Notice from Minnesota Secretary of State regarding pre-2015 limited liability companies in Minnesota

From the MN Secretary of State

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NOTICE: Owners of pre-2015 limited liability companies in Minnesota: Upcoming changes to the law will affect your business.

The Office of the Secretary of State (OSS) wants to remind all limited liability companies formed prior to August 1, 2015 that they will become subject to a new law passed by the 2015 Legislature, Chapter 322C, beginning January 1, 2018.

It is recommended that owners contact their attorneys, accountants or other business advisors well before the end of the calendar year to review the impact of the new law.

The new law pertaining to LLCs may bring significant changes to governance and management, operating agreements, and other aspects of your business.

All owners of an interest in an LLC should be aware of the impending law change, and should review the governing documents of the LLC to determine whether any adjustments are necessary. The law does provide certain provisions to smooth the transition to the new law. For further information on the transition, click here to see an article provided to the Office of the Secretary of State by the LLC and Partnership Committee of the Business Law Section of the Minnesota State Bar Association.

If you decide you need to amend your articles of organization, please use the amendment form here.

Again, it is recommended that owners contact their attorneys, accountants or other business advisors to review the impact of the new law before the end of the year.

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Copyright Office Releases an Updated Draft of the Compendium of U.S. Copyright Office Practices, Third Edition

Copyright logo_new

Reprinted From Library of Congress

NewsNet Issue 666, June 1, 2017

Copyright Office Releases an Updated Draft of the Compendium of U.S. Copyright Office Practices, Third Edition

Acting Register of Copyrights Karyn Temple Claggett today released a revised draft of the Compendium of U.S. Copyright Office Practices, Third Edition. This draft includes the first proposed updates to the Compendium since its release in December 2014. The public draft is available on the Office’s website at https://copyright.gov/comp3/draft.html. It will go into effect on July 3, 2017.

The Compendium is the administrative manual of the Register of Copyrights concerning the mandate and statutory duties of the Copyright Office under Title 17 of the United States Code. See 37 CFR. § 201.2(b)(7). The proposed updates are the result of a comprehensive review of the Office’s practices and procedures. The draft revisions to the registration chapters clarify how and when the Office communicates with applicants and how it handles duplicate claims, deposit requirements, and claims involving multiple works, among other improvements. The update also provides preliminary guidance for claims involving useful articles based on the Supreme Court’s recent decision in Star Athletica v. Varsity Brands.

The draft revisions to the recordation chapter provide additional guidance for recording notices of termination and information on the Office’s new electronic system for the designation of agents. The draft update also addresses recent changes in the Office’s regulations, including the “mailbox rule” for requests for reconsideration, new procedures for removing personally identifiable information, and changes made by the Office’s technical amendments. For a full accounting of draft Compendiumrevisions, read more.

Additionally, the Compendium has been reformatted to improve readability for online and offline users. When the revision is released in final form, it will include improved hyperlinks to provide direct access to legal citations and resources on the Office’s website, as well as improved cross-references between chapters.

Public comments on this draft may be submitted from June 1 to June 30 using the provided form. Seewww.copyright.gov/comp3/draft.html for more information.

Trademark Enforcement Options – FAQ

What are My Trademark Enforcement Options?

Question for Trademark lawyerAnswer: Deciding on the right trademark enforcement options may seem pretty easy, but other options exist.

While trademark owners are not required to sue all trademark infringers, not taking some type of action can weaken the trademark as a “source identifier” and weaken the value of the mark. Trademark Owners who fail to enforce their trademark entirely risk abandoning their rights to the mark. Deciding on your company’s trademark enforcement procedure and policy can be very important.

Settlement

The most obvious alternative to litigation is settlement.  Settlement can be used as a trademark enforcement tool as well and is always an option. Owners of trademark and infringers may be able to agree to some form of concurrent trademark use where one party uses the trademark in one geographic area, and the other uses it somewhere else. Another option for settling a trademark dispute is for one party to license the rights to the other. Settlement agreements allow senior trademark user to lower the risk that the trademarks value as an identifier of source will be diminished by the junior user (or it may cause the value to be weakened as a result of the license).

USPTO Oppositions

In the event the trademark infringer has a federal registration for the mark; you can file a trademark oppositions and cancellation proceedings with the United State Patent and Trademark Office. This won’t necessarily get the infringer to stop using the trademark or servicemark, but it will get their attention.

Customs and Border Control

Trademark enforcement options by US Customs
US Customs plays a valuable roll in trademark enforcement.

An additional option  for enforcing trademark rights, in the case of imported products, is to record a federal trademark registration on the US Customs Office’s watch list.  Customs screens imported goods for infringing trademarks and bars them from entry.

Litigation

If other trademark enforcement options don’t work or are not right for you, the trademark owner can file a lawsuit.  Trademark litigation is typically the most expensive enforcement option.  However, if the use significantly weakens the mark and none of these other options are available, litigation may be your only other option.

Trademark Enforcement Resources

Copyright Cases: Mavrix Photographs, LLC v. LiveJournal, Inc.

Mavrix Photographs, LLC v. LiveJournal, Inc.

 LiveJournal is a social media platform that displays photographs posted by users.  Maverix Photographs sued for copyright infringement of some of its photographs.  LiveJournal raised the defense that it was protected by the safe harbor provisions of the Digital Millennium Copyright Act (DMCA).  The district court agreed and dismissed the case on a summary judgment motion by LiveJournal.

Appeal

The appeals court (1) reversed the district court’s decision, instead finding that the safe harbor would apply if the photographs were posted at the direction of users. However, LiveJournal posted the photographs after a team of volunteer moderators, led by an employee,  reviewed and approved them. The court held that whether the photographs were posted at the direction of users depended on whether the acts of the moderators could be attributed to LiveJournal. Disagreeing with the district court, the panel held that the common law of agency applied to the LiveJournal’s DMCA safe harbor defense. Because there were genuine factual disputes regarding whether the moderators were the defendant’s agents, the panel reversed the district court’s summary judgment and remanded the case for trial.

The panel also discussed the remaining elements of the safe harbor affirmative defense. If an internet service provider shows that the infringing material was posted “at the direction of the user,” it must then also show that (1) it lacked actual or red flag knowledge of the infringing  material; and (2) it did not financially benefit from infringements that it had the right and ability to control. The court held that to fully assess actual knowledge, the fact finder must consider not only whether the copyright holder has given notice of the infringement, but also the service provider’s subjective knowledge of the infringing nature of the posts. The court held that to determine whether the defendant had red flag knowledge, the fact finder would need to assess whether it would be objectively obvious to a reasonable person that material bearing a generic watermark or a watermark referring to the plaintiff’s website was infringing. When assessing the service provider’s right and ability to control the infringements, the fact finder should consider the service provider’s procedures that existed at the time of the infringements and whether the service provider had “something more” than the ability to remove or block access to posted materials. Finally, the panel vacated the district court’s order denying discovery of the moderators’ identities.

Summary based on courts case summary.  Full opinion available HERE.

Court: U.S. Court of Appeals for the Ninth Circuit

Docket: 14-56596

Opinion Date: April 7, 2017

District Court

Contract Consideration – FAQ

WhatQuestion for Trademark lawyer does it mean for a contract to be not enforceable because of a lack of consideration?

Answer: In order for a contract to be enforceable, the mutual promises of the parties must be supported by “consideration.” Considerations means each party gives something of value to the other.  The reason that the courts and legislatures generally require some form of consideration is to insure that the promises being made are not merely a casual statement, and accident, or gratuitous – in short – to make sure the people making the agreement really mean it. Consideration looks at whether the parties have assumed an obligation on the condition of an act or forbearance of another. Except in cases of employment matters, Minnesota courts generally do not look at the adequacy of the consideration being offered – only whether some consideration has been exchanged. For written agreements, the court presumes valid consideration. While adequacy of consideration is not usually analyzed, vague or indefinite terms of consideration (including other conditions of the agreement) may invalidate an agreement, unless it is clear from the subsequent actions.

In contracts related to copyrights and trademarks, this mean that things like royalties might be subject to discontinuance if the only thing that it does is to grant a right to use the IP and it turns out the licensor in fact does not have the rights in the first place (assuming the licensor did not know that the rights were invalid). However, if the contract also goes on to provide that the licensor will discontinue use of the rights for their own use, this forbearance may be enough to be deemed adequate consideration to enforce the contract.

Consideration is important as a part of any contract.   When setting up a licensing arrangement it’s important that you evaluate what the parties are exchanging.

Benefits of a Federal Trademark Registration – FAQ

Question for Trademark lawyerWhat are the benefits of a federal trademark registration?

Answer: There are many benefits of a federal trademark registration, both direct and indirect.  Direct benefits are numerous and include:

  • National protection of the mark;
  • Ability to obtain injunctions stopping infringers;
  • Ability to use the registration to apply for foreign trademark registrations;
  • Greater access to the  federal court system;
  • Assistance from the United States Custom in stopping counterfeit and infringing goods from importation; and
  • Attorneys fees when proper notice has been attached to the goods or services. I

In addition to these considerations, trademark registration provides indirect benefits in the form of being able to point to it when protecting marks used for social media accounts, protect against improper use in search engines, ability to obtain new domains in sunrise periods, and providing great leverage in UDRP and URS disputes against cyber-squatters.

Why Provide these Benefits

Providing these benefits serve two primary functions.  By granting these rights to trademark owners the government helps to incentivise business owners by helping to protect the goodwill embodied in their brands.  This in turn helps protect consumers by letting them know that when they buy a product, that  the product originated from the brand owner and not an impostor.  This ability to build a portfolio of valuable business assets has obvious benefits to any business owner.

 

Call 612-414-3113 to discuss how I can help you with your trademark and copyright related matters.

Trademark Registration Scam – FAQ

Question for Trademark lawyer

I filed a trademark application recently and suddenly I have been receiving papers from all these companies saying that I owe more money to finalize my trademark. Is this some kind of trademark registration scam?

Answer: In December (2016) the Department of Justice announced that two men had pled guilty of a scamming owners of US trademark applicants. Through there company called the Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO), the men, Artashes Darbinyan and Orbel Hakobyan, stole approximately $1.66 million from registrants and applicants of U.S. trademarks through a trademark registration scam by sending fraudulent solicitation for additional filing fees.

The USPTO worked with California law enforcement in this case and takes a number of steps to fight solicitations from companies fraudulently promising to protect trademarks. These questionable solicitations have been growing problem, both nationally and globally over the years. To help combat this, the USPTO has taken a number of steps.

1) Each Office Action regarding an application includes a warning and a link to the USPTO Non-USPTO Solicitations page.

2) A bright orange paper with a warning is sent along with every registration.

3) the USPTO maintains a list of non-USPTO solicitations on our Non-USPTO Solicitations page that the public can use to check against and they encourage the public to contact them with new solicitations so that the list can continually be updated.

Similar scams involve organizations contacting registrants claiming to represent foreign trademark offices, claiming that someone is attempting to register their trademark in their country’s registry. They then offer to register the mark in that country for you to prevent to claim jumper from moving in.

A registered trademark is a valuable asset, and where there’s money, unfortunately, there are bound to be criminal elements lurking. The USPTO continues to provide its ongoing full support to U.S. law enforcement officials working on this issue.

Common Law Trademarks – FAQ

Am I protected with a common law trademark – without federal registration?Q&A: Common Law Trademarks

Q: I recently started professionally my photographs in the US.  I registered the copyright for photos and have decided on new name for my company.   I think the name is pretty distinctive and I am not aware of anyone else selling a similar product by the same name.   Do I have to register my company name as a trademark to prevent others from using it or can I rely on the laws concerning common law trademarks?

A: Kenneth’s answer:  Since your mark is not registered you are limited to the common law trademark rights. Common Law Trademarks are generally limited in scope to the geographic area where the mark is known (think of a restaurant where everyone has heard of it in one town, but is unknown in another). Common law trademarks can be enforced (but not as well and as easily as registered marks) in both state and federal courts. In short, it depends on your long term business objectives.  While registration may not be required for everyone, deciding what’s right requires actual consultation with people knowledgeable about trademarks.

Links for Common Law Trademarks

10 Trademarks Just in Time for Halloween

10 Trademarks Just in Time for Halloween

While some folks might think trademarks can be a little scary, I know that they can also be a little fun.

10-Trademarks-Just-in-Time-for-Halloween-.jpgG&S: Processed cereal-based food to be used as a 10-Trademarks-Just-in-Time-for-Halloween-.jpgbreakfast food, snack food or ingredient for making other foods.Serial (no pun intended) 85120586 and 85120583 
G & S: Beer.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86110135Yes – a stumbling disheveled guy is your image for beer – why didn’t this get rejected as merely descriptive?
G & S: Books in the field of children’s literature.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86271191Whenever I put my child to bed, I always like to talk about monsters too – keeps her quiet when I tell her how she will get eaten-up if she asks for a glass of water.
10-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Parlour games.Serial: 86222077What the heck is a Haint you ask?  Well I had to look it up too – God bless American entrepreneurship.http://www.haintinabox.com/
G&S: Magazines featuring women modeling in horror-themed pictorials for entertainment purposes.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86506372And Playboy decided to get out of the nudie business – perhaps they just weren’t putting enough dripping blood on them?
10-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies.Serial: 85803000My first reaction was “How did this get by Major League Baseball??”, then I noticed that they have filed a pending cancellation action (http://ttabvue.uspto.gov/ttabvue/v?qs=85803000)
10-Trademarks-Just-in-Time-for-Halloween-.jpg86446861G & S: Sporting Goods, namely, skateboards.AAARRGGHHH – Happy Face Vampire
8639254210-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Repair of computers, cell phones, and tablets.I can live with that.  Sometimes my computer feels a little brain dead.
8639600210-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Firearms.I particularly like the description on this one.  “The mark consists of a vampire skull with bullet hole.”   Don’t they know it take stake to the heart – zombies need to be shot in the head.

See How to Kill A Vampire (http://www.gods-and-monsters.com/how-to-kill-a-vampire.html)

8633194410-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: LED (light emitting diode) lighting fixtures.Really?  Shouldn’t the light be used for killing Vampires (see above)