For about 20 years, Lucky Brand Dungarees, Inc. has been battling Marcel Fashions Group, Inc. over their trademarks. The US Supreme Court finally ended Lucky Brand’s struggle. At least for now.

Marcel received a trademark registration for “Get Lucky” for jeans. Lucky Brand received a trademark in “Lucky Brand”, also for jeans. Then the parties fought each other through three separate rounds of litigation over 20 years. The first round ended in a settlement in which Lucky Brand agreed not to use “Get Lucky” and Marcel released all claims. In the next round, when Marcel sued Lucky Brand, Lucky Brand brought up the settlement agreement in its pleadings but then didn’t address it again. Then there was the third round that ricocheted between the District Court and the Second Circuit Court of Appeals. At issue was whether Lucky Brand could assert the settlement agreement as a defense in the third round of litigation. The case ended up before the US Supreme Court. Justice Sonia Sotomayor, writing for the Court, held even though Lucky Brand didn’t litigate the defense in the second round, Lucky Brand could still use the defense in the third round.

The key to the decision was that Marcel was alleging different conduct in the second round than it did in the third round. Justice Sotomayor wrote, “[B]ecause the two suits here involved different marks and different conduct occurring at different times, they did not share a “common nucleus of operative facts.” However, if the third round of litigation involved the same nucleus of operative facts that had already been adjudicated Lucky Brand would not have been able to use the settlement agreement in its defense.

WHY YOU SHOULD KNOW THIS. When dealing with any type of lawsuit, a party can have a lot of different claims and defenses. Each of them should be addressed as completely as possible during the litigation. That’s because, generally, once an issue is raised and fully litigated, a party can’t try to re-litigate in a subsequent lawsuit. This is generally called “issue preclusion”. In the Lucky Brand case, the courts referred to it as “defense preclusion.” In the world of litigation, the effect would be the same. Lucky Brand wouldn’t be able to use the settlement agreement. But, if the same parties keep suing each other over different issues, claims and defenses may not be lost.

Two recent US Supreme Court cases give a loss for the State of Georgia and a win for the State of North Carolina.

State of Georgia’s Loss

The State of Georgia makes the simple text of its state statutes available to anyone who wants to look at them. Georgia hired a company to annotate the statutes featuring citations, an analysis of the statutes and opinions from the state’s attorney general. A company named Public.Resource.Org. Inc. copied and distributed the annotated version of Georgia’s statutes without paying for it. Georgia sued Public.Resource.Org for copyright infringement. The Supreme Court ruled that Georgia cannot sue for the copying and distribution of the annotated version of the state’s statutes. Chief Justice John Roberts wrote the opinion for the Court. Justice Roberts invoked the doctrine of “government edict” which means that public officials who create a governmental work cannot copyright their works. Justice Roberts pointed out that allowing a governmental unit to withhold access to government information would create a “first class” and an “economy class” of access to public information.  

North Carolina’s Win

In 1996, a marine salvage company found the sunken slave ship, the Revenge. North Carolina commissioned a marine salvage company to resurrect the ship. The Revenge had been captured by the famous pirate Edward Teach (Blackbeard) and he had used the ship to conduct his piratical activities for about a year. The ship ran aground off the coast of North Carolina in 1718. The salvage company hired Frederick Allen to record videos and take pictures of the operation. Frederick registered the copyright in the works. North Carolina published some of the videos and photos. Frederick sued North Carolina for copyright infringement. The US Supreme Court affirmed the dismissal of Frederick’s lawsuit on appeal. Justice Elaina Kagan, writing for the Court, explained that under the doctrine of sovereign immunity, a state cannot be sued without its permission. Frederick tried to rely on the Copyright Remedy Clarification Act of 1990 (CRCA) which was supposed to remove a state’s sovereign immunity from copyright infringement cases. But a prior case decision had held that Congress didn’t have the constitutional authority to abrogate sovereign immunity. It’s interesting to note that Justice Kagan believed that an abrogation statute, if properly drafted, could have created a right of action against a state for copyright infringement.

WHY YOU SHOULD KNOW THIS. These two cases show parameters of copyright protection when dealing with a governmental unit. In the Georgia case, if a private company had owned the annotated statutes, it would have had the right to enforce the copyright. But Georgia owned the annotated statutes so it had to make them available to the public. In the North Carolina case, the problem was a poorly worded statute. Nonetheless, the holding stands. States don’t have to pay to use copyrighted works.

Zazzle, Inc. is an on-line marketplace for imprinted merchandise. Zazzle will then imprint the image on things like coffee mugs, t-shirts and, these days, face masks. Zazzle uses stock images but it also allows someone to upload their artwork or a graphic.

Greg Young Publishing Inc. (“GYPI”) is the licensing agent for various artists. GYPI sued Zazzle for using images belonging to its clients. Zazzle’s defense was that it relies on the user certification process so it shouldn’t be held liable. GYPI gave Zazzle a catalog of GYPI’s images and Zazzle kept on using the images anyway. Obviously, the user certification process didn’t work. A jury found that Zazzle’s infringement was willful and returned a verdict in favor GYPI in the amount of $460,800. The trial court reversed the jury’s holding that GYPI didn’t present sufficient evidence that Zazzle acted willfully. The damages were reduced to $351,000. The trial court also denied GYPI’s request for attorneys’ fees despite the fact that GYPI was the prevailing party. The trial court believed that Zazzle’s defense was objectively reasonable.

The Ninth Circuit Court of Appeals reversed the trial court on the issue of willfulness. The Ninth Circuit held that a reasonable jury could have found that Zazzle acted recklessly by knowingly relying on obviously insufficient oversight mechanisms. The Ninth Circuit did not reverse the trial court’s denial of attorneys’ fees but reserved the issue to be revisited considering the finding of willfulness.

WHY YOU SHOULD KNOW THIS. The U.S. follows the “American Rule” when it comes to fee shifting in a law suit. The aptly named American Rule means that parties to a lawsuit pay their own attorneys’ fees unless a statute or contract provides otherwise. The Copyright Act allows the recovery of attorneys’ fees by the prevailing party. Fee shifting in a copyright infringement case can vastly change the economic dynamic of bringing or defending a suit. Exposure to attorneys’ fees can have a chilling effect on vigorous advocacy.  So, the courts have developed a standard for fee shifting. A claim or defense has to be “objectively reasonable”. In other words, do you have a good faith basis to argue your position? If you don’t and the other side is the prevailing party, you pay their attorneys’ fees. This leaves room for parties to come up with novel and innovative arguments without fearing an attorneys’ fees burden. In Zazzle’s case, just relying on someone else saying, “Yes, own this”, wasn’t objectively reasonable.

If the words “reply all” sound familiar to you, then you probably use email to communicate with others for various and sundry reasons. Despite their widespread use, these two words became the subject of trademark litigation.

In 2012, Reply All Corp. started to sell software to let users create and share conversations.

In 2014, Spotify’s Gimlet Media began producing a podcast named “Reply All”. The hosts, PJ Vogt and Alex Goldman talk about strange stories and trending topics.

Would you confuse Reply All’s software with the “Reply All” podcast? Gimlet Media was convinced that customers would be.

Gimlet Media sued Reply All for trademark infringement. After about 5 years of litigation, a judge ruled that almost every factor of a likelihood of confusion weighed against Gimlet Media and in favor of Reply All. The court found that the mark was fairly weak. Gimlet didn’t have a record of sales or marketing expenditures to show commercial strength. And the court acknowledged that the term “reply all” is a common term which is recognized by anyone who uses email. The names might be the same but the logos are different (see the graphic) and the products are different. They don’t compete in the same customer space. The court pointed out that Gimlet Media had no evidence of actual confusion. Note that you don’t have to prove actual confusion; it’s just one factor to look at. In this case, the court thought it was a significant factor.

WHY YOU SHOULD KNOW THIS.  For registration purposes, most countries, including the US have adopted an international scheme of classes of goods and services. There are 45 of them. It is almost impossible for someone to register a trademark in all 45 classes. The class distinction is helpful when evaluating a likelihood of confusion between trademarks. If someone uses a word for the wholesale distribution of auto parts (Class 035), consumers are unlikely to be confused if someone used the same word for graphic t-shirts (Class 025). In the Reply All case, the words are the same but they were used for totally different goods and services. One caveat though. Some trademarks are so famous that even if the goods and services don’t compete directly, the owner of the famous mark (like Barbie, Rolex, Nike and Jack Daniels) can shut down the use of the trademark even if someone is using it in a different class of goods or services. This is called dilution.

Thru Inc. sued Dropbox for trademark infringement claiming to own the “DropBox” trademark. After a lot of litigation and some really good discovery, Dropbox was able to show that Thru may have had some bare rights to the “DropBox” mark but it never actually used the mark. Thru then sat back and watched as DropBox branded itself and became a household name for shareable file storage. Then Thru continued to drag its heels in litigation to cash in on DropBox’s initial public offering in 2018. DropBox discovered emails from Thru’s CEO which unabashedly chronicled Thru’s strategy. In the end, DropBox obtained a $2.3 million judgment that included attorney’s fees and costs.

So what was Thru to do? It filed for relief under Chapter 11 of the Bankruptcy Code. It proposed a plan to pay the entire judgment with interest in six years. The plan was confirmed over DropBox’s objections. DropBox appealed. The district court affirmed the bankruptcy court’s confirmation of the plan. Then DropBox appealed to the Sixth Circuit Court of Appeals. Dropbox argued the Chapter 11 plan was just a sham and indicative of Thru’s conduct in the underlying case. The appeal was dismissed due to mootness. The problem was that DropBox hadn’t sought any orders to stay the enforcement of the bankruptcy plan. DropBox argued that the concept of “equitable mootness” is antiquated and shouldn’t have any bearing on the appeal. The Sixth Circuit disagreed. By the time the appeal was heard in the Sixth Circuit, the plan had already been in place for some time and some payments had already been made. Therefore, at this late stage, it would cause undue hardship to unwind the plan.

Why You Should Know This. Filing bankruptcy is a legitimate strategy after a huge judgment. As is usually the case, Thru’s pre-bankruptcy petition conduct is irrelevant. Bankruptcy allows a debtor to reorganize and pay off at least some debt. In this case, as long as Thru continues to be in business, DropBox is probably getting more than it would have gotten if Thru closed its doors. As to DropBox’s failure to get a stay of enforcement of the plan pending appeals, bankruptcy courts are reluctant to do that. It basically hurts the other creditors waiting to be paid while a single creditor pursues at grudge.

ON ANOTHER NOTE: On February 19, 2020, the Small Business Reorganization Act went into effect. Small companies whose debts are less than $2.7 million can file a streamlined Chapter 11. It is both less expensive and faster than normal Chapter 11s. The attorneys at Golan Christie Taglia have already filed a number of these. So if you have any questions, please feel free to reach out.

For your stay at home pleasure, 2020 has granted us with a whole inventory of content that is now in the public domain.

In 1976, the Copyright Act was completely overhauled. The system of protecting copyrights changed giving longer protection and making it easier to claim a copyright. But pretty much all of the pre-1976 works were going to be treated differently. So the Copyright Act grandfathered in and extended the protection for these pre-1976 works. Originally, works created in 1923 or before were still in the public domain. On January 1, 2020, any works created from 1924 went into the public domain.

Those works include (this list is by means exhaustive):

Silent Films
o Douglas Fairbank’s, Thief of Bagdad;
o Clark Gable’s film debut, White Man;
o Buster Keaton’s, Sherlock Jr.; and
o The first screen adaptations of Peter Pan and The Age of Innocence.

Music
o George Gershwin’s, Rhapsody in Blue;
o Giacomo Puccini’s opera, Turnadot;
o Everybody Loves My Baby;
o It Had to be You; and
o I’ll See You in My Dreams.

Literature
o Edgar Rice Burroughs’, The Land That Time Forgot and Tarzan and the Ant Men;
o Agatha Christie’s, The Man in the Brown Suit and Poirot Investigates;
o W. E. B. Du Bois’, The Gift of Black Folk;
o E. M. Forster’s, A Passage to India;
o Emma Goldman’s, My Further Disillusionment in Russia;
o Herman Melville’s, posthumously published Billy Budd;
o A. A. Milne’s, When We Were Very Young; and
o Mark Twain’s, Autobiography (posthumous).

Plays
o Bertolt Brecht’s, The Life of Edward II of England, adapted from Marlowe;
o Noël Coward’s, Hay Fever and Easy Virtue; and
o Eugene O’Neill’s, Desire Under the Elms.

Artwork
o Edward Hopper’s, New York Pavements;
o Paul Klee’s, Asiatic God, Carnival in the Mountains, Flower Garden;
o Joan Miró’s, the Head of a Catalan Peasant (first work in sequence); and
o Diego Rivera’s fresco, Day of the Dead.

WHY YOU SHOULD KNOW THIS. When a work falls into the public domain, it is available for copying, preparing derivative works, distribution, display and performance without having to pay royalties or a license fee. But, be careful, some works may have their own derivative works that haven’t fallen into the public domain. For instance, in a recent case involving the Sherlock Holmes books, the court held that if the characters or situations were created before 1923, they were in the public domain and could be used. But new characters or situations that Arthur Conan Doyle published after 1923 are still protected by copyright.

IN CASE YOU WERE WONDERING: No doubt you noticed that IP News for Business has been gone for a little over a month. Not to worry. Everything’s ok. I had knee replacement surgery in the first week of March. Things are going well and I’m “back in the saddle”.

Much has been written about excess fee claims involving 401(k) and 403(b) retirement plans. In fact, a St. Louis law firm has specialized in filing class action excess fee cases around the country. So, the personal risk to retirement plan fiduciaries has been well documented.

But what about the fiduciaries (employers, the employees involved in plan administration, and plan trustees) of a non-retirement (”welfare”) plan, like a group health plan? Isn’t that a different kettle of fish? Well, recent U.S. Department of Labor (DOL) claims against welfare plan fiduciaries shed some light on that.

The group health plan world is divided into two camps: (1) self-insured plans that are subject to ERISA (and DOL oversight), and (2) fully-insured plans that are subject to regulation by state insurance commissioners. Most larger employers have adopted self-insured plans so the fiduciaries of those plans need to be mindful of DOL enforcement activities.

In Acosta v. Chimes District of Columbia, Inc. et al. (DC. Md. 2019), the DOL sued fiduciaries of a plan that provided group health coverage to its employees as well as other welfare benefits. The DOL alleged that the plan fiduciaries generally failed to properly select and supervise plan service providers, which resulted in excess fees being charged to the plan. The court agreed with the DOL’s premise that welfare plan fiduciaries generally had the same duty to select and monitor the performance (and fees) of plan service providers as the fiduciaries of defined contribution retirement plans. However, on the facts presented at trial, the court found that the defendant fiduciaries had properly discharged their duties to the plan because, among other things, the fees charged to the plan were in fact “reasonable.”

Although the DOL lost the Chimes case, welfare plan fiduciaries should take little comfort. Absent an indication that the DOL has changed its enforcement posture, it follows that welfare plan fiduciaries are now exposed to claims that the performance of their fiduciary duties has been inadequate and that they are personally liable for any resulting plan losses. Also, if the DOL is successful with these kinds of claims, private attorneys may not be far behind in seeking similar relief on behalf of plan participants.

Group health plan fiduciaries may also want to consider alternative measures to reduce health claim expenses on a long-term basis. For example, consider the program offered by Inspera Health (a respected, long-time personal client), which is described on the Employee Benefits Research Institute website in a webinar titled The Problem with a One-Size-Fits-All Approach to Health Care Claims.

TAKEAWAYS:

Welfare plan fiduciaries need to review plan operations and fees incurred on a periodic basis, and document their review process. Like any fiduciary conduct, the first line of defense is to have a documented compliance process in place. Although not required of fiduciaries by the court in Chimes, a good way to check on service provider performance and fees is a competitive bidding process with a formal request for proposal (RFP) or otherwise. This approach is recommended but not required by the DOL. Other protective measures, including maintaining fiduciary insurance, may also be warranted.

In the U.S., each side usually pays their own attorney’s fees. This is called the American Rule. Until about six years ago, that rule applied to appeals from USPTO decisions. So, if an applicant appealed the USPTO’s decision not to issue a patent or register a trademark, the applicant paid the applicant’s attorney’s fees and the USPTO paid its staff attorneys their salaries. Then about 6 years ago, the USPTO decided anyone who appealed an adverse ruling should have to pay the USPTO’s attorneys’ fees as well as their own.

It all started when the USPTO filed a request for an award of more than $36,000 in attorney's fees in a little-known trademark appeal filed by a man named Milo Shammas. The USPTO justified this request by pointing to language in the statute that applicants who file an appeal to the district court have to pay the USPTO “expenses”. The USPTO argued that “expenses” includes attorneys’ fees. To the horror of the Intellectual Property bar, the request was granted. Then the sluices opened and the USPTO started demanding attorney’s fees left and right.

This state of affairs lasted just this last December 2019 when the U.S. Supreme Court ruled against the USPTO. In Peter v. Nanktwest, Inc., the applicant appealed the USPTO’s rejection of a patent application for a method of treading cancer. The district court denied the USPTO’s motion to recover its legal fees as expenses but granted the request for recovery of expert fees. The Deputy Director of the USPTO appealed to the Federal Circuit Court of Appeals. Federal Circuit affirmed. So the Deputy Director appealed to the U.S. Supreme Court.

Justice Sotomayor, writing of the Court, didn’t pull any punches. Justice Sotomayor called the “American Rule” the bedrock principal that each party pays its own attorney’s fees, win or lose. The only exceptions are when a contract or statute provides otherwise. Statutes that provide for an award of attorney’s fees say so explicitly. Nothing in the Patent Act suggests that the USPTO can send an attorney’s fee bill to an opposing appellant. As a factual matter, history was on the appellant’s side as well. Up until 2013, the USPTO never paid its personnel from sums collected from adverse parties. So the USPTO has to pay its own attorney’s fees.

WHY YOU SHOULD KNOW THIS. Certainly, this is a victory for patent and trademark applicants. The process of protecting these types of Intellectual Property can be quite costly. The added burden of the USPTO’s attorney’s fees would have changed the value proposition for rejected applications and damaged the rights of the applicant/appellants. But there’s something else to note here. Often, when parties are gearing up for a dispute, the client asks the attorney, “Can I make the other guy pay your fees”. The answer is spelled out in Justice Sotomayor’s opinion. The answer is “yes” if a statute or contract has a fee shifting clause. But, even then, how the clause is phrased can taketh away from anything that had been giveth. For instance, in a statute, the attorney’s fees recovery may only be available only in “exceptional cases”. In a contract, attorney’s fees recovery may only be available to the “prevailing party”. So devil is in the attorney’s fees clause details.

We’ve covered denial of insurance coverage for trade secret misappropriation and affirming insurance coverage for copyright infringement. Now we turn our attention to the newer kid on the insurance block, cyber insurance.

AIG Commercial Insurance Co. offered a “Specialty Risk Protector” insurance policy. Larger companies could bundle a number of coverages in one policy such as coverage for specialty errors and omissions, network security and privacy, event management, crisis fund, network interruption, cyber extortion, media for publishers and broadcasters, media content, and employed lawyers’ professional liability.

SS&C Technologies Holdings, provides business process services fund administration to the financial industry all over the world. SS&C had a Specialty Risk Protector insurance policy from AIG. While providing fund managing services to one its clients, Tillage Commodities Fund LP, SS&C received six instructions to transfer Tillage’s funds totaling $5.9 million to bank accounts in Hong Kong. The problem? SS&C was the victim of spoofing. That’s where nefarious persons or entities mimic an email address and even the look of an email to fool someone into transferring money or property that evaporates into the pocket of the nefarious.

A few days after the transfers, SS&C discovered that it had been the victim of a spoofing. It immediately notified Hong Kong’s police and its insurer, AIG, of a potential lawsuit.

Sure, enough, Tillage filed suit against SS&C. AIG agreed to defend the suit but reserved the right to deny coverage and the cost of defense if the loss resulted from one of the insurance policy’s exclusions, including a “fraud” exclusion. The “fraud” exclusion flag had been raised because Tillage alleged in its complaint that an employee of SS&C had participated in the spoofing scheme. After the case was settled without an admissions, AIG denied coverage.

SS&C sued AIG for breach of contract and breach of the implied covenant of good faith hand fair dealing (a/k/a “bad faith”). The court denied AIG’s motion to dismiss. AIG’s chief argument was that it could deny coverage when fraud is involved, whether or not the insured committed the fraud. The court rejected that argument. Moving on the lack of good faith count, the court used the policy’s language and AIG’s reservation of rights letter against it. It was clear that AIG could only deny coverage if there was an adjudication that an employee had been involved in the fraud. Since the case was settled without admissions, AIG could tie a SS&C employee to the Tillage loss. So denying coverage could be considered bad faith.

WHY YOU SHOULD KNOW THIS. The court was able to interpret the policy exclusions in favor of the policy holder. That makes sense. SS&C had a reasonable expectation of coverage a fraud was committed by a third party. The bottom line is that an insurance policy is a contract. It should be interpreted like any other contract.  Insurance companies who contort policy language to deny coverage can find themselves defending a bad faith claim.

Last week’s blog covered a situation where an insurance company wasn’t required to cover the costs of defending a misappropriation of trade secrets case. This week’s blog covers a situation where the insurance company was required to cover the cost of defense of an Intellectual Property dispute.

Photographers and stock photo owners filed 35 separate copyright suits against McGraw-Hill Education Inc. McGraw-Hill had paid for the right to use the images in textbooks and other publications. But the plaintiffs alleged that the images were used “in ways not completed by the parties”. McGraw-Hill settled 27 suits and 8 are still pending. McGraw-Hill’s attorney’s fees up to this point are estimated to be over $45 million.

McGraw-Hill tendered the defense of these claims to its insurer, Illinois National Insurance, an AIG subsidiary. AIG covered claims for about 3 years and then denied coverage on a going forward basis. McGraw-Hill brought a declaratory judgment action asking the court to affirm that AIG had to defend the cases.

The trial court denied both McGraw-Hill and AIG’s motion for summary judgment. On appeal, the denial of McGraw-Hill’s motion for summary was overturned. The Appellate Court looked at the relevant policy provision regarding copyright infringement. The policy barred coverage only where it is “judicially determined” that copyright infringement was intentional and was carried out by a senior vice president, or someone more senior. AIG hadn’t sought or obtained the required judicial determination. AIG tried to use the “fortuity doctrine” to deny coverage. According to AIG, the “fortuity doctrine” allows an insurance company to deny coverage for “losses that the policyholder knows of, planned, intended, or is aware are substantially certain to occur”. The Appellate Court rejected AIG’s defense holding that it would render the insurance policy illusory.

So, for now, AIG must cover McGraw-Hill’s hefty copyright infringement defense bills.

WHY YOU SHOULD KNOW THIS. An illusory contract is one where the promise of performance by one party is so insubstantial that it really isn’t a promise of performance at all. Exclusions in insurance policies are common. But exclusions that basically deny coverage for everything, don’t give the insured anything and so are illusory. Most courts will strictly interpret exclusions. And, usually, this ends up in the insurance company’s favor. However, in this case, AIG went a little too far in trying to exclude coverage.

This is all well and good. But what happens when you have cyber-insurance and there’s a multi-million loss? We’ll see in my next blog post.

If you like Sour Jacks and/or Welch’s Fruit Snacks, a lot goes on behind the scenes for your sugar pleasure. Promotion In Motion, Inc. or PIM holds the formulas and manufacturing process for the sugary snacks as trade secrets. PIM also owns the design of the packaging. Ferrara Pan Candy Co. manufactured and sold the sugar bombs for PIM from 1990 to 2014 pursuant to a confidentiality agreement and license.

In 2014, Ferrara merged with another company and formed the current iteration of Ferrara. The new Ferrara signed a new confidentiality agreement with PIM for the formulas and manufacturing process of the sugar delivery systems.

In connection with the merger, Ferrara cancelled its primary insurance policy with Liberty Mutual Fire Insurance Company, and its umbrella general liability insurance with Liberty Insurance Corp.

In 2015, PIM sued Ferrara alleging that Ferrara had stolen trade secrets to produce and market competing sugar fix enablers named Market Pantry, Black Forest and Sour Buddies. PIM also alleged that Ferrara’s packaging infringed on PIM’s trade dress. Ferrara tendered its defense to Liberty. Liberty agreed to take on the defense with a reservation of rights. Liberty brought a declaratory judgment action to determine if Liberty was obligated to cover the defense.

Then Ferrara came down from its insurance coverage sugar high. First, after discovery closed, Liberty withdrew from the defense of all but the trade dress infringement count. Liberty argued that trade secret misappropriation and breach of a confidentiality agreement weren’t covered by insurance. Then, Liberty obtained a judgment that it wasn’t obligated to cover the trade dress infringement count. The judgment was affirmed on appeal. The appellate court held that the alleged infringing acts took place post-merger. And there was no coverage post-merger because Ferrara had cancelled the policies. Ferrara now has to pay back all of the fees Liberty paid in defense of the PIM litigation.

WHY YOU SHOULD KNOW THIS. Most business insurance policies will cover claims for advertising injury. Advertising injury is very limited. Trade secret misappropriation is not an advertising injury. Breach of a confidentiality agreement is not advertising injury either. So Liberty didn’t have to cover the defense of those claims. Trade dress infringement can fall into the category of advertising injury. But Ferrara cancelled the policies. Was this an oversight during the merger process? Could be. But, the bottom line is that by cancelling the policies after the merger and not obtaining new insurance, Ferrara lost the ability to reach into the insurance sugar bowl for the defense of PIM’s claims.

Back in November 2016, this blog covered the case of the trademark, ADD A ZERO, for wearing apparel. The trademark is owned by Christian Faith Fellowship Church (“CFFC”). Adidas, the international sportswear powerhouse, sought to cancel CFFC’s trademark for various reasons. Adidas took on the cause because the USPTO refused registration of Adidas’s trademark, ADIZERO, due to a likelihood of confusion. Adidas argued that CFFC wasn’t using the trademark in commerce because CFFC only sold two items. The Federal Circuit Court of Appeals held that there is no ‘de minimis’ sale rule and so two sales were enough.

Not one to give up, Adidas continued to challenge CFFC’s trademark. Adidas complained that since the Federal Circuit ruling, CFFC is still only selling one or two items a year which isn’t enough for use in commerce. This argument was rejected, again.

Then Adidas asserted that the CFFC trademark didn’t function as a source or product identifier. Now before the Trademark Trial and Appeal Board (“Board”), Adidas argued that “Add A Zero” had been used by CFFC solely to inform its members of fundraising efforts. To support this argument, Adidas submitted numerous news articles, webpages and blog posts showing that many third parties used “add a zero” to denote their own fundraising efforts. The Board agreed that “the slogan ‘add a zero’ is informational and would be understood as such by the relevant public.” However, the Board did not cancel CFFC’s mark. The Board held that the design of the trademark was enough to transform the words from a slogan into a trademark. The Board reasoned, “[n]otwithstanding the informational nature of the wording, the specific combination, placement and shading of the wording and design elements of this special form mark create an integrated whole with a single and distinct three-dimensional commercial impression; that is, the mark is unitary.”

WHY YOU SHOULD KNOW THIS. The “unitary mark” is a unique creature in the world of trademarks. The USPTO’s Trademark Manual of Examining Procedure says that a mark is “unitary” when “it creates a commercial impression separate and apart from any unregistrable component.” The test for unitariness asks whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable. The inseparable nature of the elements of the mark create an independent commercial impression. Creating a unitary mark may not be so easy. For example, just applying a different color or font to a phrase will not be enough. There has to be something else that creates a commercial impression. What’s the line between enough and not enough? An experienced trademark attorney can help with that analysis.

Apparently, some companies have an “ignorance is bliss” policy when it comes to reading patents. The belief is that if you don’t read it, you can’t be accused of knowing about it. And if you don’t know about it, you can’t be accused of willfully infringing on the patent. Willful patent infringement can increase or enhance the damages recoverable by a plaintiff. So a lack of willfulness can change the value proposition of prosecuting or defending an infringement suit. But is an ignorance policy a good idea?

By way of background, researching existing patents and patent applications is part of due diligence to make sure that: (1) what you have is really new enough to be patented; and (2) you aren’t infringing on an existing patent. A recent survey by Stanford Law School professor Lisa Larrimore Ouellette reported that 37% of researchers in the electronics and software space were instructed not to research other patents. Considering that there are hundreds of thousands of patents in this space, this might be a way of dealing with limited time and resources. It’s just not feasible to look through all of them while developing new inventions. So weighing the risks, companies make a strategic and business decision not to do any due diligence at all.

One company just learned the hard way that ignorance may not be so blissful.

Motiva Patents LLC brought an infringement action against HTC Corp. Motiva alleged that HTC was willfully blind to Motiva’s patents by having a policy of not reviewing patents belonging to others. Motiva also alleged that HTC went one step further, claiming that HTC allegedly performed specific acts to implement and enforce the policy. HTC filed a motion to dismiss arguing that Motiva failed to sufficiently allege HTC’s knowledge of Motiva’s patents. The court denied the motion to dismiss. The court held that a policy of not reviewing other patents is a deliberate action to avoid learning of potential infringement and could be construed as willful infringement.

The complaint stands and the case will now proceed to see if Motiva can prove its allegations.

WHY YOU SHOULD KNOW THIS. If HTC acted as alleged in Motiva’s complaint, HTC may have implemented the policy as a matter of self-preservation. It would have decided to take the risk of being accused of infringement for short-term cost and time-savings. Unfortunately, the Motiva v. HTC decision says “you’re damned if you do and you’re damned if you don’t”. So implementing an “ignorance is bliss” policy should be done after evaluating the pros and cons.

The 2019 award winner is a local medical practitioner who we will call “Doctor X.”

Doctor X notified his employees that he was terminating their defined benefit pension plan. The notice contained an offer of immediate payment of benefits in a lump sum in exchange for an employee release. Doctor X also told his staff that:

•They had to sign the termination paperwork ASAP or he would reduce their benefits by any additional professional fees incurred if they delayed in doing so.

•The plan had been retroactively frozen for two years before (without notice!) so no one had earned any benefits for the past two years.

•Doctor X shared his practice facility with another practitioner for about one year. During that year, the service of full-time employees was allocated between Doctor X and the other practitioner so that Doctor X could say that his employees had failed to earn full-time service credit for the year.

The bottom line is that Doctor X’s various schemes to deprive employees of their plan benefits reduced their lump sum payments by almost one-half! This could leave a lot more money for Doctor X – who also was a participant in the plan.

So, for his self-interested, after-the-fact finagling with his plan in complete disregard of his duties as plan trustee, Doctor X gets the well-deserved Hall of Shame recognition for 2019. But 2019 also was his year of comeuppance because we were able to “persuade” him to do the right thing and pay the full benefits to which our client and other employees were entitled.

TAKEAWAY:

If you have to deal with someone like Doctor X, call the doctor – the pension doctor!

Bet you thought influencers are something new? Influencers are individuals who have authority, knowledge, a position or a relationship that gives them the power to affect purchase decisions of others. Using social media like YouTube, Twitter, Instagram, TikTok and others, influencers will post pictures or videos using a product or service. The goal is to encourage the influencer’s followers to use the same product or service. And if they do, the manufacturer, seller or service provider sees a boost in sales. So those companies compensate the influencer. Despite what you may think, various members of the Kardashian and Jenner families weren’t the first influencers. Actually, one of the first modern influencers was Irene Castle. She and her husband, Vernon, were popular dancers in the early Twentieth Century. They were so popular that Irene became a fashion trendsetter. She was responsible for shorter, fuller skirts and loose, elasticized corsets (goodbye whalebone stays!). She is also credited with introducing American women in 1913 or 1914 to the bob – the short, boyish hairstyle favored by flappers in the 1920s.

Given the relationship between the number of an influencer’s followers and the influencer’s value, it’s no surprise that an enterprising entrepreneur could help influencers increase the number of their followers. Enter Devumi, LLC (“Devumi”) and its owner and CEO, German Calas, Jr. Devumi and Calas used their websites Devumi.com, TwitterBoost.com, Buyview.com, and Buyplans.com to sell fake indicators of social media influence, including fake followers, subscribers, views, and likes to users of social media platforms, including LinkedIn, Twitter, YouTube, Pinterest, Vine, and SoundCloud. Devumi and Calas allegedly sold more than 58,000 Twitter followers, 4,000 YouTube subscribers, 32,000 YouTube views, and 800 LinkedIn followers. The problem, of course, is if the followers are fake, then the influencer’s value proposition is also fake. This ultimately harms the companies that pay influencers as well as consumers.

The Federal Trade Commission (“FTC”) sued Devumi and Calas. The FTC obtained a $2.5 million judgment. Devumi is now out of businesses. The FTC settled with Calas and agreed not to pursue the judgment against him as long as he pays $250,000.00 and never does this again.

WHY YOU SHOULD KNOW THIS. The Devumi and Calas FTC judgment is a cautionary tale for both influencers and the companies that use them. Influencers should carefully vet anyone who promises to increase the number of their followers. Companies using influencers should carefully vet the influencers and insure that they came by their followers in an appropriate way.

What can you do if your retirement plan operations don’t square with the provisions of your plan document?

For example, your plan provides for a matching contribution maximum of one percent of a participant’s compensation – but your organization has been contributing up to two percent since the last plan amendment. Recognizing that the IRS regards any material deviation from plan provisions as a grounds for revoking the plan’s qualified status, what can you do?

A recent IRS revenue procedure explains how this kind of operational defect can be fixed with a plan amendment – and no IRS filing or expense. This approach is available if the following conditions are satisfied:

1. The retroactive plan amendment would increase (and cannot decrease) plan benefits.

2. The increase in benefits must apply to all employees eligible to participate in the plan.

So, in the example above, the plan could be retroactively amended to increase the one percent maximum matching contribution to two percent of compensation if the retroactive amendment covers all eligible employees. This last requirement can be tricky as illustrated by the following example:

• An employer’s 401(k) plan excludes overtime pay from participant compensation for benefit allocation purposes. The employer has mistakenly included overtime in compensation when allocating plan benefits. Can this operational failure be corrected by a retroactive plan amendment.

The IRS answer to this question is that a fix by retroactive amendment in this circumstance would be available only if 100 percent of the plan’s eligible employees were also eligible for overtime pay. So, the IRS answer would be “no” except for plans which cover only non-exempt hourly employees, such as a multiemployer plan covering only union employees. Note that other correction options (including self-correction and correction by submitting a Voluntary Correction Program – VCP – filing with the IRS) may be available even if an operating defect cannot be fixed with a retroactive plan amendment.

TAKEAWAY

There are a number of ways to correct defects in retirement plan documents and plan operations. In certain circumstances, these defects can be corrected without an IRS filing. In others, a VCP filing may be required. Consult your professional advisor about the correct approach. Also bear in mind that these fixes are not available after you receive notice that your plan is an audit target. So, taking corrective action now can avoid audit regret later on.

As the holiday season ramps up, a question arises. Can someone own a holiday trademark? Many have tried with various levels of success. The successful registrations don’t try to corner the market on holiday greetings. Here are some examples.

Trademarks Using a Foreign Language: (As far as the USPTO is concerned, the foreign language version is treated the same as the English Translation).

FELIZ NAVIDAD: Registered in 1997 for coffee beans and coffee drinks.

JOYEUX NOEL: Registered in 2010 for candles and wicks for lighting scented candles.

Connected to the Holiday:

MERRY CHRISTMAS FROM HEAVEN: Registered in 2009 for jewelry and Christmas tree ornaments and decorations.

MERRY CHRISTMAS - - IF APPLICABLE: Registered in 2010 for a website featuring personal greetings about Christmas.

MERRY CHRISTMAS YA FILTHY ANIMAL: Registered in 2016 for Christmas tree ornaments and Christmas decorations.

Clever Designs:

MERRY X(CROSS) MASS (See Logo): Registered in 2014 for beer mugs, coffee cups and coffee mugs.

HAPPY HANUKAH SHALOM (See Logo): Registered in 2012 for chocolate candy bars.

Completely Unrelated Goods and Services:

KWANZAA: Registered in 1994 for coffee.

MEOWY CHRISTMAS: Registered in 2016 for t-shirts, sweaters, baby bodysuits and tank tops.

MERRY CHRISTMAS YA LITTLE JERK: Registered in 2016 for shirts and sweaters.

MERRY CHRISTMAS BITCHES: Registered in 2017 for clothing.

KWANZAA KLAUS: Registered in 2018 for children’s toys.

WHY YOU SHOULD KNOW THIS. The registration of these trademarks does not impede your ability to use holiday greetings as intended. Merry Christmas, Happy Hanukah, Happy Kwanzaa and a Joyous New Year to all.

Qualcomm is a leader in the market of wireless chip connectivity that every cell phone needs. Qualcomm holds patents related to 3G, 4G and 5G networking technology as well as other software. Qualcomm demanded a license fee for every device that connects to a cellular network. In other words, all cell phones. It forced its customers, like Apple, to enter into patent license agreements for Qualcomm’s technology; even if the customer was using a chip manufactured by someone else, like Intel.

Enter the Federal Trade Commission (FTC). The FTC investigated Qualcomm and concluded that it was violating antitrust law. Antitrust law prohibits anticompetitive trade practices, i.e. monopolies. The FTC asserted that Qualcomm violated antitrust laws by forcing its customers to enter into patent license agreements for Qualcomm’s technology in order to purchase its chips. After a bench trial, the court entered judgment in the FTC’s favor. The court held that Qualcomm had a “no license, no chip” policy. Because of this policy, Qualcomm charged excessively high royalties. Not to get too complicated, but when a software company owns and licenses a standard essential patent (SEP), there are reasonable terms for licensing the software or Fair, Reasonable and Non-Discriminatory (FRAND) terms. Qualcomm’s excessive license fees violated FRAND. This resulted in injury to the consumer by increasing the cost of cell phones. The court came down hard on Qualcomm. Among other things, it required Qualcomm to end the “no license, no chip” policy. Qualcomm has to renegotiate its licenses in accordance with FRAND terms. Qualcomm is going to have to submit to compliance and monitoring procedures for seven years.

WHY YOU SHOULD KNOW THIS. What Qualcomm did is often described as “tying”. Qualcomm tied the licensing of the software to purchase the hardware. And it looks like Qualcomm also tied its software to the hardware of its competitors. This is called “horizontal” tying. Most businesses are rarely going to be in Qualcomm’s position. But if a business has a “golden ticket” type of technology, it can’t lock customers in and cut out competitors by tying its technology. Most businesses are more likely to find themselves in the position of Qualcomm’s customers. When presented with a “tied” product and licensing situation, it’s best to seek advice of counsel.

Luxottica Group S.A. owns the trademark, Ray-Ban, and its subsidiary owns the trademark, Oakley, for sunglasses. The sunglasses are typically sold in malls, either in standalone stores or at kiosks. Yes Assets, LLC owns a mall in Georgia. It leases the mall to Airport Mini Mall LLC, which operates under the name “International Discount Mall”. The mall is an indoor space made up of about 130 booths for individual subtenants. A mall like this can be a good source of bargains for shoppers.

According to Luxottica, International Malls’ subtenants were selling counterfeit Ray-Bans and Oakleys. International Mall was subject to three raids by law enforcement to execute search warrants. Subtenants were arrested and counterfeit goods were seized. Luxottica sent two letters to Yes Assets and Airport Mini Mall notifying them that their subtenants were not authorized to sell Luxottica’s eyewear and “that any mark resembling Ray-Ban or Oakley marks would indicate that the glasses were counterfeit.” Despite the raids, letters, and meetings with law enforcement, the landlords took no steps to evict the infringing subtenants.

So, Luxottica sued the landlords for trademark infringement. The landlords defended the action asserting that they aren’t the infringers; their subtenants are. Luxottica won at the district court on the theory of contributory infringement. Luxottica made the case that the defendant-landlords had constructive knowledge of their subtenants’ infringing activities but willfully turned a blind eye to it. The subtenants relied on the services given to them by the defendant-landlords to continue their infringing activities. And the landlords could have exercised control over the subtenants’ infringing activities by evicting them. The jury verdict in the amount of $1.9 million dollars against the defendant-landlords was upheld on appeal.

WHY YOU SHOULD KNOW THIS. Mere ownership of a property where an infringing act takes place normally isn’t a basis for a contributory infringement action. There has to be something more. Knowledge of the infringing activities and turning a blind eye to let it go on is “something more”. What’s a retail landlord to do? Make sure that the leases contain some essential terms. First, the tenant must make a representation and warranty that it will not engage in any type of intellectual property infringement or sell counterfeit goods. Second, the lease should provide for termination and eviction if the tenant violates the representation and warranty. Third, the landlord should move swiftly once it has notice of a breach of the representation and warranty. There’s no way that a landlord can always know if violations have happened. But, certainly receiving written notice from the owner of a trademark, raids, arrests and seizures are good signs that something untoward has occurred.

The New Republic magazine published 44 film reviews written by famed film and theater critic, Stanley Kauffmann. The magazine didn’t hire Kauffmann to write the reviews. He wrote them, submitted them and the magazine printed them. The parties never really talked about who owned the articles. They never entered into a “work for hire” agreement. Over the course of the years after the reviews were published, the magazine and Kauffmann were pretty vague about copyright ownership. Kauffmann granted many licenses to a third party to publish the reviews. At one point, the magazine ‘transferred’ the copyright in some of the articles to Kauffmann. In 2004, long after the reviews were written, the magazine sent Kauffmann a letter agreement stating that both parties always knew the reviews were supposed to be “work for hire”.

After Kauffmann passed away, the Rochester Institute of Technology published an anthology of Kauffmann’s reviews edited by Robert J. “Bert” Cardullo. Kauffmann’s estate sued the Institute for copyright infringement. The Institute argued that Kauffmann’s estate didn’t own the copyrights. The district court entered summary judgment for the Institute. The Second Circuit Court of Appeals reversed and remanded the case for further hearing. The Court held that the 2004 letter agreement was not an enforceable “work for hire” agreement. A valid “work for hire” agreement has to be executed before the work is created. The 2004 letter was signed long after the works were created. And there were no other facts that showed the parties’ intent at the time that the magazine published the works.

In an interesting side note, it turns out that Cardullo had misrepresented to the Institute that Kauffmann’s estate granted him permission to publish the anthology. The court described Cardullo as “a serial plagiarist of writings by Kauffmann and others” who “went so far as to forge a letter purporting to be from counsel for the Estate”. Cardullo admitted everything to the attorneys in the case. He was named and remains a third-party defendant in the case.

WHY YOU SHOULD KNOW THIS. In the law (as in grammar), there are always exceptions to the rule. Ownership of the copyright in a work belongs to the author. The exceptions are when the creator of the work is an employee or the creator signs a “work for hire” agreement before the work is created. Sometimes a tardy “work for hire” agreement can be enforceable. Here’s an example. The widow of a deceased artist was sued by Playboy Enterprises over ownership of her late husband’s artwork. Playboy alleged that it owned the paintings as “work for hire”. The widow argued that she owned the works because there was no written agreement. Playboy won. Playboy proved that it ordered the paintings for the magazine and that all of the checks cashed by the artist had a legend above the endorsement stating that the artist “assigned all right, title and interest” in the works. But, don’t rely on a Playboy type of scenario. When hiring someone to create a copyrightable work, always sign a “work for hire” agreement at the beginning.

USA-Halal Chamber of Commerce certifies meat and poultry products that have been slaughtered and prepared in accordance with Islamic law—a process known as “halal”. USA-Halal holds an incontestable certification trademark which is a crescent moon and the letter H. For those who adhere to halal dietary laws, the certification mark is critical to their food purchasing choices. As a certifying body, USA-Halal enters into license agreements with food manufacturers. In exchange for adhering to USA-Halal’s food guidelines, the licensee can display the certification mark on its products.

USA-Halal entered into a certification license agreement with Best Choice Meats, Inc. As part of the license to use the certification on meats and poultry, Best Choice had to submit monthly production reports to USA-Halal. Three years into the license, Best Choice stopped submitting the reports. USA-Halal terminated the license. Best Choice told USA-Halal that it stopped using the certification mark. Technically, that may have been true. However, Best Choice started using a trademark that looked a lot like the USA-Halal trademark.

USA-Halal brought suit against Best Choice, alleging that Best Choice’s mark would create a likelihood of confusion with USA-Halal’s certification mark. The court granted USA-Halal’s motion for a preliminary injunction. The court rejected Best Choice’s arguments that the two marks were not similar and USA-Halal would not suffer irreparable harm if Best Choice kept using its trademark. The court held that the two marks were nearly indistinguishable. An average consumer wouldn’t notice the differences between the two trademarks. So, allowing Best Choice to use the similar trademark would put USA-Halal’s reputation at risk of continuing harm. The court also found that there was a risk of public harm in letting consumers be confused about whether or not Best Choice was certified by USA-Halal. The court then balanced the equities. The court didn’t order a recall of the uncertified meat because that would cause undue hardship to Best Choice. And the court allowed Best Choice to sell off any meat that had already been packaged with the trademark prior to the entry of the order.

WHY YOU SHOULD KNOW THIS. A certification mark is a great way to protect a system. It can be used for anything from food preparation to education methods to veterinary services to theatrical trade specialties and so on. Famous certification marks like the Woolmark logo and the Underwriter’s Lab logo, bolster the products they certify for the benefit of their licensees. But as Best Choice learned, the benefits of the certification mark do not continue after the certification license ends. On another note, if an organization is thinking about developing a certification mark, qualifying for a certification mark takes some preparation. There are also ongoing obligations to make sure that certification mark licensees comply with the terms of being certified.

TiVo is a television digital recording device (“DVR”). TiVo has search functions that allow the user to search broadcast and streaming television programs and schedule recordings for later viewing. TiVo acquired another company that it spun off as a subsidiary named Veveo. Through the acquisition, Veveo picked up a series of patents, one of which was a digital search system. The patent described the invention as a system for associating characters entered into a search bar with numerical identifiers and linking search targets, such as digital files, with digital combinations. You don’t have to know what that means. Just know that robust search capabilities would allow TiVo to surpass competitors like Comcast.

The problem arose when Veveo sued Comcast for infringing on the search system. The proceeding took place in an inter partes proceeding before the Patent Trial and Appeal Board (“PTAB”). Comcast argued that the Veveo invention was obvious and so the patent should be invalidated. PTAB found in Comcast’s favor. PTAB held that Veveo’s invention was really a combination of prior art (already known inventions). The combination would be obvious to anyone practicing in the field. Veveo appealed to the Federal Circuit Court of Appeals. Before the Federal Circuit, Veveo argued that the prior art didn’t have the same mapping capabilities so it wouldn’t have been obvious. The Federal Circuit was not convinced and affirmed the PTAB.

WHY YOU SHOULD KNOW THIS. Patents have to be new, useful and non-obvious. This case focused on the “obviousness” prong. Obviousness doesn’t mean obvious to everyone. It means obvious to anyone who has ordinary skills in the area. On another note, the patent in question was based on a combination of already known inventions. You can get a patent for combining prior art in a way to create something no one ever thought of before. A famous example of this is the Crocs shoe. There were other clog like shoes with heel straps before Crocs. But Crocs was the first to add foam to the shoe’s heel straps. By adding the foam, Crocs solved a problem of uncomfortable heel straps. No comment on the cultural divide between those who like Crocs and those who hate them.

Deborah Innis was terminated by her employer, Telligen, Inc., after 18 years of service. She was a participant in the Telligen Employee Stock Ownership Plan (“ESOP”), and Bankers Trust was the ESOP trustee.

In connection with her discharge, Innis signed a severance agreement containing a general release (“Release”) which absolved Telligen and its stockholders and affiliates, as well as all persons acting on behalf of any of those parties, from all claims

"…of any nature whatsoever…arising from, or otherwise related to [Innis’] employment relationship with [Telligen]."

After signing the severance agreement and accepting severance compensation and outplacement services, Innis sued Bankers Trust for breach of fiduciary duty in connection with the establishment of the ESOP. Bankers Trust filed a motion for summary judgment based on the scope and validity of the Release as to the fiduciary breach claims and its applicability to Bankers Trust, a third party not related to Telligen except as trustee of its ESOP.

The U.S. District Court for the Southern District of Iowa granted Bankers Trust’s motion for summary judgment (see Innis v. Bankers Trust Co. of South Dakota, No. 4:16-cv-00650-RGE-SBJ, April 30, 2019). In doing so, the court determined that the language of the Release was so broad that it included ERISA claims, and that Bankers Trust was protected by the Release as a person “acting on behalf of” Telligen stockholders.

It is worth noting that the court interpreted the scope of the Release on the basis of state law, in this case the law of Iowa. Further, the court’s holding applied the Release to ERISA breach of fiduciary duty claims even though the Release:

• Did not specifically mention “ERISA” along with the enumerated list of other federal statutes subject to the Release
• Did not specifically identify plan fiduciaries as parties subject to the Release
• Did not mention fiduciary claims as subject to the Release
• Contained language stating in large type that the Release applied only to “known claims”

All of these potential pitfalls could be mitigated by more specific release language referencing ERISA, fiduciary claims, plan fiduciaries and unknown as well as known claims. So, even though Bankers Trust dodged a bullet in the Innis case, it is obvious that the language of its Release could have been better drafted to protect the ESOP trustee as well as other plan fiduciaries, such as employees serving on in-house retirement plan committees. Such foresight could have saved Bankers Trust its expensive trip to the courthouse.

TAKEAWAYS:

ERISA fiduciaries, including directors, officers and employees involved in retirement plan administration, can be protected from ERISA breach of fiduciary duty claims by former employees. Properly prepared employee releases are likely to be upheld by a reviewing court. They might also head off claims by former employees and the associated cost of defense. Also bear in mind that employers may be on the hook for legal fees of independent plan service providers if the applicable service contract contains indemnification provisions. So, it makes sense to have your employee release and benefit distribution release reviewed by an ERISA lawyer to make sure plan fiduciaries are afforded the best possible contract protection.

Tis the season for banana costumes. In 2017, Rasta Imposta sued Kmart for copyright infringement because Kmart was selling a virtually identical banana costume (See Blawg Post dated 10/31/2017). The parties settled. Then Rasta Imposta’s competitor, Kangaroo Manufacturing Inc. started selling a substantially similar banana costume. The founder of Kangaroo had once worked for Rasta Imposta and knew that Rasta Imposta had registered the copyright in the banana costume. But Kangaroo manufactured and sold the banana costume anyway.

Rasta Imposta sued Kangaroo for trade dress infringement and unfair competition. Rasta Imposta obtained a preliminary injunction. Kangaroo filed an interlocutory appeal to the Third Circuit Court of Appeals.

Kangaroo argued that Rasta Imposta’s copyright was invalid because the costume was a useful article and not eligible for copyright protection. But a useful article can have design features that are eligible for copyright. The design element has to be identified and imagined apart from the useful article so it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium. This is called the separatability analysis. So the court asked two questions: (1) Can the artistic feature of the useful article’s design be perceived as a two- or three-dimensional work of art separate from the useful article? and (2) Would the feature qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article? For the first question, the court rejected Kangaroo’s argument that the banana costume is just a depiction of a banana and there’s nothing creative about a banana. The court held that a depiction of fruit can be creative. And there are elements of the costume that can be separated from a banana. So the answer to the first question was “yes”. For the second question, the court rejected Kangaroo’s argument that everyone would need to use those non-utilitarian elements of a banana in a banana costume or as copyright lawyers call it, scenes a faire. In other words, there’s only one way to create a banana costume that looks like a banana. The court held there are different ways to fashion a banana costume and elements stand on their own and apart from the banana itself. In conclusion, the court held: “Because Rasta established a reasonable likelihood that it could prove entitlement to protection for the veritable fruits of its intellectual labor, we will affirm.”

WHY YOU SHOULD KNOW THIS. The Rasta Imposta decision gives us an in depth analysis of what it takes to create protectable elements in a Halloween costume; or any useful article for that matter. If you decide to dress up as a banana this Halloween, Rasta Imposta is ready to fulfill your desire. But, without disparaging the creative efforts of Rasta Imposta, the most popular adult costume this Halloween is Hot Mr. Rogers.

HAPPY HALLOWEEN.

Service providers for 401(k) and other retirement plans require access to personal data on participants including name, age, address, date of hire, compensation and possibly social security number. This data is necessary to allow plan administrators and recordkeepers to properly allocate plan contributions and earnings to individual participant accounts, to prepare participant statements and for income tax reporting purposes.

Some financial institutions providing services to retirement plans have used such participant data to solicit sales of their non-plan products and services, such as individual retirement accounts, outside wealth management services, and life or disability insurance. So, are these plan service providers simply taking advantage of a business opportunity or are they improperly exploiting information that belongs to the retirement plan and its participants? In legal terms, is the personal information of retirement plan participants a “plan asset” that plan fiduciaries must protect, or is it just incidental data of little commercial value?

At least one district court has concluded that the personal information of retirement plan participants is not a plan asset because it is not “property the plan could sell or lease” (see _Divane v. Northwestern University _which is discussed in more detail HERE).

But there is a thriving commercial market for personal information and it is bought and sold for marketing purposes every day (think Google here). So, should retirement plan fiduciaries act to protect the personal information of plan participants while the courts sort this out? Recent settlements in cases involving Vanderbilt University and Johns Hopkins University strongly suggest that the answer to that question is “yes.” These settlements, in addition to requiring the payment of millions of dollars to resolve a variety of claims involving retirement plan administration, also require the university plan sponsors to prohibit plan service providers from soliciting current plan participants to “cross-sell” their non-plan products and services. Participant data has value and, like medical records, is not disclosed to service providers with the expectation that it will be used by the provider for its own commercial purposes.

Takeaways:

Plan fiduciaries should protect participant information from non-plan use by plan service providers. Whether the basis for doing so is protection of personal privacy or the preservation of “plan assets,” the trend is clear. And that is the case because one court’s conclusion that personal information is not “property” simply does not reflect commercial reality.

Plan fiduciaries can take action by including appropriate provisions in their agreements with plan service providers. For plans in mid contract, consider inquiring about the non-plan use of participant data and objecting to any such use that comes to their attention. Plan service providers themselves need to take stock of their sales practices and evaluate them in the light of the Vanderbilt and Johns Hopkins settlements as well as any opinion that may be issued in the appeal of Divane v. Northwestern University.