Supreme Court to Hear “Not-So-Generic” Case Regarding Generic Trademarks

The U.S. Supreme Court will hear a case that could have profound implications for owners of generic marks.  In United States Patent and Trademark Office v. Booking.com B.V., the U.S. Supreme Court will decide if adding the term “.com” to a generic word creates a protectable trademark for an online business.  This case arose when the U.S. Patent and Trademark Office (USPTO) refused registration of “Booking.com” as a trademark for an online travel website.  The USPTO determined that the word “Booking” was generic for hotel reservation services.  Adding the top-level domain “.com” to the generic word, the USPTO reasoned, did not create a distinctive mark because top-level domains do not ordinarily serve a source-indicating function.

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Supreme Court to Decide Epic 10-Year Copyright Infringement Case

The “copyright lawsuit of the decade” is finally coming to a conclusion, as the U.S. Supreme Court granted certiorari to Google LLC v. Oracle America, Inc.  The Court’s decision is immensely important to the computer software industry since the Court will decide if a software application programming interface (API) is protected by copyright. The Court may, for the first time in 25 years, address the copyright fair use doctrine by deciding if use of an API is a fair use. This case has a long and convoluted history, but it started in 2010 when Oracle sued Google, alleging that Google committed patent and copyright infringement by using Java application programming interface declarations in its Android platform. The patent claims were resolved, leaving the copyright infringement claim. After several rounds of decisions, the U.S. Court of Appeals for the Federal Circuit held that APIs were protected by copyright and that Google’s use of them did not constitute fair use. Google appealed to the Supreme Court seeking reversal of those decisions.

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Proposed Legislation Would Create a Small Claims Court for Copyright Disputes

The U.S. House of Representatives recently passed legislation that would create a small claims court for copyright disputes.  If enacted into law, the U.S. Copyright Office would house a dispute resolution system known as the Copyright Claims Board as an alternate forum to resolve copyright disputes when the amount in controversy is less than $30,000. Under the legislation as currently worded, the Copyright Office would be responsible for setting up a filing system, enacting rules to govern proceedings, and appointing panels of copyright experts, called Copyright Claims Officers, to decide disputes.  Many details still need to be worked out, but all disputes would be decided based upon written submissions and Internet-based communications with no in-person appearances in court. Intellectual property practitioners are likely familiar with the Trademark Trial and Appeal Board (TTAB), which decides federal trademark registration disputes.  Trials before the Copyright Claims Board could share similarities with the TTAB.

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Beware of Copyright Trolls

Have you ever copied a photograph from a website thinking that the photograph was free to use?  You may have thought this because the photograph did not contain a watermark or copyright notice. Maybe the photograph claimed that it was “royalty free,” and you assumed that meant it was free to use for no charge.  Or, perhaps you were aware that using the photograph was not authorized, but you figured it would never be discovered. These are common mistakes that can prove to be costly.

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New Rule Requires U.S. Counsel to Represent Foreign Trademark Applicants and Registrants

The U.S. Patent and Trademark Office (USPTO) issued a new rule that requires foreign trademark applicants and registrants to be represented by an attorney licensed in the United States. Under the U.S. counsel rule, codified at 37 C.F.R. § 2.11(a), any trademark applicant or registrant domiciled outside of the United States must retain U.S. counsel to file any document before the USPTO.  This rule change is an effort to combat the unauthorized practice of law as well as the use of fake or suspicious specimens. The rule change was prompted by the USPTO’s examination of foreign trademark applications. In some cases, foreign applicants filed hundreds of trademark applications in their own names.  After reviewing those applications, the USPTO discovered that those applications were, in fact, filed by foreign practitioners.

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Avoid Copyright Infringement

How to Properly Use Music and Images During Worship Service

Churches today use a variety of intellectual property during worship services, such as music, photographs, quotes, and video clips.  These materials can be important to a worship service by increasing engagement, illustrating a point, or adding extra meaning to the service.  However, most materials are protected by copyright laws.

Using intellectual property without the permission of the copyright owner or other legal authority is copyright infringement and can result in significant monetary damages.  Churches need to know the legal issues that apply to using intellectual property so they can take steps to get permission when needed and avoid copyright infringement.    Continue reading “Avoid Copyright Infringement”

EU Data Protection Law to Impact Charitable Donations

Do you have customers in Europe? Are you a charity that receives donations from EU citizens? Do you send your newsletter to people in Europe? If any of these apply to you, you should be aware of changes to European privacy laws that will come into effect on May 18, 2018. That is the effective date of the new European Union General Data Protection Regulation (GDPR), which significantly broadens the geographic scope of European privacy laws to include individuals and businesses outside of the EU. Continue reading “EU Data Protection Law to Impact Charitable Donations”

Developing Open Source Software Not an Exempt Purpose

You may be familiar with open source software. If you are, you know it is software people can modify and share because its design is publicly accessible. Would efforts to develop open source software qualify as an exempt purpose under tax law? It’s not commercial and it benefits the public, right?

Not according to the IRS. Continue reading “Developing Open Source Software Not an Exempt Purpose”

Pilot Program Updates Trademark Registrations with New Technology

What do phonograph records, cassette tapes, CDs, and downloadable mp3 files have in common?  They are all products whose trademarks are registered in class 9 (class 9 covers scientific and electronic goods).  They also embody sound recordings on media that are in varying stages of obsolescence.  Forty years ago, a record company may have sold music on phonograph records but today sells them as downloadable mp3 files.  The product, music, is the same – only the format has changed. Continue reading “Pilot Program Updates Trademark Registrations with New Technology”

Copyright Office Announces Requirements for DMCA Protections

The Digital Millennium Copyright Act (DMCA) provides valuable liability protections for service providers and website operators.  The DMCA protects service providers and website operators from liability for copyright infringement due to content posted by third parties.  To take advantage of the DMCA’s safe harbor protections, website operators must designate an agent to receive notices of claimed copyright infringement (DMCA Agent).  The name, address, phone number, and e-mail address of the DMCA Agent must be posted on the website and also submitted to the Copyright Office. Continue reading “Copyright Office Announces Requirements for DMCA Protections”