On July 1, 2017, an important grace period terminated for Canada’s Anti-Spam Law (CASL), which initially took effect on July 1, 2014. The beginning of this month marked the end of the two-year grace period for entities to rely on “implied consent” as a basis for sending commercial electronic messages to potential customers, donors, clients or the like. Going forward, entities will need to obtain express consent from all email recipients, or expunge “stale” contacts to avoid potential violations of CASL. A private right of action against offenders that was also set to become available on July 1, 2017 has been put on hold indefinitely subject to Canadian government review. (more…)
The U.S. Supreme Court recently struck down as unconstitutional the ban on disparaging trademark registrations, but that doesn’t mean a dispensary can get a federal trademark registration. (more…)
Yesterday, the Supreme Court of the United States handed down a landmark trademark decision that will pave the way for those with so-called “offensive” or disparaging trademarks to secure federal trademark registration for those marks. To date, the poster child for “disparaging” trademarks has been the Washington Redskins football team, whose name and logo have been the subject of increasingly vocal challenges by Native Americans and others as an offensive stereotype against Native Americans. (Ironically, even the members of the band The Slants, whose lawsuit eventually paved the way for the Redskins to maintain trademark registrations for the team name, were allegedly against the team’s use of the arguably offensive name.) (more…)
Last month, the Federal Circuit issued a decision confirming that a “private” sale of an invention, more than one year before the effective filing date of a patent application for that invention, invalidates the resultant patent. The case, captioned Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., addressed the “on-sale bar” in 35 U.S.C. § 102 and verified that the America Invents Act (AIA) did not change the pre-AIA statutory meaning of “on sale.” (more…)
The United States Supreme Court, in the case Star Athletica, LLC v. Varsity Brands, Inc., et al., Case No. 15-866, ruled in a 6-2 opinion that two-dimensional designs applied to three-dimensional useful articles, in this case cheerleading uniforms, are entitled to copyright protection. The majority opinion by Justice Clarence Thomas held that a feature of the design of a useful article is eligible for copyright if “the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work — either on its own or fixed in some other tangible medium of expression — if it were imagined separately from the useful article into which it is incorporated.”
Under Section 101 of the Copyright Act, a “useful article” is an item or object “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Such utilitarian objects, including the three-dimensional designs of cheerleading uniforms, are not protected under U.S. Copyright Law.
Justice Thomas wrote for the Court that its test for separability starts with Section 101, in which “‘pictorial, graphic, or sculptural features’ of the ‘design of a useful article’ are eligible for copyright protection as artistic works if those features ‘can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.'” The Court explained that its decision is “not a free-ranging search [f]or the best copyright policy, but rather ‘depends solely on statutory interpretation,'” citing the last Supreme Court opinion to address the issue of separability – the 1952 case of Mazer v. Stein.
The Court described its task in the Varsity case as “to determine whether the arrangements of lines, chevrons, and colorful shapes appearing on the surface of [Varsity’s] cheerleading uniforms are eligible for copyright protection as separable features of the design of those cheerleading uniforms.” The Court, applying this test, held that “one can identify the [designs] as features having pictorial, graphic, or sculptural qualities” and can separate the designs from the cheerleading uniforms on which the designs appear. The majority opinion and the concurrence of Justice Ginsburg gave substantial credence to the fact that Varsity had “applied the designs in this case to other media of expression – different types of clothing – without replicating the uniform.”
By affirming the Sixth Circuit’s reversal of the district court, the Supreme Court rejected two of Star’s arguments: (1) Varsity’s designs are not protectable because they are “necessary to two of the uniforms’ ‘inherent, essential, or natural functions’ – identifying the wearer as a cheerleader and enhancing the wearer’s physical appearance;” and (2) that the separability analysis should include objective components asking whether the design elements reflect the designer’s artistic judgment exercised independently of functional influence or are marketable to a “significant segment of the community” if separated from the underlying useful article.
The Court opined that “asking whether some segment of the market would be interested in a given work threatens to prize popular art over other forms, or to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act.”
PRO TIP: The Varsity ruling will impact the fashion industry and its approach to copyright protection, but the ruling also supports other businesses that apply artistic elements on useful articles and may want to consider seeking copyright protection by registering copyright protectable designs at the U.S. Copyright Office.
Baker Donelson represented Varsity from the filing of the complaint through oral argument before the Sixth Circuit and briefing of the case before the Supreme Court. Goodwin Procter and Cowan Liebowitz were also involved with the Supreme Court briefing, while Goodwin Procter handled oral argument before the Supreme Court.
Trademark owners applying for “intent to use” applications risk loss of trademark rights if the identification of goods services in the intent to use application is broader than the actual intended use of the mark.
Brand owners generally want to protect a potential trademark as broadly as possible. Often, this leads to specifying as many goods or services in their intent-to-use trademark applications as might possibly be covered by the planned mark. If no proof of bona fide intent can be marshaled, the registration is vulnerable to attack.
A recent case demonstrates that dreaming big in trademark applications is not to be encouraged. While Kelly Services v. Creative Harbor did not result in a punitive cancelation of the mark’s resulting registration, it nonetheless made it clear that goods and services with only potential plans for use with a mark will be cut out of the registration when challenged. See Kelly Services, Inc. v. Creative Harbor, LLC, No. 16-1200 (6th Cir. 2017).
Section 1(b) of the Lanham Act does not define “bona fide intent,” but the Federal Circuit in Kelly Services required that “the applicant’s intent must be demonstrable and more than a mere subjective belief.” That is, the applicant must show more than a mere intention to reserve a right in the mark. Particularly suspicious circumstances that cast doubt on the bona fides of the application include: (1) excessive numbers of intent-to-use applications in relation to the number of products the applicant is likely to introduce; (2) unreasonably vague descriptions of the proposed goods; (3) excessive numbers of intended products; and (4) excessive numbers of desirable trademarks intended for use on a single new product.
To demonstrate the presence of their bona fide intent to use a mark, however, brand owners can do a number of things. For example, the owner can: (1) conduct a trademark availability search on the mark; (2) develop marketing materials for the brand; or (3) produce correspondence or documents mentioning the planned use of the mark, the licensing of the brand, the regulatory approval of the branded line or the business development of the brand.
Such evidence shifts the burden of proof back to the challenger, who must then produce a preponderance of evidence to the contrary – a much more difficult task in light of demonstrated bona fide intent.
PRO TIP: Before filing a statement of use, compare the identification of goods and services in the trademark application to the goods and services currently offered under the brand, then tailor the identification to the goods and services in use under the mark.
Duff Goldman of Charm City Cakes, one of our hometown heroes in Baltimore, a.k.a. the Ace of Cakes, created a striking cake for President Obama’s 2013 inauguration. The cake design caught the eye of the incoming presidential administration that ordered a different pastry chef, Buttercream Bake Shop, to create a replica of the Ace’s creation.
Can the pastry chef that produced the replica cake be held liable for stealing the Ace’s cake design?
In theory, a three-dimensional design may be protected under copyright or patent law. Patent law generally protects utilitarian inventions but a designer may obtain a design patent that protects the ornamentation of the design for 15 years. To obtain such patent protection, the designer must successfully ‘prosecute’ a design patent application until the Patent Office is satisfied – a costly several yearlong process.
Copyright law intends to be more user-friendly and less costly. Copyright protection ‘attaches’ to the design upon fixation in a tangible medium. Copyright does not require the designer to first register the copyright, or meet other formalities, so protection is immediate and free. The cake design is fixed upon the drying of its icing and copyright protection attaches. Easy, right?
Not so fast. Bringing a lawsuit for copyright infringement requires a valid copyright registration. Yes – I did say copyright attaches without formalities, but copyright law requires registration of copyrights prior to litigation for three reasons. A copyright registration provides (1) proof of ownership of the copyright; (2) a presumption the copyright is valid; and (3) the option to elect to recover statutory damages if the registration date precedes the infringement. Opting to request statutory damages as a remedy allows the court to decide the amount and calculation of damages without proof of the owner’s losses or the infringer’s profits from the design. However, if a copyright registration was not filed prior to infringement, the owner may request expedited registration from the Copyright Office and seek actual damages and any additional profits of the infringer in federal court.
So if the Ace filed an application for copyright registration in 2013, the allegedly infringing cake design created in 2017 could immediately be called into court for copyright infringement, and if the Ace proves that there is copyright infringement, statutory damages would be available. Great fact, the second pastry chef admitted she was commissioned to reproduce the original design on the cake that the President and Vice President would cut with a ceremonial sword. Slam-dunk!
Again, not so fast. A valid copyright must be protectable copyright subject matter and meet minimum standards of creativity. Copyright law does not protect functional features, geometric shapes, including cylinders, stripes, color, or lines. Layer cakes as food are functional.
Unlike some of the Ace’s fanciful sculptural cakes, this inaugural cake design is unlikely to comprise copyrightable subject matter. The cake deploys stacked cylindrical layers, solid color layers, striping, narrow bands of color, stars, and coin-shapes that are not protectable. This leaves the bunting, presidential seal, and the seals of the army, navy, marines, air force, and coast guard. The government seals belong to the federal government and are forbidden for non-official use; and bunting is unprotectable as ‘scene au faire‘ in connection with government galas.
Moral rights (rights protecting the integrity of an artist’s name and designs, depending on applicable law) might protect the Ace’s cake design but not in the United States. U.S. Copyright law provides limited moral rights to protect certain eligible artworks by visual artists. Cake design is not an eligible artwork.
1/24/2017 Correction: The original cake was created in 2013 and the replica cake was created in 2017. Also, if a copyright registration was not filed prior to infringement, the copyright owner may obtain copyright registration, file in federal court, and request actual damages. H/t Kevin Madigan for pointing this out.
The U.S. Copyright Office announced yesterday its new online registration system for designated agents. Online service providers designate agents to receive notifications of claimed copyright infringement. As of December 1, 2016, the Copyright Office no longer accepts paper applications for agent designation. Service providers who previously designated agents in the existing directory have until December 31, 2017 to register in the new online directory.
Online service providers, including websites and online platforms that allow users to store material on their systems, risk liability for direct or contributory copyright infringement from third party materials posted by users without permission. Since users often do not understand or care about copyright law, an unwary service provider (who often appears to have deeper pockets) may have a rude awakening when it finds itself the sole defendant in a copyright litigation over unauthorized photos or other user generated content posted on its website by a user.
Superheros donning black robes save website operators from liability for users’ copyright infringement of sound recordings fixed prior to 1972.
The Second Circuit Court of Appeals ruled today that the safe harbors provided by the Digital Millennium Copyright Act (DMCA) protect qualifying website operators from liability from such pre-1972 recordings, even though they are not covered by federal copyright law. This decision overrules a finding by the District Court for the Southern District of New York that section 501(a) of the Copyright Act “defines” the term “infringement of copyright” used in section 512(c) to define the scope of the DMCA safe harbor provision for qualifying website operators as limiting the safe harbor to materials infringed under federal copyright laws.
The Second Circuit disagrees, saying Section 501(a) does not provide an exclusive definition of “infringement of copyright” and given that the purpose of the DMCA “was to make economically feasible the provision of valuable Internet services while expanding protections of the interests of copyright owners through the new notice-and-takedown provision. To construe § 512(c) as leaving [website operators] subject to liability under state copyright laws for postings by users of infringements of which the [website operators] were unaware would defeat the very purpose Congress sought to achieve in passing the statute.” Capital Records, LLC, et al., v. Vimeo, LLC, Docket No. 14-1048/1049/1067/1068S, page 29, (CA 2 Argued Nov. 6, 2015, Decided June 16, 2016).
TIP: Like the idea of having the protection of the DMCA Safe Harbor? Review section 17 USC 512 to learn about the requirements needed to qualify for the safe harbor, including a copyright policy that informs users who infringe copyrights that they will be blocked, a designated agent and understanding the notice and takedown procedure for allegedly infringing material.
The Mayo Clinic Center for Social Media has a mission to personalize healthcare by using social media. Crazy – you say? By following best practices, healthcare providers can share their stories. True – covered entities and their business associates may not share protected health information. But we can share stories about our institutions and share health information.
On Facebook Groups, we can engage with visitors to our pages and share health tips in closed groups. Will we meet some criticism? Yes, we will. But we gain by learning from customer criticism. Better yet, we make new friends by sharing more information. Criticism can be an opportunity when you have a playbook that details how to handle criticism.
Can we communicate in in 140 characters? Yes, particularly when we add photos to our posts. Images convey information graphically when words fail. Don’t share photos of identifiable patients, but use medical or other images that also convey the message. Can we share information from third parties other than patients? Not by scraping the content. Infringing content causes legal issues. Luckily, most social medium platforms provide tools that permit you to share website pages, including a photo from a page you share.
Don’t be shy, tell your story, and share your patients’ stories with their permission. Let’s make healthcare more approachable!