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”

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”

Understanding Trademarks

Trademarks are valuable assets of businesses and non-profit organizations. A carefully-selected trademark can help a business distinguish itself in the marketplace and create a lasting impression with consumers. Through continual use, trademarks enable businesses and organizations to generate goodwill with the public. This goodwill can become the most valuable asset of the business or organization. Because trademarks are so important, businesses and non-profit organizations should carefully consider which trademarks to use and adequately protect those marks. Continue reading “Understanding Trademarks”

Estate Loses Exclusive Rights to Sherlock Holmes Series

Young and old have been captivated by Sir Arthur Conan Doyle’s books and stories detailing the adventures of Sherlock Holmes and his companion, Dr. Watson.[1]After Sir Arthur Conan Doyle’s death in 1930, dozens of authors added to his work, elaborating on previously established stories, creating entirely new ones, or refashioning them into television shows and movies—but not without entering into a licensing agreement with Sir Arthur Conan Doyle’s estate (“Conan Doyle”).[2] Conan Doyle held exclusive rights to Sir Arthur Conan Doyle’s works (collectively called “the Canon”), and any party hoping to use his characters or story elements had to enter into an agreement or risk litigation. Sherlock Holmes enthusiasts eagerly awaited the day when they could use Sir Arthur Conan Doyle’s characters and story elements without involving Conan Doyle. However, Conan Doyle continued to guard its copyrights even after many believed they had entered the public domain.[3] One author believed Conan Doyle was overstepping its bounds and sought a declaratory judgment to resolve the uncertainty. Continue reading “Estate Loses Exclusive Rights to Sherlock Holmes Series”