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

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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.

Tattoo Copyrights

Tattoo Copyrights

Can I Copyright my Tattoo?

A while back someone asked me about writing a blog post on copyright law and tattoos. After thinking about it, I realized that the issue is one that provides a great opportunity to illustrate (no pun intended) some core concepts about copyright law that are often misunderstood by the general public and sometimes by creatives.

At issue is who owns the copyright in that tat on your forearm. After all, a tattoo is really no different than other creative work and as long as it is an “original work of authorship” (Most likely) and “fixed in a tangible form” (most defiantly), US law states that the subject matter is subject to copyright protection. A person who originally creates something generally has the exclusive right to control how that “expression” is used by others – they can give it away, sell it, or just prevent anyone else from using it. Tats are no different. When a tattoo artist does a design, whether directly on flesh or inked on a stencil, that creative work is his to control. The fact that it is a work being put onto the body of the customer is really no different than a wedding photographer’s right to control prints of a wedding, a musician controlling copies her composition, or a fine artist preventing prints being made of their work.

Flash

The same holds true for the stencils and “flash.” Flash is the process of putting a design on paper and tattoo designers committing their work to paper, which is then used by tattoo artist to ink the design. Over the years, the creation of “flash” has become an industry in itself, with designers being able to get their designs out to far more people than they could personally ink, by providing the designs to other tattoo shops.

Which leads me to language I found in a licensing agreement for a tattoo flash website “You may not . . .Remove the (c) from any design.” At least on its face, meaning that even when the design is inked, the © must appear. We hope they wont be this literal.

Now where can go out and get that tattoo on my backside “© my mama 1967” ?

Updated: 5/18/2017