• IP BLAWG

    Puzzle Me This Land O' Lakes

    Beverly A. Berneman
    Tuesday, 15 March 2016

    The Seventh Circuit is puzzled how anyone could confuse Land O’ Lakes dairy products with Land O’ Lakes fishing tackle.  It all started when Land O’ Lakes (the dairy guys) wanted Land O’ Lakes (the fishing tackle guy,) to license the name. The fishing tackle guy refused.  So the dairy guys opposed the fishing tackle guy’s trademark application. Then the fishing tackle guy filed suit. In the end, the Seventh Circuit affirmed the district court’s judgment dismissing all claims. Judge Posner stated: “Can one imagine Land O' Lakes advertising: ‘we sell the finest dairy products and the best fishing tackle?’ . . . So in this unusual case two firms sued each other though neither had been, is, or is likely to be harmed in the slightest by the other. The suit was rightly dismissed.”

    WHY YOU SHOULD KNOW THIS. It’s natural to want to protect your trademark from anyone who uses it. Certainly, you want to protect against customer confusion. But there are limits. Likelihood of confusion does not arise when two parties adopt the same or similar word or phrase and use it for diverse products or services. Just ask Pandora for music and Pandora for jewelry.

  • IP BLAWG

    Surprise Yosemite! Someone Else Owns Your Trademarks

    Beverly A. Berneman
    Tuesday, 08 March 2016

    Someone registered the trademarks associated with Yosemite National Park and it wasn’t the National Park Service. How could that happen? Until recently, the National Park Service had a concessions contract with Delaware North Parks & Resorts Inc. to run Yosemite National Park attractions, including the Ahwahnee Hotel, the Wawona Hotel, Curry Village and Badger Pass. Delaware North lost the contract in an open bidding process. Delaware North filed suit claiming that the bidding process was unfair. Then Delaware North pointed out that one of its subsidiaries had registered the trademarks associated with Yosemite. Now Delaware North won’t let the National Park Service and the successful concessions contractor use the trademarks. The National Park Service has brought a proceeding before the Trademark Trial and Appeal Board seeking cancellation of the registrations based upon “False Association”, “Abandonment” and “Dilution”.

    WHY YOU SHOULD KNOW THIS: This situation gives rise to a bunch of issues. First, and probably foremost, foundations, not-for-profit organizations, museums and parks can register trademarks just like everyone else. The National Park Service is probably kicking itself. Yosemite’s hotels and tourist destinations have been around for over 80 years. Why didn’t someone think to register the trademarks? Second, Delaware North may not have had a right to register those marks in the first place. Delaware North’s rights were specifically related to its concession agreement with no independent rights. The examining attorney in at least one trademark application questioned this. According to the National Park Service, Delaware North submitted redacted copies of the concession agreement to give the impression that Delaware North had a right to register the marks. Third, what good are those marks going to be to Delaware North now that it lost the concessions contract? How valuable can those trademarks be outside of Yosemite? One last thing, look carefully at the picture. The Wawona name is still on the hotel. This picture appeared on Yosemite’s website this weekend.

  • IP BLAWG

    Can I Copyright This?

    Beverly A. Berneman
    Tuesday, 01 March 2016

    In 1991, the U.S. Supreme Court decided that the standard of creativity for copyright protection required a minimal level of creativity. Over the last year, numerous decisions explored how low that level of creativity can go.  The First Circuit Court of Appeals held that a chicken sandwich and its recipe are not copyrightable (Norberto-Colon Lorenzana et al. v. South American Restaurants, Corp.). The Ninth Circuit Court of Appeals held that series of yoga poses is not copyrightable (Yoga College of India LP et al. v. Evolution Yoga LLC et al.). However, the Ninth Circuit Court of Appeals held that the Batmobile is copyrightable because it is considered a “character” (DC Comics v. Towle).

    WHY YOU SHOULD KNOW THIS. Copyright protects works of authorship. Protection begins once the works are fixed in a tangible means of expression. Even though it’s not necessary, registration of the works is always advisable. Registration establishes a presumption of authorship and gives the author access to the Federal Courts and a host of remedies in the case of infringement. Many businesses have works that might be, at least partially, copyrightable. For instance, a menu in a restaurant could be copyrightable if it had more than just a list of items and their prices, such as graphics, pictures, designs and narratives. Blogs or the white papers that appear on a website are also copyrightable. And so much more depending on the level of creativity involved. Every business should consider the copyrightability of important facets of their business and then properly protect it.

  • IP BLAWG

    Apple v. FBI

    Beverly A. Berneman
    Tuesday, 23 February 2016

    After the shootings in San Bernardino last December, the FBI recovered an iPhone used by one of the shooters. The FBI doesn’t know the password and can’t unlock the phone. The FBI wants Apple to hack its own software by creating a back door into the phone. No denying that the FBI has a serious problem. If it tries different passwords looking for the right one, the iPhone might lock down. The FBI wants Apple to create a new operating system that will allow the FBI access to the phone. But it’s not so simple. As Apple CEO, Tim Cook said in an open letter to customers, “Specifically, the FBI wants us to make a new version of the iPhone operating system, circumventing several important security features, and install it on an iPhone recovered during the investigation. In the wrong hands, this software — which does not exist today — would have the potential to unlock any iPhone in someone’s physical possession.” See the entire letter at http://www.apple.com/customer-letter/.

    WHY YOU SHOULD KNOW THIS: The San Bernardino shootings were a horrific act of terrorism. Exploring the shooter’s call history, contacts, etc. might lead to some valuable information in fighting terrorism. But, the FBI’s request has too many unintended consequences. First, there’s a Constitutional problem. Tim Cook’s open letter addresses the First Amendment and security concerns which are, and should be, the primary focus. Second, there’s a damaging business consequence. The value of Apple’s brand is partially linked to the robust security of its devices. If that security is compromised, Apple’s brand could suffer. Third, the FBI wants Apple to hack its own security measures at its own expense, literally and figuratively. Apple will need to dedicate personnel and resources to create a whole new operating system. Fourth, once the hack exists, it can come back and haunt all of us in the future.

  • IP BLAWG

    That's Not What I Signed Up For

    Beverly A. Berneman
    Tuesday, 16 February 2016

    The New York State Division of Human Rights used a licensed photo of Avril Nolan in an ad about HIV. Now it’s dealing with a judgment for defamation. What went wrong? It all started when Avril posed for a photo that was going to be used for an article about New Yorkers who are interested in music. Imagine her surprise when the New York State Division of Human Rights (“NYSDHR”) used her photo with the caption “I Am Positive (+), I have Rights,” implying that she was HIV positive. Avril is not HIV positive. She sued NYSDHR for defamation. NYSDHR argued that it licensed the photo from Getty Images so it shouldn’t be liable for defamation. Avril won against the NYSDHR. Avril also sued Getty Images for violating her right of publicity. Getty Images argued that the photo was used in violation of the license so it wasn’t liable to Avril. Getty settled with Avril after its motion to dismiss was denied.

    WHY YOU SHOULD KNOW THIS. Photos, footage or images can greatly enhance a business’ public presence. Licensing the images from stock agencies like Getty Images, Corbis or Flickr can protect a business from claims of infringement. NYSDHR tried to get it right by licensing Avril’s photo. NYSDHR went wrong when it lulled itself into a false sense of security by: (1) not reading the use limitations in the license; and (2) failing to consider whether Avril would be damaged by making it appear that she was HIV positive when, in fact, she wasn’t (which is surprising for a Human Rights agency). BTW, you can find a picture of the offending ad in news reports about the lawsuits. It didn’t seem right to use the image for this post. So I didn’t.

  • IP BLAWG

    What Happens to "G-r-reat Ideas"

    Beverly A. Berneman
    Tuesday, 02 February 2016

    Kyle Wilson had a great idea for a cereal breakfast bar. So he submitted to Kellogg Co.’s "G-r-reat Ideas” portal. When Kellogg used the idea without paying him, Wilson sued. Kellogg’s portal allowed submissions of ideas. But the terms and conditions said that Kellogg wasn’t obligated to pay for a submitted idea; even if Kellogg decided to use it. Wilson lost his suit against Kellogg. The court held that Kellogg’s terms and conditions clearly warned idea givers, like Wilson.

    WHY YOU SHOULD KNOW THIS. Kellogg taught Wilson, and us, a valuable lesson about idea submissions. Idea submissions are all about expectations. The idea giver usually wants something in return from the idea receiver. The idea receiver is not always ready, willing or able to fulfill the idea giver’s expectations. Hollywood sees this all the time. That’s why no one in Hollywood accepts unsolicited treatments or scripts. The best for both sides is what Kellogg did. It invited idea submissions. But, the idea submission portal made it clear that Kellogg would not be obligated to pay for the idea. This managed expectations on both sides.

  • IP BLAWG

    Playing at Trademark Use Gets Nowhere

    Beverly A. Berneman
    Tuesday, 26 January 2016

    The owner of the PLAYDOM trademark learned that trademark use and “website under construction” don’t play nice together. David Couture got a registered trademark in 2008 for PLAYDOM. His specimen of use was a website page that described his company’s services. But it also said “Website under construction”. Years later, another company tried to register PLAYDOM. The applicant, Playdom Inc. (later acquired by Disney Co.) was refused registration based upon a likelihood of confusion with Couture’s trademark. Playdom Inc. brought a cancellation proceeding and won. The Federal Circuit Court affirmed the TTAB cancellation holding that the website advertised Couture’s readiness to perform services but he didn’t render any services until 2 years later. This decision has come under fire because prior case law saw “offering services” to be the same as “rendering services”. Critics also argue that the Lanham Act (15 U.S.C. §1053) establishes a different standard for use for services; a standard that Couture met. So the fact that Couture was offering his services should have been enough.

    WHY YOU SHOULD KNOW THIS. Trademark rights depend on the use of the mark in connection with goods and services. For some, this case demonstrates that there can be a fine line between developing a trademark and actually using it. For others, this case demonstrates a break with established precedent to create a new standard of use for services. No matter which side you’re on, the fact is that we now have to be very careful in establishing use for a service trademark.

  • IP BLAWG

    In Memoriam: David Bowie

    Beverly A. Berneman
    Tuesday, 19 January 2016

    David Bowie, a musical and cultural icon known for pushing boundaries, passed away on January 10, 2016. Did you know that he also pushed the boundaries on monetizing Intellectual Property? In 1997, Bowie was looking for a new revenue stream. With the help of investment banker, David Pullman, Bowie issued asset-based securities for current and future revenues from 25 of his albums recorded before 1990. And thus the term ‘Bowie Bonds” came into being. Bowie used some of the money he raised to buy back songs from his former manager. Although revenue from the bonds suffered some bumps in the road acclimatizing to digital downloads, Bowie Bonds are still considered a success. So successful that other famous musicians, such as James Brown and Iron Maiden, also used the Bowie Bond model to raise revenue.

    WHY YOU SHOULD KNOW THIS. David Bowie’s career was a study in breaking the mold. He taught us not to be relegated to accepting the familiar path as the only path. When we free our minds, we can change our thinking. And sometimes when we change our thinking, we can create new and successful methods for achieving our goals. Thank you David and rest in peace. We’ll miss you.

  • IP BLAWG

    "Bleeping" Trademark

    Beverly A. Berneman
    Tuesday, 12 January 2016

    Thanks to The Slants, the Washington Redskins’ trademark may live to fight another day. In June 2014, the Washington Redskins lost the trademark of their name because the term “redskins” was offensive. The Slants, an all Asian American dance rock band, tried to register their name as a trademark. The USPTO refused registration on the basis that the mark was “offensive” and “disparaging”. The Slants appealed the ruling. The Federal Circuit Court overturned the ruling. The court acknowledged that disparaging marks can be considered hurtful speech that harms members of oft-stigmatized communities. But the First Amendment protects even hurtful speech. According to the court, the government (in the form of the USPTO), cannot refuse to register disparaging marks because it disapproves of the expressive message conveyed by the marks. That means, the Washington Redskins may have a good shot at getting their trademark reinstated.

    WHY YOU SHOULD KNOW THIS: On the surface, the decision seems to authorize anyone to attempt to register a trademark no matter how offensive and hurtful it might be to a group of people. But there are still limits. Just as the First Amendment has a limitations such as not screaming ‘FIRE’ in a crowded theater, there still will be limitations on trademark registration. On the practical side, choosing an offensive or disparaging trademark could have market consequences by alienating a group of potential customers. So a business considering the adoption of an offensive or disparaging trademark should proceed cautiously.

  • IP BLAWG

    Caterpillar Gets Caught in its Own Butterfly Net

    Beverly A. Berneman
    Tuesday, 05 January 2016

    Caterpillar, Inc. is dealing with a $74 million trade secret verdict for misappropriating a supplier’s trade secrets. The supplier, Miller UK Ltd., had an agreement with Caterpillar to sell components. Miller brought suit against Caterpillar alleging that Caterpillar used its power as Miller’s largest customer to force disclosure of Miller’s trade secrets. Apparently, Caterpillar’s strategy was to cancel Miller’s contract and then produce its own components without having to pay Miller. The jury found in favor of Miller.

    TAKE AWAY: This is a prime example of overreaching by one side and placating an important customer by giving away the store on the other side. What could both sides have done differently? On Caterpillar’s part, management has to have set policies against using unsavory means to an end. Clearly, this is an abuse of bargaining power that had dire consequences for Caterpillar. On the other hand, Miller should have had a set policy about trade secret disclosures. Employees should know what they can and can’t disclose. And if disclosure of trade secrets is considered necessary to keep a customer (which would be rare), the disclosure decision should be made by top level management after determining the purpose of the requested disclosure and setting disclosure parameters and restrictions on use after disclosure.

  • IP BLAWG

    Santa Claus is Coming to Songwriter's Heirs

    Beverly A. Berneman
    Tuesday, 22 December 2015

    The heirs of the composer of “Santa Claus is Coming to Town” got an early Christmas present from the Second Circuit Court of Appeals. The song was composed in the 1930s. The 1976 Copyright Act allows a copyright owner to terminate a license during a five year period beginning 35 years after the date of execution of the license. The composer’s heirs served a notice of termination on the publisher, EMI. Due to confusion created by the intricacies between pre and post 1976 copyright law, plus the existence of two license grants that were signed 30 years apart, EMI refused to accept the termination. The Second Circuit held in the heirs’ favor. The heirs are going to get holiday royalties until 2029.

    TAKE AWAY: If you own a copyright or if you inherited a copyright, don’t try to figure out the termination process alone. It is full of land mines. BIGGEST TAKE AWAY: How fun is that? A Santa copyright decision during the Christmas season? Happy Holidays and see you next year.

  • IP BLAWG

    Fox News Fails to Blind TVEyes

    Beverly A. Berneman
    Tuesday, 15 December 2015

    TVEyes, Inc. is a database that allows its subscribers to search and aggregate news in the media. Fox News didn’t like that at all. So, Fox News sued for copyright infringement. TVEyes successfully argued that its use of Fox News’ copyrighted material was fair use. The District Court in the Southern District of New York held that TVEyes did not duplicate or usurp the value of Fox News’ broadcasts. TVEyes’ use was transformative because it provides a unique “database of _everything _ that television channels broadcast, twenty-four hours a day, seven days a week”.

    TAKE AWAY: This is dangerous ground. Not all information aggregators are equal. This case doesn’t really give us a bright line test for determining which type of aggregator is protected by fair use and which isn’t. The District Court seemed to be focused on the uniqueness of what TVEyes provides. But how unique do you have to be? What if you add your own content? What if you just provide links to content belonging to others? It would probably be best to treat the TVEyes situation as exceptional and not rely on it too much.

  • IP BLAWG

    SCOTUS' Spidey Sense

    Beverly A. Berneman
    Tuesday, 08 December 2015

    When the patent ran out for a Spiderman web-shooter toy, the licensor insisted that he was entitled to royalties anyway. Not so says the U.S. Supreme Court. A patent gives you a right to exclude others from using your invention. But that right only lasts 20 years. In the case of Kimble v. Marvel Enterprises (as in Marvel Comics), Kimble licensed the patented web-shooter toy to Marvel. When a dispute arose over the patent, the parties entered into a settlement agreement that provided for a lump sum payment and a 3% royalty. The agreement was silent about how long the royalty payments would last. When the patent ran out, Marvel got a judgment declaring that it didn’t have to pay royalties anymore. Kimble wasn’t happy and so he appealed. The case went all the way to the U.S. Supreme Court. SOCTUS decided that once the patent expires, the right to royalties expires too. So Marvel didn’t owe any more royalties.

    TAKE AWAY: There could be any number of reasons why you would want royalties to last beyond the patent term. The obvious one is the availability of an income stream. But other considerations like tax consequences or estate planning can play a role. The best time to address those goals is when the license is being drafted. In a rare instance of practical advice from SCOTUS, Justice Kagen, writing for the majority, gave some examples of how this could work. For instance, the royalties could be limited by the patent term but amortized over a longer period of time. Or the royalties can be related to a non-patent right, like a trade secret or trademark. No doubt there are other creative solutions depending on the circumstances.

  • IP BLAWG

    Sitting on Your Trademark Rights Can Hurt You

    Beverly A. Berneman
    Tuesday, 01 December 2015

    What if you allowed someone to use a trademark that is similar to yours for a pretty long time? The owners of the SMART ONES trademark for frozen foods, snacks and desserts can answer that question. When the owner of SMART BALANCE for heart healthy butter substitutes filed intent to use applications for frozen foods, SMART ONES opposed them citing a likelihood of confusion. The Trademark Trial and Appeal Board (TTAB) sided with SMART BALANCE and allowed the applications to go through. The TTAB found that a lot of factors weighed in favor of a likelihood of confusion, like channels of trade, relatedness of goods, goods sold to the same classes of consumers and a low degree of purchasing care when buying the products. But, the two marks have peacefully co-existed for 17 years with very little evidence of customer confusion.

    TAKE AWAY: If someone is using a trademark that is similar to yours and likely to cause confusion, you need to address that as soon as possible. Sitting on your trademark rights can hurt you by barring your ability to stop the other user. BONUS TAKE AWAY: The TTAB also held that the common term, SMART, is laudatory and therefore too weak to overcome the visual and phonetic differences between the two marks. So, when choosing a trademark, try to stay away from laudatory or descriptive terms. They weaken your mark and make it harder to protect.

  • IP BLAWG

    Browsing Isn't a Virtual Handshake Deal

    Beverly A. Berneman
    Tuesday, 17 November 2015

    By show of hands, how many people actually read on-line terms and conditions before clicking “I agree”? I don’t have to see you to conclude that no one raised their hands. If you did, you can stop reading here. If you didn’t raise your hand, do you ever wonder what you’re agreeing to? How about the websites who tell you that you’re bound by the terms and conditions just for browsing. Is that enforceable? A recent case in the 9th Circuit Court of Appeals, Nguyen v. Barnes & Noble, Inc., answered that question. Nguyen bought a discounted tablet device from Barnes and Noble’s website. When B&N ran out of stock, Nguyen cancelled the order and sued for deceptive trade practices and false advertising. B&N said that Nguyen couldn’t sue because the website was governed by a browse wrap license that required arbitration. A browse warp license is basically a license to browse the website. The court sided with Nguyen. The browse wrap license had two primary problems. First, the customer didn’t have proper notice of the license. Second, the website didn’t have a way for the customer to take a positive step to accept the terms. So B&N had to defend the lawsuit in court and couldn’t require arbitration.

    TAKE AWAY: This case is particularly instructive for e-commerce websites. A typical e-commerce website invites customers to browse and then buy. Back in the dark ages, before the Internet, this kind of relationship often involved a written agreement that everyone had to sign. The equivalent for commerce over the Internet has developed over time. Now, you can post your contractual terms and conditions on your website. But, it looks like you need to go a couple of steps further to make it a binding contract. If you want to avoid B&N’s result, then you have to give your customer notice and an opportunity to accept the terms and conditions.

  • IP BLAWG

    #®?

    Beverly A. Berneman
    Tuesday, 10 November 2015

    Can a hashtagged key word or phrase in a Tweet be registered as a trademark? For the uninitiated, Twitter is a social networking service where people communicate with each other with short messages (a “Tweet”). A Tweet can be tagged using a hashtag symbol (#) before a relevant keyword or phrase to categorize the Tweet and help it show up in a search. A business can generate buzz by using a hashtagged key word or phrase. For example #android and #SNL. There have been a couple of hashtag wars this year. One involved two taco restaurants over #tacotuesday. The owner of the hashtagged phrase tried to stop the other restaurant from using “Taco Tuesday” in an ad. The social media backlash caused the owner to back down. In another case, the Fraternity Collection brought suit against a competitor for using #fratcollection and #fraternitycollection. The court denied the competitor’s motion to dismiss the complaint deciding that the competitor’s use of the trademarks with the hashtagged phrases could cause customer confusion.

    TAKE AWAY: The answer to the question is yes, a hastagged key word or phrase in a Tweet can be registered as a trademark. The USPTO adopted rules in 2013 that allow the registration of words and phrases that are preceded by the hashtag symbol. But the words and phrases without the # have be the proper subject matter for trademark registration.

  • IP BLAWG

    Personal Data Needs a New Safe Harbor Port in the Storm

    Beverly A. Berneman
    Tuesday, 03 November 2015

    Before:Anyone who transferred data containing personal information from Europe to the U.S. was protected from liability for data breaches as long as they complied with Safe Harbor standards created by the European Commission. Thousands of companies "self-certified" themselves as having complied with the Safe Harbor standards. The Event: This month, the Court of Justice of the European Union issued its ruling in Schrems v. Data Protection Commissioner that the Safe Harbor is no longer available. The Court cited Edward Snowdon’s surveillance practices as proof that the Safe Harbor standards don’t protect European citizens. After: Anyone who transfers data containing personal information from Europe to the U.S. has to find new ways to protect themselves from liability for data breaches.

    TAKE AWAY: Companies who do business with the European Union and use the personal information of employees or customers should examine their data protection procedures. Alternative sanctioned methods of data security are out there. They range from using model contractual provisions to getting the individual to opt-in consent to transfer the data. Will using sanctioned methods work the same as the Safe Harbor did? That’s an open question. The U.S. and the European Union are working on a new version of the Safe Harbor standards but there’s no timetable for when we’ll see it.

  • IP BLAWG

    Why You Misappropriate a Trade Secret Doesn't Matter

    Beverly A. Berneman
    Tuesday, 27 October 2015

    Utah State Supreme Court’s decision in InnoSys v. Mercer gave a boost to plaintiffs in trade secret misappropriation cases by laying out a presumption of harm. But what’s interesting about this case is that Mercer didn’t use InnoSys’ trade secrets to compete with it. Mercer had been employed by InnoSys. She had signed a non-disclosure agreement. At some point, she e-mailed and downloaded confidential trade secrets to a thumb drive. Mercer disclosed the trade secrets in an administrative unemployment hearing after she was dismissed by InnoSys. She eventually deleted the trade secrets from her storage devices. But according to the Utah State Supreme Court, her misappropriation of the trade secrets had already caused harm to her employer. Bottom line is that Mercer was liable for trade secret misappropriation even though she didn’t use the trade secrets for competitive purposes.

    TAKE AWAY: Mercer made a grave mistake by disclosing InnoSys’ trade secrets. What could Mercer have done differently? First, she shouldn’t have e-mailed and then saved the trade secrets on a thumb drive. That alone was actionable. Second, if Mercer felt it was absolutely necessary to her case, she could have told the hearing officer why the trade secrets were relevant without revealing them. Third, if the hearing officer thought knowing the trade secrets were important, either the hearing officer, Mercer, or InnoSys, or any combination of the three, could have worked out an agreement to allow the hearing officer to review the trade secrets under seal. Thanks to my Employment Law gurus, Laura Balson and Ashley Orler for their help with this take away.

  • IP BLAWG

    Happy Birthday to All of Us

    Beverly A. Berneman
    Tuesday, 20 October 2015

    We can now sing the Happy Birthday song without paying a royalty. For decades, Warner/Chappell Music Inc. claimed to own, and demanded royalties to use, the lyrics to Happy Birthday song. The royalties ran between $1,500 to hundreds of thousands of dollars. The plaintiffs in Good Morning to You Productions Corp. v. Warner/Chappell Music, sued claiming that Warner/Chappell’s copyright in the lyrics was invalid (the melody was already in the public domain). A judge recently ruled in the plaintiff’s favor. The reason for the ruling? It isn’t clear cut. The judge only ruled that Warner/Chappell didn’t have the copyright. Some commentators are saying that the ruling means that the lyrics are in the public domain. Not exactly. There was evidence that the lyrics were written in 1893 which means the copyright had long expired. That means that the 1934 copyright registration could be invalid or forfeited because the lyrics weren’t an original work of authorship. And, there was no evidence that Warner/Chappell’s assignor ever got an assignment from the two sisters who wrote the lyrics. Does that mean that someone else could step up and claim ownership of the copyright? It’s a possibility but they’d have to explain why they’ve been sitting on their rights for decades.

    TAKE AWAY: The saga of the Happy Birthday song shows the importance of due diligence. If you’re going to acquire someone else’s copyright, or any Intellectual Property for that matter, make sure they own what they say they own. Warner/Chappell’s due diligence failed at some point and it’s now facing a class action suit. If Warner/Chappell loses the next phase of the litigation, it might have to return millions of dollars in royalties.

  • IP BLAWG

    How is Barclay's Brokerage Services Like Edward Scissorhands?

    Beverly A. Berneman
    Tuesday, 13 October 2015

    Barclays Capital Inc. wants to register the trademark “Lehman Brothers” for brokerage services. You may recall that Barclays bought the brokerage services section of the disgraced Lehman Brothers. But Tiger Lily Ventures wants to register Lehman Brokers for wine and spirits. The two companies are now locked in opposition proceedings seeking to cancel each other’s intent to use applications for the same trademark. Most notable are the quotes coming from the Tiger Lily side. Barclay’s bought the name with the brokerage services. But Tiger Lily says that Barclay’s has done everything possible to distance itself from the Lehman Brothers brand; so how can it have an intent to use the trademark? Quoting Tiger Lily’s counsel: “Is Barclays really going to use 'Lehman Brothers' again for banking?” Garson asked. “For us that would make as much sense as using 'Edward Scissorhands' for intimate massage products. The name is just toxic, from a banking perspective.”

    TAKE AWAY. This is a good example of trying to hold onto something that might not benefit your company. I have questions for both parties in this case. Barclays, does the infamous trademark build trust and confidence in your goods and services? Tiger Lily, why would a wine and spirits company want to use a "toxic" name for its products? The value of parody only goes so far.

  • IP BLAWG

    Copyright Law Has a Mini-Insurance Policy

    Beverly A. Berneman
    Wednesday, 30 September 2015

    Following up on last week’s Dancing Baby post, it’s worth exploring the Digital Millennium Copyright Act (DMCA) a little more. Put code here The DMCA can protect websites from claims of copyright infringement. The DMCA protects four categories of Internet service providers: (1) new media services and websites that host servicers; (2) simple conduits that simply pass data; (3) services that cache information temporarily for users; and (4) information location services like search engines. The protection works like this. A website invites users to post content. The user uploads content that violates a third party’s copyright. The third party notifies the website with a “Take Down Notice”. The website has a reasonable time to remove the offending content. If the website removes the offending content, it’s protected from a copyright infringement law suit. In order to get the advantage of DMCA, the website has to register an agent with the Copyright Office.

    TAKE AWAY. If you invite user content like commentary or uploaded videos to your website, you’re going to want to designate an agent with the Copyright Office. You should also have take down instructions in your website’s Terms of Use. These easy steps will help protect your business in the event someone posts infringing content on your website.

  • IP BLAWG

    Dancing Baby Has A Partial Reason To Keep On Groovin'

    Beverly A. Berneman
    Tuesday, 22 September 2015

    Who would have thought that literal and figurative music icon Prince would go after Stephanie Lenz who posted her adorable children dancing to his “Let’s Go Crazy” on YouTube. Well, he did. And litigation ensued. Prince, who is notorious for protecting every facet of his art, sent a takedown notice to YouTube under the Digital Millennium Copyright Act (“DMCA"). The DMCA allows a copyright owner to ask that content be removed from a website if he has a "good faith" belief that the use of the work interferes with his copyright. YouTube complied stating that the video infringed. Stephanie sent a counter-notification claiming that the video was not infringing. YouTube reposted the video . Stephanie sued on the basis that YouTube misrepresented in the take down notice that the use was infringing. The case made its way to the Ninth Circuit Court of Appeals which held that, before sending a takedown notice under the DMCA, the copyright owner’s “good faith” belief requires consideration of fair use. The case now goes back to the trial court. Dance on baby, even though you are probably about 10 years old by now.

    TAKE AWAY. The DMCA can be a powerful tool for protecting the copyright holder against unauthorized use of a work. But consumer advocacy groups have pointed out that the takedown procedure in the DMCA favors the major media companies at the expense of those who cannot afford to fight them. The DMCA bars the improper use of the takedown procedure. But before Stephanie, it was rarely enforced by the courts. Hopefully, Stephanie’s win will make aggressive copyright owners think twice before using the DMCA as a sword instead of a shield.

  • IP BLAWG

    Michael Jordan's IP Lessons

    Beverly A. Berneman
    Tuesday, 08 September 2015

    The great Michael Jordan can teach us all some things about how to exploit our Intellectual Property. Most recently to the tune of $8.9 million. MJ obtained a jury verdict against the now defunct Dominicks food stores for violating his Right to Publicity which is the right to protect one's persona from unauthorized commercial use. Dominicks had placed an ad in a Sports Illustrated magazine that commemorated MJ's career. The ad used MJ's name and image and included a coupon. The court held that the ad went too far into commercial use without MJ's permission. Then the issue of damages was decided by a jury. They didn't give MJ all he asked for. But it's still a lot of money. MJ says he's going to donate any recovery he gets. MJ also has a suit pending against Jewel Food Stores for an ad it placed in the same magazine. We'll see how that goes.

    TAKE AWAY: So how does MJ's protection of his persona help owners of other types of Intellectual Property? The answer lies in MJ's licensing strategy. MJ testified that he is very careful about endorsement deals. He doesn't accept every single one he's offered. That drives up the value of the deals he does take. MJ's obvious lesson is that licensing deals, whether for trademarks, copyrights or patents, should be carefully reviewed for how they fit into an overall strategy. If you license your Intellectual Property to too many licensees, you effectively drive your own price down.

  • IP BLAWG

    To NDA or Not to NDA

    Beverly A. Berneman
    Monday, 03 November 2014

    The New York Times Small Business Blog published an article about the fate of non-disclosure agreements (“NDA”) for emerging and seed companies (Why More Start-Ups Are Sharing Ideas Without Legal Protection, New York Times, July 2, 2014). The article makes it appear that initial stage companies shouldn’t bother with a written NDA. This is dangerous advice. Sharing ideas without some protection could put an entire business model at risk. The article has some good suggestions like (a) make sure you have something to protect and (b) know your audience. But the article also suggests filing a provisional patent. The problem is that not every great idea is patentable. The article also doesn’t cover a critical issue which is how a lack of confidentiality would destroy protection for your trade secret.

    TAKE AWAY: Keep in mind that articles like this are giving general advice. The writer doesn’t know your business. If you’re shopping an idea around to potential investors, vendors and customers, you need to protect it. Always have an NDA on hand. If you get push back, then at least tell the other side that you have an expectation of confidentiality and confirm it in writing later. If you don’t have an NDA or they won’t agree to respect your expectation of confidentiality, then only disclose the high concept. Then tell them you can’t say more without an NDA. If you still get push-back, then you need to consider how valuable this relationship is going to be. Does the benefit of the potential business relationship outweigh the detriment of losing legal protection for your great idea?

  • IP BLAWG

    Fair Use Doesn’t Mean Every Use

    Beverly A. Berneman
    Sunday, 02 November 2014

    Two Federal Appellate Courts are duking out whether putting your own spin on someone else’s copyrighted work is enough for a fair use defense. The Copyright Act gives us four factors to look at for fair use: (1) the purpose of the use; (2) the nature of the work; (3) how much of the work is used; and (4) the effect the use has on the market for the original work.

    The Second Circuit Court of Appeals says that any transformative use of a copyrighted work is fair use (Cariou v. Prince). I've included a comparison of one of Cariou's original photos and Prince's changes to the photo. Do you think the second photo is fair use of the first?

    The Seventh Circuit Court of Appeals thought the Second Circuit went too far in hinging everything on transformative use. In a more recent case, the Seventh Circuit says that fair use isn’t designed to ‘protect lazy appropriators’ (Kleintz v. Sconnie Nation LLC).

    So you shouldn't let transformative use trump all of the other factors.

    TAKE AWAY: Here’s a quick quiz:

    1. Can you use a photo you got from Google Images on your website?
    2. Can you quote someone else’s book?
    3. Can you use a movie clip you got from YouTube in your PowerPoint presentation?
    4. Can you copy your competitor’s catalogue but change the name of the company and the contact information?

    Answers: (1) Probably not. Just because it’s on the Internet doesn’t mean it’s free. If you’re using it on your website, you’re making commercial use of someone else’s work without their permission; (2) Probably. It will depend on what you’re using it for and how much you’re using; (3) Maybe or maybe not. It will depend on what you’re using it for and how much you’re using; and (4) No.

    As you can see, the answers aren’t always easy. If you’re serious about using someone else’s images, photos, content etc., it’s worth getting a right to use opinion.