complex history of the case and the important lessons that can be learned for trademark holders about licensing and co-existence agreements.
Photo credit: THX0477
]]>
Jennifer Atkins clean 23:27 What Does Brexit Mean for European and UK Patents? (Part 2) https://www.decodingip.com/brexit-european-and-uk-patents-part-2/ Tue, 09 Aug 2016 23:58:23 +0000 https://decodingip.com/?p=6039 <p>The European Union (EU) is an economic and political partnership involving 28 European countries. It began after World War II, in large part because many Europeans felt that countries which trade and work closely with each other are less likely to go to war and attempt to invade their partner states. Now, the EU is […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/antigone/">Antigone Peyton</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> The European Union (EU) is an economic and political partnership involving 28 European countries. It began after World War II, in large part because many Europeans felt that countries which trade and work closely with each other are less likely to go to war and attempt to invade their partner states. Now, the EU is about to lose an important member of this single market, which has allowed products and people to flow freely across national borders for many years. This is because last month, the United Kingdom (UK) held a voter referendum, and the majority of voters (52% to 48%) decided that the UK should leave the EU partnership.

There has been a lot of discussion regarding the expected fallout from the UK’s historic vote to leave the EU. One area of uncertainly relates to the effect its exit will have on the current European patent system and processes available to protect technology in the UK. In this blog post and podcast episode, Cloudigy Law’s Jennifer Atkins and Antigone Peyton go over presently available European and UK patent protection options and the highly anticipated Unitary Patent System, as well as what effect Brexit might have upon them.

2016-08-09_brexit_part_2

The European Patent System

Currently, companies seeking UK patent protection can use the European Patent Convention (EPC) option. This patent process allows a company to file a single European Patent Application with the European Patent Office (EPO). The EPO will examine the application, and if the technology is found to be patentable, then a European Patent will be granted.

The EPO patent must then be validated in any country (such as the UK) that is a signatory to the EPC for the patent to be enforceable in that country. Validation involves a variety of requirements which differ from country to country. For some, a translation to one of the approved languages (such as French, Spanish, etc.) and payment of a national stage acceptance fee is required, among other things. Then there are the maintenance fees for keeping a patent alive in each country once it has been granted. Parts of this process are very expensive and cumbersome for patent owners, which is why the new Unitary Patent option described below is seen as an attractive alternative.

The European Patent is independent of the EU. The UK is a member of the European Patent Convention and Brexit does not affect its membership in this convention. As such, Brexit will not change the current European Patent system or the ability to use the EPO as the central filing and examination clearing center for a patent that is ultimately secured in the UK (after the national stage fee is paid).

United Kingdom Patent Applications

An applicant can also file a patent application directly with the UK’s Intellectual Property Office (IPO). The IPO will examine a UK patent application, and if they agree that its subject matter is patentable, then a UK patent will be issued. This is the option that companies usually pursue when they wish to file for patent protection in only one or a few EU countries. Generally, the UK examination process is faster than the EPO examination process, which is then followed by a national stage filing in the UK. Again, as is the case with the current European Patent system and EPO, Brexit will not affect patents that were obtained directly through the UK’s IPO.

Moreover, the UK is also a signatory to the independent Paris Convention Treaty (PCT), which provides important intellectual property rights and protections to all member countries. For instance, a patent application filed in one member country is entitled to the filing date benefits of a corresponding patent application previously filed in another member country, as long as the two applications are not filed more than 12 months apart. Currently, the Paris Convention Treaty has 176 member countries, including the United States. Patent applications filed with the UK’s IPO receive the PCT filing date benefit (where applicable). Brexit will not affect the UK’s participation in the PCT nor the benefits the UK derives from it.

The Future of the Unitary Patent System and Unified Patent Court

Brexit will, however, impact the Unitary Patent System and Unified Patent Court. For years, the EU has been working on a system that would lead to a single patent that is enforceable across all EU member countries. In 2012, the European Parliament passed regulations to implement unitary patent protection across 24 European countries (including the UK) that helped develop and launch the program. As it currently stands, the Unitary Patent System is a EU-only system, even though it is not part of the official EU framework. It was expected to go into effect in 2017 or 2018, once the requisite member country ratification requirements are met. However, as a result of Brexit, it is highly likely that the Unitary Patent System will be put on hold a while longer until the UK and the rest of the EU determine the terms of their new relationship with respect to intellectual property, cross border trade, immigration, and other similarly important matters.

Additionally, the EU has been working on a judicial body that would have the power to enforce Unitary Patents—the Unified Patent Court. The idea behind this court system is that a patent could be enforced in several European countries without requiring a party to file separate enforcement actions in each country in which it intends to enforce its right.

At this point in time, 11 member states have ratified the UPC agreement, including France. The clause for ratification states that the 3 countries with the most patent validations in the year prior to the ratification triggering conversion to this new system would have to reach a consensus in order for the new system to take effect. Presently, the largest member states in terms of the number of patent validations are Germany, France, and the UK. However, once the UK officially leaves the EU, Italy will take up the third slot.

The UK could still participate in the UPC while it negotiates its exit, but only if it undertakes certain necessary ratifications. The more likely scenario is for it to hold off on taking any action relating to the Unified Patent System and Unitary Patent Court while it attempts to juggle the terms of its impending exit from the EU.

Another interesting aspect of the Unified Patent Court is the fact that London is currently the seat of an important division of the new central enforcement venue — the pharmaceutical court. It seems unlikely that the other member states would allow such an important court to reside outside of the EU, so the parties will have to rethink the terms of the UK’s involvement in this new court system. Likewise, it is possible that UK firms will not be allowed to participate and represent clients before the Unified Patent Court once all of the post-Brexit issues are resolved.

The Takeaways Regarding UK Patent Protection

So what does Brexit mean for the future of European patents and the existing patent protection and filing systems? Should businesses start investing in gold instead of UK patents? For the time being, no. This is because Brexit will not affect the existing patent processing and protection systems, in contrast to the EU trademark system. But definitely stay tuned — as the UK invokes Article 50 and begins the process of negotiating its exit from the EU, things will become very interesting as the remaining EU members continue their efforts to consolidate and coordinate patent protection options.

Photo credit: Mike Licht

This post written by: Antigone Peyton exclusively for Decoding IP Blog

]]>
The European Union (EU) is an economic and political partnership involving 28 European countries. It began after World War II, in large part because many Europeans felt that countries which trade and work closely with each other are less likely to go t... There has been a lot of discussion regarding the expected fallout from the UK’s historic vote to leave the EU. One area of uncertainly relates to the effect its exit will have on the current European patent system and processes available to protect technology in the UK. In this blog post and podcast episode, Cloudigy Law’s Jennifer Atkins and Antigone Peyton go over presently available European and UK patent protection options and the highly anticipated Unitary Patent System, as well as what effect Brexit might have upon them.

The European Patent System
Currently, companies seeking UK patent protection can use the European Patent Convention (EPC) option. This patent process allows a company to file a single European Patent Application with the European Patent Office (EPO). The EPO will examine the application, and if the technology is found to be patentable, then a European Patent will be granted.
The EPO patent must then be validated in any country (such as the UK) that is a signatory to the EPC for the patent to be enforceable in that country. Validation involves a variety of requirements which differ from country to country. For some, a translation to one of the approved languages (such as French, Spanish, etc.) and payment of a national stage acceptance fee is required, among other things. Then there are the maintenance fees for keeping a patent alive in each country once it has been granted. Parts of this process are very expensive and cumbersome for patent owners, which is why the new Unitary Patent option described below is seen as an attractive alternative.
The European Patent is independent of the EU. The UK is a member of the European Patent Convention and Brexit does not affect its membership in this convention. As such, Brexit will not change the current European Patent system or the ability to use the EPO as the central filing and examination clearing center for a patent that is ultimately secured in the UK (after the national stage fee is paid).
United Kingdom Patent Applications
An applicant can also file a patent application directly with the UK’s Intellectual Property Office (IPO). The IPO will examine a UK patent application, and if they agree that its subject matter is patentable, then a UK patent will be issued. This is the option that companies usually pursue when they wish to file for patent protection in only one or a few EU countries. Generally, the UK examination process is faster than the EPO examination process, which is then followed by a national stage filing in the UK. Again, as is the case with the current European Patent system and EPO, Brexit will not affect patents that were obtained directly through the UK’s IPO.
Moreover, the UK is also a signatory to the independent Paris Convention Treaty (PCT), which provides important intellectual property rights and protections to all member countries. For instance, a patent application filed in one member country is entitled to the filing date benefits of a corresponding patent application previously filed in another member country, as long as the two applications are not filed more than 12 months apart. Currently, the Paris Convention Treaty has 176 member countries, including the United States. Patent applications filed with the UK’s IPO receive the PCT filing date ben...]]>
Antigone Peyton clean 25:27
Converse Case Proves Secondary Meaning Requirements Are Getting Tougher https://www.decodingip.com/converse-secondary-meaning/ Fri, 05 Aug 2016 23:40:35 +0000 https://decodingip.com/?p=6031 <p>A couple of months ago we spoke about copyright protection for clothing designs. Now it’s time to talk about shoes and trademarks. Converse, the maker of the ubiquitous Chuck Taylor All Star sneakers, filed lawsuits against thirty shoe manufacturers, importers, and retailers over the last two years alleging trademark infringement of its shoe design. Converse […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/jennifer-atkins/">Jennifer Atkins</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> A couple of months ago we spoke about copyright protection for clothing designs. Now it’s time to talk about shoes and trademarks. Converse, the maker of the ubiquitous Chuck Taylor All Star sneakers, filed lawsuits against thirty shoe manufacturers, importers, and retailers over the last two years alleging trademark infringement of its shoe design. Converse sought a general exclusion order from the International Trade Commission preventing the importation of any shoe with its design elements. These are protected by three separate trademarks, two of which relate to patterns on the sole of the shoe and one concerning the toecap and mid-sole design.

2016-08-05_converse_podcast

Recent ITC Ruling

This past July, the International Trade Commission surprisingly ruled that one of Converse’s trademark registrations was invalid. According to the ITC, the covered elements, a toecap and stripes on the mid-sole, did not meet the requisite secondary meaning under trademark law. While the ITC held that Converse does have valid trademarks in the designs on the sole of the shoes, that ruling likely gives little solace to Converse.

The Converse case – which no doubt will be appealed to the Federal Circuit – highlights yet again the difficulties fashion designers and manufacturers face in seeking to protect their intellectual property.

Join Kandis Koustenis and Jennifer Atkins as they discuss the Converse case, the requirements of secondary meaning, and the various tools available for protecting fashion designs.

Photo credit: Paleontour

This post written by: Jennifer Atkins exclusively for Decoding IP Blog

]]>
A couple of months ago we spoke about copyright protection for clothing designs. Now it’s time to talk about shoes and trademarks. Converse, the maker of the ubiquitous Chuck Taylor All Star sneakers, filed lawsuits against thirty shoe manufacturers, copyright protection for clothing designs. Now it’s time to talk about shoes and trademarks. Converse, the maker of the ubiquitous Chuck Taylor All Star sneakers, filed lawsuits against thirty shoe manufacturers, importers, and retailers over the last two years alleging trademark infringement of its shoe design. Converse sought a general exclusion order from the International Trade Commission preventing the importation of any shoe with its design elements. These are protected by three separate trademarks, two of which relate to patterns on the sole of the shoe and one concerning the toecap and mid-sole design.

Recent ITC Ruling
This past July, the International Trade Commission surprisingly ruled that one of Converse’s trademark registrations was invalid. According to the ITC, the covered elements, a toecap and stripes on the mid-sole, did not meet the requisite secondary meaning under trademark law. While the ITC held that Converse does have valid trademarks in the designs on the sole of the shoes, that ruling likely gives little solace to Converse.
The Converse case – which no doubt will be appealed to the Federal Circuit – highlights yet again the difficulties fashion designers and manufacturers face in seeking to protect their intellectual property.
Join Kandis Koustenis and Jennifer Atkins as they discuss the Converse case, the requirements of secondary meaning, and the various tools available for protecting fashion designs.
Photo credit: Paleontour
]]>
Jennifer Atkins clean 17:36
The Defend Trade Secrets Act: New Federal Law, New Litigation Options https://www.decodingip.com/dtsa-new-litigation-options/ Wed, 03 Aug 2016 23:13:11 +0000 https://decodingip.com/?p=6023 <p>On May 11, 2016, President Obama enacted a new federal trade secret protection law known as the Defend Trade Secrets Act of 2016 (DTSA). The DTSA makes federal protection against the misappropriation of trade secrets available to private parties. Before the DTSA, private parties who sought to protect their trade secrets from misappropriation were limited […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/kandis-koustenis/">Kandis Koustenis</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> On May 11, 2016, President Obama enacted a new federal trade secret protection law known as the Defend Trade Secrets Act of 2016 (DTSA). The DTSA makes federal protection against the misappropriation of trade secrets available to private parties. Before the DTSA, private parties who sought to protect their trade secrets from misappropriation were limited to bringing claims under state law. With the enactment of the DTSA, trade secret protections are no longer limited to individual state jurisdictions as U.S. federal law reaches across all states.

2016-08-03_defend_trade_secret_podcast_part2

Previous Cloudigy blog posts and podcast episodes focused on the DTSA’s practical business implications—including important changes to contracts, policies, and procedures dealing with trade secrets and other confidential information. The DTSA also provides important new litigation tools to trade secret owners. Antigone Peyton outlines these litigation options in detail in part two of her blog post series on the new Act. Join Antigone Peyton and Kandis Koustenis in today’s podcast as they continue to explore these new litigation options.

In addition to providing the ability to bring forth claims directly to federal courts, the new federal protections offered under the DTSA provides trade secret owners with important new litigation options, including:

Broad Protection for Trade Secrets

The new federal law seemingly expands the definition of trade secrets in comparison to the various states’ trade secret laws. Most state laws describe a limited list of specific categories or types of information that can qualify as a trade secret. However, under the DTSA, nearly any type of information (including “all forms and types of financial, business, scientific, technical, economic, or engineering information”) may qualify as a trade secret under the DTSA, provided it is kept secret and the owner has taken reasonable steps to maintain its secrecy.

New “Secret” Trade Secret Seizure Orders

The DTSA also includes a powerful remedy for violation of another party’s trade secret rights that is currently unavailable under any state trade secret laws. Under the DTSA, a company that has experienced trade secret theft can now file a request with the courts to seize the trade secret without having to notify the party being accused of theft. Nonetheless, it is important to note that this type of ex parte seizure procedure is to be used only under extraordinary circumstances.

Trade secret owners seeking to take advantage of this seizure remedy must meet strict evidentiary requirements. The party requesting seizure must show, for example: (i) that the alleged trade secret thief “would destroy, move, hide, or otherwise make such matter inaccessible to the court” if the trade secret owner were to provide notice to the alleged thief; (ii) a detailed description of the particular property to be seized; and (iii) that other less drastic remedies, such as a preliminary injunction, are inadequate. Thus, companies seeking to utilize the seizure process will need to undertake detailed factual investigations and be prepared to furnish evidence that satisfies the abovementioned requirements before filing a seizure request.

Join Antigone Peyton and Kandis Koustenis in this podcast as they discuss these and other litigation highlights every trade secret owner should know about.

Photo credit: elhombredenegro

This post written by: Kandis Koustenis exclusively for Decoding IP Blog

]]>
On May 11, 2016, President Obama enacted a new federal trade secret protection law known as the Defend Trade Secrets Act of 2016 (DTSA). The DTSA makes federal protection against the misappropriation of trade secrets available to private parties.
Previous Cloudigy blog posts and podcast episodes focused on the DTSA’s practical business implications—including important changes to contracts, policies, and procedures dealing with trade secrets and other confidential information. The DTSA also provides important new litigation tools to trade secret owners. Antigone Peyton outlines these litigation options in detail in part two of her blog post series on the new Act. Join Antigone Peyton and Kandis Koustenis in today’s podcast as they continue to explore these new litigation options.
In addition to providing the ability to bring forth claims directly to federal courts, the new federal protections offered under the DTSA provides trade secret owners with important new litigation options, including:
Broad Protection for Trade Secrets
The new federal law seemingly expands the definition of trade secrets in comparison to the various states’ trade secret laws. Most state laws describe a limited list of specific categories or types of information that can qualify as a trade secret. However, under the DTSA, nearly any type of information (including “all forms and types of financial, business, scientific, technical, economic, or engineering information”) may qualify as a trade secret under the DTSA, provided it is kept secret and the owner has taken reasonable steps to maintain its secrecy.
New “Secret” Trade Secret Seizure Orders
The DTSA also includes a powerful remedy for violation of another party’s trade secret rights that is currently unavailable under any state trade secret laws. Under the DTSA, a company that has experienced trade secret theft can now file a request with the courts to seize the trade secret without having to notify the party being accused of theft. Nonetheless, it is important to note that this type of ex parte seizure procedure is to be used only under extraordinary circumstances.
Trade secret owners seeking to take advantage of this seizure remedy must meet strict evidentiary requirements. The party requesting seizure must show, for example: (i) that the alleged trade secret thief “would destroy, move, hide, or otherwise make such matter inaccessible to the court” if the trade secret owner were to provide notice to the alleged thief; (ii) a detailed description of the particular property to be seized; and (iii) that other less drastic remedies, such as a preliminary injunction, are inadequate. Thus, companies seeking to utilize the seizure process will need to undertake detailed factual investigations and be prepared to furnish evidence that satisfies the abovementioned requirements before filing a seizure request.
Join Antigone Peyton and clean 33:52
Music & Politics Don’t Mix – Or Do They? https://www.decodingip.com/music-politics-dont-mix/ Wed, 27 Jul 2016 23:28:57 +0000 https://decodingip.com/?p=6003 <p>It’s political convention time once again and that means more intellectual property drama! This political season has already given us trademark disputes involving cease and desist letters and living person name registrations. Now we have copyright issues – specifically, music copyright issues. Politicians and political parties often choose popular music as the background for their conventions. […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/jennifer-atkins/">Jennifer Atkins</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> It’s political convention time once again and that means more intellectual property drama! This political season has already given us trademark disputes involving cease and desist letters and living person name registrations. Now we have copyright issues – specifically, music copyright issues. Politicians and political parties often choose popular music as the background for their conventions. Convention organizers and ad makers use music to convey a certain tone or underscore a particular message.

Music Copyright Issues

Artist Complaints

And with their use of that music comes complaints from artists who are concerned about the unauthorized use or implied association of the artist with a political message. This campaign cycle is no different than any other, with artists complaining about the use of their music. More often than not, those complaints are simply based on the fact that the artist does not want to be associated with a given politician or political party through the use of their music. But sometimes, those complaints are generated because the politician or political party in question did not obtain the appropriate license to use the music in the first place.

Licenses?

Music – in both written and recorded form – is subject to copyright protection. To use music in a public performance or in an advertisement, one must obtain a license to do so. In addition to complaints from artists, this campaign cycle already gave rise to at least one copyright infringement lawsuit – a case against the Ted Cruz campaign for using music in a political ad where the terms of the license expressly excluded its use in political advertisements. But even in instances where licenses have been properly obtained, politicians may decide against the use of a particular song in the face of mounting artist complaints, especially when those complaints are set to music created on a popular late night comedy show.

Join Antigone Peyton and Jennifer Atkins as they discuss the music copyright issues raised by the 2016 campaign and the ways politicians can avoid the public controversies and artists can exert more control over the use of their music.

Photo credit: Nan Palermo

This post written by: Jennifer Atkins exclusively for Decoding IP Blog

]]> It’s political convention time once again and that means more intellectual property drama! This political season has already given us trademark disputes involving cease and desist letters and living person name registrations. involving cease and desist letters and living person name registrations. Now we have copyright issues – specifically, music copyright issues. Politicians and political parties often choose popular music as the background for their conventions. Convention organizers and ad makers use music to convey a certain tone or underscore a particular message.

Artist Complaints
And with their use of that music comes complaints from artists who are concerned about the unauthorized use or implied association of the artist with a political message. This campaign cycle is no different than any other, with artists complaining about the use of their music. More often than not, those complaints are simply based on the fact that the artist does not want to be associated with a given politician or political party through the use of their music. But sometimes, those complaints are generated because the politician or political party in question did not obtain the appropriate license to use the music in the first place.
Licenses?
Music – in both written and recorded form – is subject to copyright protection. To use music in a public performance or in an advertisement, one must obtain a license to do so. In addition to complaints from artists, this campaign cycle already gave rise to at least one copyright infringement lawsuit – a case against the Ted Cruz campaign for using music in a political ad where the terms of the license expressly excluded its use in political advertisements. But even in instances where licenses have been properly obtained, politicians may decide against the use of a particular song in the face of mounting artist complaints, especially when those complaints are set to music created on a popular late night comedy show.
Join Antigone Peyton and Jennifer Atkins as they discuss the music copyright issues raised by the 2016 campaign and the ways politicians can avoid the public controversies and artists can exert more control over the use of their music.
Photo credit: Nan Palermo
]]>
Jennifer Atkins clean 27:28 Brexit Intellectual Property Issues (Part 1) https://www.decodingip.com/brexit-intellectual-property-issues-part1/ Mon, 25 Jul 2016 23:50:07 +0000 https://decodingip.com/?p=5969 <p>On June 23, 2016, in a referendum dubbed “Brexit” voters in the United Kingdom (UK) opted to leave the European Union (EU), sending economic and political shockwaves around the globe. Obviously, the actual Brexit process will not be taking place immediately. The UK must first formally notify the EU of its intention to leave the […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/kandis-koustenis/">Kandis Koustenis</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> On June 23, 2016, in a referendum dubbed “Brexit” voters in the United Kingdom (UK) opted to leave the European Union (EU), sending economic and political shockwaves around the globe. Obviously, the actual Brexit process will not be taking place immediately. The UK must first formally notify the EU of its intention to leave the Union in order to begin a two-year negotiation period for ratifying the terms of the UK’s withdrawal.

After the vote, a number of enterprising souls sought to trademark the term “Brexit” for a variety of goods and services. But where should they seek trademark registration? The very thing they seek to trademark may have significant impacts on intellectual property rights in both the EU and the UK, including patents, industrial designs, and trademarks. Although the precise details of the impact of Brexit on intellectual property rights won’t fully be known until exit negotiations are complete, trademark owners should consider and prepare for the potential effects.

Brexit
Is your intellectual property affected?

Effect of Brexit on EU and UK Trademarks

One of the benefits of the EU system is a member-wide trademark registration known as an EU trademark (until recently, known as a community trademark or CTM) providing rights in all member states. Before the EU trademark system, trademark rights were protected only on an individual country basis with so-called “national” registrations. The EU trademark system exists as a complement to the national registration regime; it did not replace the national registrations. Unsurprisingly, however, brand owners across the globe have taken advantage of this ability to protect the entire EU with just a single trademark application.

Once the UK is officially no longer a member of the EU, any existing EU registrations will no longer extend protection to the UK, unless the parties agree otherwise. As such, brand owners could be left without trademark protection in the UK if they do not own corresponding UK national registrations. While it is likely that the UK will seek to implement procedures to convert existing EU trademarks to UK national registrations without loss of priority, trademark owners should be prepared for the potential loss of protection in the UK. Conversely, if a EU registration is solely based upon the use of the mark in the UK, that registration will be subject to cancellation.

Effect of Brexit on Intellectual Property Agreements

Due to the effect on trademarks, any agreements involving trademark rights in the EU and UK are potentially impacted. Any existing or new license agreements that include the EU or UK should be reviewed for possible Brexit implications. For example, does the agreement define the EU as it existed at a certain point in time, or as constituted occasionally? Amendments may be necessary to ensure UK coverage.

Join Jennifer Atkins and Kandis Koustenis as they discuss steps businesses can take now to prepare for the UK’s eventual exit, including trademark audits and systematic contract reviews.

Photo credit: Jeff Djevdet

 

 

This post written by: Kandis Koustenis exclusively for Decoding IP Blog

]]>
On June 23, 2016, in a referendum dubbed “Brexit” voters in the United Kingdom (UK) opted to leave the European Union (EU), sending economic and political shockwaves around the globe. Obviously, the actual Brexit process will not be taking place immedi... After the vote, a number of enterprising souls sought to trademark the term “Brexit” for a variety of goods and services. But where should they seek trademark registration? The very thing they seek to trademark may have significant impacts on intellectual property rights in both the EU and the UK, including patents, industrial designs, and trademarks. Although the precise details of the impact of Brexit on intellectual property rights won’t fully be known until exit negotiations are complete, trademark owners should consider and prepare for the potential effects.

Effect of Brexit on EU and UK Trademarks
One of the benefits of the EU system is a member-wide trademark registration known as an EU trademark (until recently, known as a community trademark or CTM) providing rights in all member states. Before the EU trademark system, trademark rights were protected only on an individual country basis with so-called “national” registrations. The EU trademark system exists as a complement to the national registration regime; it did not replace the national registrations. Unsurprisingly, however, brand owners across the globe have taken advantage of this ability to protect the entire EU with just a single trademark application.
Once the UK is officially no longer a member of the EU, any existing EU registrations will no longer extend protection to the UK, unless the parties agree otherwise. As such, brand owners could be left without trademark protection in the UK if they do not own corresponding UK national registrations. While it is likely that the UK will seek to implement procedures to convert existing EU trademarks to UK national registrations without loss of priority, trademark owners should be prepared for the potential loss of protection in the UK. Conversely, if a EU registration is solely based upon the use of the mark in the UK, that registration will be subject to cancellation.

Effect of Brexit on Intellectual Property Agreements
Due to the effect on trademarks, any agreements involving trademark rights in the EU and UK are potentially impacted. Any existing or new license agreements that include the EU or UK should be reviewed for possible Brexit implications. For example, does the agreement define the EU as it existed at a certain point in time, or as constituted occasionally? Amendments may be necessary to ensure UK coverage.
Join Jennifer Atkins and Kandis Koustenis as they discuss steps businesses can take now to prepare for the UK’s eventual exit, including trademark audits and systematic contract reviews.
Photo credit: Jeff Djevdet
 
 
]]>
Kandis Koustenis clean 20:49
Does Your Business Comply with the New Federal Trade Secret Law? https://www.decodingip.com/business-comply-new-federal-trade-secret-law/ Tue, 19 Jul 2016 17:37:57 +0000 https://decodingip.com/?p=5950 <p>Understanding the New Federal Trade Secret Law On May 11, 2016, President Obama enacted a new federal trade secret protection law as part of an update to the Economic Espionage Act of 1996 (EEA). The new trade secret law, known as the Defend Trade Secrets Act of 2016 (DTSA), makes federal protection against the misappropriation […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/kandis-koustenis/">Kandis Koustenis</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> Understanding the New Federal Trade Secret Law

On May 11, 2016, President Obama enacted a new federal trade secret protection law as part of an update to the Economic Espionage Act of 1996 (EEA). The new trade secret law, known as the Defend Trade Secrets Act of 2016 (DTSA), makes federal protection against the misappropriation of trade secrets available to private parties. (Previously, the EEA considered trade secret theft solely as a federal crime.)

Before the DTSA, private parties who sought to protect their trade secrets from misappropriation were limited to bringing forth a claim under state law. And, although most states have trade secret protection laws, those state laws vary. Added to the sometimes difficult question of which state’s law to apply, this often caused a lack of uniformity and predictability to trade secret protection. The new DTSA does not preempt state trade secret laws, but adds additional protection for trade secrets under federal law. Plaintiffs seeking to remedy trade secret theft will now have the option to proceed under state law, federal law, or both.

2016-07-14_trade-secret-business-compliance

The DTSA not only provides the right to sue directly in federal court, but also, expands the definition of trade secrets, adds new remedies, and includes express “whistleblower” protections. All companies dealing with sensitive competitive information will be affected by this new law. But it is the whistleblower protections that present the most immediate and practical impact for companies.

This blog post and accompanying podcast (the first of a two-part series) focuses on the practical steps companies should start taking in order to benefit from the full protections of this new law.

New Protection for Whistleblowers

The DTSA gives immunity to employees, independent contractors and consultants who disclose trade secrets, in confidence, to government officials for the purpose of reporting violations of the law. And employers are now required to give notice of this immunity in any contract or agreement that governs the use of a trade secret or other confidential information.

If an employer fails to include this immunity notice, it may not recover exemplary (punitive) damages or attorneys’ fees in any lawsuit it might bring against an employee for improper disclosure of trade secrets.

To meet this notice requirement, employers can provide the notice in the contract or agreement, or provide a cross-reference to a policy document. It is therefore important for employers to review any of their contracts and policies that deal with the use or disclosure of trade secrets – such as non-disclosure agreements, employment contracts, employee handbooks, consulting contracts, independent contractor agreements, and collaboration and joint venture agreements – to make sure they contain the required whistleblower notice.

Join Antigone Peyton and Kandis Koustenis as they discuss these and other practical steps business owners should start taking in order to comply with and enjoy the full protections of this new federal trade secret law

Photo credit: Steven Depolo

This post written by: Kandis Koustenis exclusively for Decoding IP Blog

]]>
Understanding the New Federal Trade Secret Law On May 11, 2016, President Obama enacted a new federal trade secret protection law as part of an update to the Economic Espionage Act of 1996 (EEA). The new trade secret law, On May 11, 2016, President Obama enacted a new federal trade secret protection law as part of an update to the Economic Espionage Act of 1996 (EEA). The new trade secret law, known as the Defend Trade Secrets Act of 2016 (DTSA), makes federal protection against the misappropriation of trade secrets available to private parties. (Previously, the EEA considered trade secret theft solely as a federal crime.)
Before the DTSA, private parties who sought to protect their trade secrets from misappropriation were limited to bringing forth a claim under state law. And, although most states have trade secret protection laws, those state laws vary. Added to the sometimes difficult question of which state’s law to apply, this often caused a lack of uniformity and predictability to trade secret protection. The new DTSA does not preempt state trade secret laws, but adds additional protection for trade secrets under federal law. Plaintiffs seeking to remedy trade secret theft will now have the option to proceed under state law, federal law, or both.

The DTSA not only provides the right to sue directly in federal court, but also, expands the definition of trade secrets, adds new remedies, and includes express “whistleblower” protections. All companies dealing with sensitive competitive information will be affected by this new law. But it is the whistleblower protections that present the most immediate and practical impact for companies.
This blog post and accompanying podcast (the first of a two-part series) focuses on the practical steps companies should start taking in order to benefit from the full protections of this new law.
New Protection for Whistleblowers
The DTSA gives immunity to employees, independent contractors and consultants who disclose trade secrets, in confidence, to government officials for the purpose of reporting violations of the law. And employers are now required to give notice of this immunity in any contract or agreement that governs the use of a trade secret or other confidential information.
If an employer fails to include this immunity notice, it may not recover exemplary (punitive) damages or attorneys’ fees in any lawsuit it might bring against an employee for improper disclosure of trade secrets.
To meet this notice requirement, employers can provide the notice in the contract or agreement, or provide a cross-reference to a policy document. It is therefore important for employers to review any of their contracts and policies that deal with the use or disclosure of trade secrets – such as non-disclosure agreements, employment contracts, employee handbooks, consulting contracts, independent contractor agreements, and collaboration and joint venture agreements – to make sure they contain the required whistleblower notice.
Join Antigone Peyton and Kandis Koustenis as they discuss these and other practical steps business owners should start taking in order to comply with and enjoy the full protections of this new federal trade secret law
Photo credit: Steven Depolo
]]>
Kandis Koustenis clean 30:50
Making the Trump Name Drumpf Again? https://www.decodingip.com/trump-trademark-name-drumpf/ Mon, 13 Jun 2016 11:44:42 +0000 https://decodingip.com/?p=5867 <p>The 2016 presidential contest once again pushed trademark law into the news. A few weeks ago, it was the Democrats. Now it’s the Republicans. Well, sort of. John Oliver’s late-night show aired a segment critical of Republican presidential candidate Donald Trump. In the segment, Oliver pointed out that the Trump family name was originally “Drumpf” […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/jennifer-atkins/">Jennifer Atkins</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> The 2016 presidential contest once again pushed trademark law into the news. A few weeks ago, it was the Democrats. Now it’s the Republicans. Well, sort of.
2016-06-13_trump-trademark-drumpf
John Oliver’s late-night show aired a segment critical of Republican presidential candidate Donald Trump. In the segment, Oliver pointed out that the Trump family name was originally “Drumpf” and launched a campaign to “make Donald Drumpf again.” A few days before the segment aired, Drumpf Industries, LLC – a company created by Oliver – applied for a trademark on “Drumpf”.

The Trademark Office recently issued an office action rejecting the “Drumpf” application based on the section of the Trademark Act that prohibits the registration as a trademark of a name of a living person without their consent. But does that section of the Act apply here where the name in question is not a name actually being used by the living person? Drumpf Industries can still respond to the office action to support the application. What will they say?

Join Antigone Peyton and Jennifer Atkins as they discuss contours of the case and the broader implications of the application of the “living person” prohibition.

Photo credit: Alex Hanson

This post written by: Jennifer Atkins exclusively for Decoding IP Blog

]]>
The 2016 presidential contest once again pushed trademark law into the news. A few weeks ago, it was the Democrats. Now it’s the Republicans. Well, sort of. John Oliver’s late-night show aired a segment critical of Republican presidential candidate Don... Democrats. Now it’s the Republicans. Well, sort of.



John Oliver’s late-night show aired a segment critical of Republican presidential candidate Donald Trump. In the segment, Oliver pointed out that the Trump family name was originally “Drumpf” and launched a campaign to “make Donald Drumpf again.” A few days before the segment aired, Drumpf Industries, LLC – a company created by Oliver – applied for a trademark on “Drumpf”.
The Trademark Office recently issued an office action rejecting the “Drumpf” application based on the section of the Trademark Act that prohibits the registration as a trademark of a name of a living person without their consent. But does that section of the Act apply here where the name in question is not a name actually being used by the living person? Drumpf Industries can still respond to the office action to support the application. What will they say?
Join Antigone Peyton and Jennifer Atkins as they discuss contours of the case and the broader implications of the application of the “living person” prohibition.
Photo credit: Alex Hanson
]]>
Jennifer Atkins clean 27:20
Oracle’s APIs are Copyrighted, But Jury Decides Google’s Android Software Use is “Fair” https://www.decodingip.com/oracle-api-copyrighted-android-fair-use/ Tue, 07 Jun 2016 18:13:20 +0000 https://decodingip.com/?p=5860 <p>Many software companies, developers, and legal eagles have been watching Oracle’s and Google’s face-off over the question of whether Google’s Android software infringes a copyright Oracle acquired through its purchase of Sun Microsystems. After 6 years of legal wrangling, a jury recently found that Google’s Android system does not infringe Oracle’s copyright in Java code […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/antigone/">Antigone Peyton</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> Many software companies, developers, and legal eagles have been watching Oracle’s and Google’s face-off over the question of whether Google’s Android software infringes a copyright Oracle acquired through its purchase of Sun Microsystems. After 6 years of legal wrangling, a jury recently found that Google’s Android system does not infringe Oracle’s copyright in Java code because its use of certain portions of that code is “fair use.” This means that the jury did not have to consider Oracle’s claim that Google owed it $9 billion in damages for copying portions of Java that are application programming interfaces (APIs), without taking a license.
2016-06-07_oracle-vs-google-jury-decision
As this case wound through the courts, we’ve kept you up to date on some significant legal and practical issues the parties raised. For instance, the question of whether application programming interfaces (APIs) should be copyrightable at all has been a hotly debated topic throughout this case. In the first trial in this case, the district court judge–who taught himself how to program using Java code in order to better understand the technology–ruled that Google had copied portions of Java but that these copied portions were simply APIs and not protected by copyright law. The Federal Circuit, an appeals court, disagreed, and concluded that the “structure, sequence, and organization” of an API is in fact protectable by copyright. The Federal Circuit then returned the case to the trial court to determine whether Google’s copying of Oracle’s Java code was, in fact, an infringement of Oracle’s copyright.

Another important question the courts and then the jury considered, is: if APIs are copyrightable, can another party use those APIs without a license in the name of “fair use.” In the second trial, which was held last month in San Francisco, a jury found that Google’s use of the API code was protected as “fair use.” Fair use is a determination that the material in question is properly protected by copyright but that an otherwise unauthorized use is nonetheless allowed as a matter of policy to serve the public interest. Oracle has already announced that it will appeal the jury’s decision to the Federal Circuit, in hopes of obtaining another victory in its copyright infringement claim.

Join Antigone Peyton and Jennifer Atkins as they discuss the history of the Oracle v. Google case and the important issues raised by the case, including the interplay between strong copyright protections and the practical impact of this decision on developers and tech companies that use portions of software code.

Photo credit: Rob Buhlman

This post written by: Antigone Peyton exclusively for Decoding IP Blog

]]>
Many software companies, developers, and legal eagles have been watching Oracle’s and Google’s face-off over the question of whether Google’s Android software infringes a copyright Oracle acquired through its purchase of Sun Microsystems.


As this case wound through the courts, we’ve kept you up to date on some significant legal and practical issues the parties raised. For instance, the question of whether application programming interfaces (APIs) should be copyrightable at all has been a hotly debated topic throughout this case. In the first trial in this case, the district court judge–who taught himself how to program using Java code in order to better understand the technology–ruled that Google had copied portions of Java but that these copied portions were simply APIs and not protected by copyright law. The Federal Circuit, an appeals court, disagreed, and concluded that the “structure, sequence, and organization” of an API is in fact protectable by copyright. The Federal Circuit then returned the case to the trial court to determine whether Google’s copying of Oracle’s Java code was, in fact, an infringement of Oracle’s copyright.
Another important question the courts and then the jury considered, is: if APIs are copyrightable, can another party use those APIs without a license in the name of “fair use.” In the second trial, which was held last month in San Francisco, a jury found that Google’s use of the API code was protected as “fair use.” Fair use is a determination that the material in question is properly protected by copyright but that an otherwise unauthorized use is nonetheless allowed as a matter of policy to serve the public interest. Oracle has already announced that it will appeal the jury’s decision to the Federal Circuit, in hopes of obtaining another victory in its copyright infringement claim.
Join Antigone Peyton and Jennifer Atkins as they discuss the history of the Oracle v. Google case and the important issues raised by the case, including the interplay between strong copyright protections and the practical impact of this decision on developers and tech companies that use portions of software code.
Photo credit: Rob Buhlman
]]>
Antigone Peyton clean 19:42
Cheerleading Fashions Copyright Clash https://www.decodingip.com/cheerleading-fashion-copyright-clash/ Wed, 18 May 2016 15:04:14 +0000 https://decodingip.com/?p=5846 <p>Can you copyright your fashions? In general, clothing designs: i.e., the cut and design of articles of clothing, are not protected by copyright law because the statute expressly excludes protection for “useful articles.” One of the murkiest issues in copyright law is how to determine what transforms a “useful article” otherwise not protected by copyright […]</p> <p>This post written by: <a rel="nofollow" href="https://www.decodingip.com/author/kandis-koustenis/">Kandis Koustenis</a> exclusively for <a rel="nofollow" href="https://www.decodingip.com">Decoding IP Blog</a></p> Can you copyright your fashions? In general, clothing designs: i.e., the cut and design of articles of clothing, are not protected by copyright law because the statute expressly excludes protection for “useful articles.” One of the murkiest issues in copyright law is how to determine what transforms a “useful article” otherwise not protected by copyright into something creative that is worthy of copyright protection. The United States Supreme Court will wade into the issue next term in Star Athletica, LLC v. Varsity Brands, Inc. 2016-05-18_varsity-sports

Varsity Brands is the world’s largest manufacturer and distributor of cheerleading uniforms. When Star Athletica entered the market with its first catalog of cheerleading uniforms, Varsity sued claiming that Star’s use of chevrons and stripes on its uniforms infringed on Varsity’s copyrights. The district court in Tennessee granted summary judgment in favor of defendant Star, finding that the use of stripes and chevrons on cheerleading uniforms was not conceptually separable from the useful purpose of the uniform. In other words, a cheerleading uniform is not subject to copyright protection because the patterns on the uniform are part of what makes it identifiable as a cheerleading uniform.

The Sixth Circuit disagreed, finding that the stripes and chevrons could be viewed as separate and copyrightable. Star sought and received a grant of certiorari from the U.S. Supreme Court. The various appellate courts have struggled mightily with determining when something that is otherwise a “useful article” has elements that may be copyrightable, creating a series of tests and standards that are often confusing, inconsistently applied, and somewhat contradictory.

Join Kandis Koustenis and Jennifer Atkins as they discuss the history of copyright in the fashion industry and the issues raised by the case, including the interplay between copyright and design patent protection.

Photo credit: SD Dirk

This post written by: Kandis Koustenis exclusively for Decoding IP Blog

]]>
Can you copyright your fashions? In general, clothing designs: i.e., the cut and design of articles of clothing, are not protected by copyright law because the statute expressly excludes protection for “useful articles. Star Athletica, LLC v. Varsity Brands, Inc.
Varsity Brands is the world’s largest manufacturer and distributor of cheerleading uniforms. When Star Athletica entered the market with its first catalog of cheerleading uniforms, Varsity sued claiming that Star’s use of chevrons and stripes on its uniforms infringed on Varsity’s copyrights. The district court in Tennessee granted summary judgment in favor of defendant Star, finding that the use of stripes and chevrons on cheerleading uniforms was not conceptually separable from the useful purpose of the uniform. In other words, a cheerleading uniform is not subject to copyright protection because the patterns on the uniform are part of what makes it identifiable as a cheerleading uniform.
The Sixth Circuit disagreed, finding that the stripes and chevrons could be viewed as separate and copyrightable. Star sought and received a grant of certiorari from the U.S. Supreme Court. The various appellate courts have struggled mightily with determining when something that is otherwise a “useful article” has elements that may be copyrightable, creating a series of tests and standards that are often confusing, inconsistently applied, and somewhat contradictory.
Join Kandis Koustenis and Jennifer Atkins as they discuss the history of copyright in the fashion industry and the issues raised by the case, including the interplay between copyright and design patent protection.
Photo credit: SD Dirk
]]>
Kandis Koustenis clean 28:46