Colorado 2022 law - Prohibitions Against Noncompete Covenants

APPLE v. PEAR: Trademark Opposition

 Are you confused by the source of services represented by these logos?

 

        v.       

 

Apple recently opposed an application for U.S. Federal trademark registration of a pear logo design owned by Super Healthy Kids, Inc. The applicant owning the pear design has been pursuing registration for its trademark in connection with (1) a software application to organize and plan meals, evaluate nutritional content, create a recipe database, and manage purchasing ingredients; and (2) an online social network in the field of cooking, food and nutrition.

Apple’s mark is undisputedly a famous one. The major question (without reciting the entire opposition) for the U.S. PTO Trademark Trial and Appeal Board is whether the pear design “readily calls to mind” Apple’s logo and creates a similar commercial impression so as to cause a likelihood of confusion between the source of each mark’s products and services or to cause a consumer to believe applicant’s services are affiliated with or endorsed by, Apple.

Apple’s Notice of Opposition can be viewed HERE. Discovery has begun and this dispute may go well in late 2021 if not resolved between the parties.

 

Applicant has taken the dispute to social media. Applicant’s principal, Russell Monson, has asked consumers to sign a petition requesting that Apple drop its opposition against his company. The petition can be viewed HERE.  

 

While the petition will unlikely have any bearing in the opposition itself, such petitions might be a novel way of conducting surveys of consumers – if questions are carefully and neutrally posed – to become a less expensive way of conducting survey evidence to determine whether there is a a likelihood of confusion between trademarks. Further, if Mr. Monson gains enough signatures, will Apple be swayed into withdrawing the petition? Time will tell…

 

As of the date of this writing, the petition has 231,465 signatures.

 

Nothing herein should be considered legal advice. If you have a legal question, please consult a qualified legal practitioner.

U.S. Copyright Office Study on DMCA Safe Harbor Provisions Completed

In some instances, the U.S. Digital Millennium Copyright Act (DMCA), passed in 1998, provides a safe harbor (a limitation on liability) for internet service providers (ISPs) against liability for copyright infringement by their users. An ISP must meet all statutory requirements.

 

If you provide an Internet website where third parties are able to upload information, including (without limitation) videos, images, audio clips or data or if you provide a search engine, information location tools, or directories, you may be considered an ISP. As such, in order to take advantage of the safe harbor provisions of the U.S. Digital Millenium Copyright Act (“DMCA”), you must register with the U.S. Copyright Office. In addition, contact information for your designated agent and your Copyright Policy should be available to the public on your site(s). Through such registration, notice, and compliance with the DMCA generally, you may be able to avoid liability should a copyright owner allege infringement as a result of third party postings to your site(s). 

  

DMCA limitations on liability were meant to aid in the growth of Internet-based business. Time has certainly changed the way we view, use, and connect through, the Internet. As a result, the U.S. Copyright Office has been reviewing the DMCA to determine if it still meets the needs of copyright owners and online service providers. As of May 21, 2020, the Copyright Office issued its study of the DMCA.

 

The entire U.S. Copyright Office study can be viewed HERE.

 

Look for new legislation in the U.S. Congress concerning potential changes to Section 512.

 

Should you have questions regarding the steps currently required to gain safe harbor from liability for copyright content infringement for which you do not have control and do not monitor, please contact Judith Keene at 720-684-5375 or jkeene@hpdlaw.com.

 

Nothing herein should be considered legal advice. If you have specific legal issues, please contact a qualified practitioner.

STAIRWAY TO HEAVEN, Iconic Original or Infringement

The introductory chord progression of “Stairway to Heaven” by Led Zeppelin is undeniably iconic, but the decision as to whether it is original and not an infringement of Randy Craig Wolfe’s earlier-released song “Taurus” (under the self-titled album “Spirit”) is still undecided.

Wolfe’s estate first sued Led Zeppelin for copyright infringement in 2014. A trial court issued judgment in Led Zeppelin’s favor in 2016, however, that did not stop Wolfe’s estate. Ongoing issues requesting a new trial in the case were recently argued on September 23, 2019 at the 9^th Circuit Court of Appeals in San Francisco before an 11-judge panel (which is quite unusual in such cases).

The determination of whether a new trial is required may rest on a subtle technicality. The critical issue appears to be whether copyright infringement under the 1909 Copyright Act must be determined based solely on the written compositions filed with the U.S. Copyright Office or based on sound recordings (not registrable at that time).

Should the 9^th Circuit determine that a new trial is warranted based upon looking at evidence outside what was filed in the U.S. Copyright Office, litigators may need to change their approach to some copyright infringement actions. More critically, whatever the outcome, music creators should always file both sound recordings and written compositions with the U.S. Copyright Office!

By way of background, Led Zeppelin and Spirit performed in 5 of the same music festivals during Led Zeppelin’s first U.S. tour in 1968. Jimmy Page, who takes credit for the music to “Stairway to Heaven,” owned the “Spirit” album, which included the song “Taurus” written by Spirit member Randy Craig Wolfe.  Page testified at the original trial that he could not remember whether he heard “Taurus” or not. “Taurus” was released in 1968; Stairway to Heaven was released in 1971. “Taurus” is 2 minutes, 38 seconds. “Stairway to Heaven” is a lengthy 8 minutes.

Of note,

• Page cannot read music.
• The deposited composition filed 01-11-1996 by Wolfe as Randy California with the U.S. Copyright Office, #0000725888, was transcribed sheet music. Under the copyright law at the time, sound recordings were not capable of being deposited with the U.S. Copyright Office and were required to be reduced to sheet music.
• June 23, 2016 – a jury found no copyright infringement based upon a comparison of the written musical compositions.
• September 28, 2018 – a 3-judge 9^th Circuit panel found that a new trial was warranted due to erroneous jury instructions, including an instruction that short musical sequences could never be copyrighted.
• September 23, 2019 – the issue of whether a new trial is warranted is heard by an 11-judge 9^th Circuit panel. As of this writing, a decision has not been rendered.
• “Taurus” 1968 album recording: https://youtu.be/S1vJKO4a_Cw
• “Stairway to Heaven” remastered: https://youtu.be/iXQUu5Dti4g

The chord progression at issue is a fairly simple chromatic one. One issue at trial was whether such a progression should even be granted protection. In the event no new trial is granted, this issue will have to wait until the next copyright infringement action. In the meantime, make sure to file both written compositions and sound recordings. In 1971, the U.S. Copyright Office was amended to provide protection for sound recordings published after February 15, 1972.

This article would not have been possible without the help of Yesenia Cabrera-Gonzalez, File Clerk with HOLZER PATEL DRENNAN whose able research and editing assistance contributed greatly.

Nothing in this Article should be considered legal advice. Should you have any concerns about specific legal issues please consult with a qualified legal practitioner. Judith Keene can be reached at (720) 684-5375 or jkeene@hpdlaw.com. 

Reasons to Register Your Copyright!

On 3/4/19, the hashtag#SupremeCourt resolved a circuit dispute on when a hashtag#copyright infringement suit can be instituted. In Fourth Estate Public Benefit Corp. v. Wall-Street.com, the court held that the copyright statute, 17 USC 411(a), controls when a copyright claimant can file an infringement suit. The applicable portion of the statute reads: "[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." The underlined portion is where appellate circuits have disagreed. While most circuit courts have required registration of a copyright prior to filing a complaint for copyright infringement, some courts determined that filing an application was sufficient.

The Supreme Court's opinion resolves the appellate court differences in holding that copyright registration "has been made" when registration is issued - not when an application for copyright registration is filed. An infringement action may also be initiated if the U.S. Copyright office issues a denial of registration. The applicable portion of 17 USC 411, states in part: "In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights."

What does this mean for you?

Copyright exists upon creation. Regardless, if another person creates a work that is substantially similar to your work and you have not registered your work, your rights to damages are severely limited.

1. Without registration, you cannot file an action for infringement.
2. Without registration either 3 months after first publication or 1 month after learning of infringement, you cannot request statutory damages or attorney's fees for an unpublished work (before the effective date of registration) or for infringement commenced after first publication adn before the effective date of registration.

Trademark Confusion between Beer, Wine & Spirits

Beer, Wine and Liquor ... oh my! 

On June 12, 2018, the Trademark Trial and Appeal Board (TTAB) dismissed an opposition to the trademark registration of PIRATE PISS (for beer, ale and lager), finding that the evidence was insufficient to find a likelihood of confusion with the mark PYRAT RUM (for rum). 

Shortly thereafter, on June 15th, the Trademark Trial and Appeal Board found that DEAD BIRD BREWING COMPANY (for beer) was confusingly similar to DEADBIRD (for wines). In addition to other evidence, the examining attorney who first denied the application relied on 24 use-based registrations wherein both wine and beer were sold in conjunction with the registered mark. These registrations demonstrated the "relatedness" between beer and wine. Additional relatedness factors were also detailed.

While the PIRATE PISS/PYRAT RUM case lacked must evidence to support relatedness, the DEAD BIRD case appeared to include sufficient evidence to support relatedness and a likelihood of confusion.

The TTAB further stated that inconsistent prior decisions and actions of examining attorneys have little evidentiary value and are not binding on the Board. See the decision here:

http://ttabvue.uspto.gov/ttabvue/ttabvue-87140389-EXA-22.pdf

What Constitutes An Appropriate Specimen?

Selecting a good specimen is vital to a viable trademark application.

Whether you are filing a specimen with a "use-based" trademark application or filing a specimen in conjunction with an allegation of use subsequent to the initial trademark application, there are some clear requirements. The list below is not meant to include all possible types of specimens, but will provide guidance on the most common permissible specimens.

• If you are selling a product, a possible specimen is a photograph of the product or label placed on the product. 

• A digital printout of the label (or drawing of the label) is likely to be denied by the USPTO as it is not the label as actually affixed to the product.  

• If you are selling a product, another possible specimen is a screenshot from a website catalog detailing the product and the trademark with a way to purchase the product by placing it in a "cart." This is true for mobile applications as well. A possible specimen would be the download page for the software app, detailing the mark, and describing the software as detailed in the trademark application.

• If you are selling software as a service (SAAS), the U.S. Patent and Trademark office must see the trademark on the SAAS as viewed by the customer. Advertising for the software is not sufficient. 

• A possible specimen is a screenshot of the SAAS, as viewed by the customer, showing the trademark in a footer or header. 

• Specimens have been denied when the trademark is a navigation button.

• Another possible specimen is a screenshot of the login page for the SAAS bearing the trademark.

• If you are providing a service (other than software), advertising for the service is acceptable as long as the specimen clearly describes the services as detailed in the trademark application. Examples include, screenshots of a website page bearing the mark and describing the services provided, a menu (for a restaurant), and an agenda (for training or workshops).

The information herein is for informational and educational purposes only. If you have legal questions or concerns, please consult a qualified legal practitioner.

The availability of WHOIS information for domain names is about to change...

The General Data Protection Regulation (GDPR) continues to have major effects on the Internet.

As of May 25, WHOIS information that is publicly accessible and available will be limited to 

• the domain name, 
• the owner's organization (if any), 
• the owner's state or province and country, 
• an anonymous email address or web form (for forwarding an email communication).,
• name servers,
• information regarding the domain name registrar, and
• the domain's creation and expiration dates.

There will be no real names, telephone numbers, or email addresses for direct communications with the domain name registrant. All other information will be available subject to accreditation. Stay tuned as there are not yet any "accreditation" standards.

This blog is for educational and informational purposes only and is not legal advice. If you have any questions or concerns about your legal rights or obligations, please contact qualified legal counsel.

Do You Conduct Business Or Process Customer Information In Europe?

As of May 25, 2018, things are going to change...

The General Data Protection Regulation ("GDPR") takes effect on May 25th. If you have European clients and maintain any data about those clients or if you process any customer data in Europe or receive shared customer data from Europe, changes will be required.

This will have an effect on website Terms and Privacy Policies.

Before you panic...don't. 

While the EU regulation is quite a tome and there is definitely some complicated verbiage, many requirements are fairly straightforward. While not meant to include all requirements of the GDPR, the steps outlined here will provide a starting point for companies not familiar with the requirements to protect the private information of individuals that is in your possession or control. For the full GDPR, Click here. 

As used in this article, the term "Data" refers to any information relating to a human individual who can be identified by that information, including a name, ID number, location data, IP identifier, or one's physical, physiological, genetic, mental, economic, cultural, or social identity.

1.  If you don't have one, appoint a "Data Protection Officer." This is more important for large companies, but will be useful for small companies as well. This individual will monitor compliance with the GDPR, report to senior staff members, and be a point of contact with customers and employees. 

2.    Create a Data Protection Policy and include: 

• how you process Data in the EU or that relates to EU citizens, 
• how long you retain Data, 
• how you provide Data to individuals requesting their Data, 
• how you obtain consent to maintain and use that Data,
• why you collect and process Data,
• the type of Data held, and
• a description of technical security measures to protect the Data.

3.    Create a Data Protection Impact Assessment.

4.    Obtain a positive 'opt in' authorization from EU citizens or from anyone where information is processed in the EU before collecting Data and make sure consents are clear and understandable. [Note: You may have noticed pop-up boxes on websites that ask for permission to use "Cookies."]

5.    Allow individuals a way to access and obtain their Data. You may have noticed that Google® has started providing a way for consumers to do this if you take a look at their Privacy Policy.

6.    Obtain parental consent from any child 16 or younger before collecting any Data. Note, in other nations, such as the UK, the age is 13 instead of 16. Make sure to check laws in each country in which you conduct business or gather any information.

6.    In the event of unauthorized disclosure of Data, you must report the breach to each affected individual and the EU country's data protection regulator within 72 hours after you learn of the access or disclosure.

In the event an entity does not follow GDPR rules, there are hefty penalties. Smaller offenses could subject an entity to €10 million, or 2% of the worldwide annual revenue of the prior financial year, whichever is higher while more serious offenses could result in penalties of €20 million, or 4% of the worldwide annual revenue of the prior financial year, whichever is higher.

For an interesting investigation in the UK, WhatsApp, Inc. undertakes not to share personal data with companies in the Facebook family, until it can satisfy GDPR requirements. You can access that undertaking HERE.

This blog is for educational and informational purposes only and is not legal advice. If you have any questions or concerns about your legal rights or obligations, please contact qualified legal counsel.

Reminder. DMCA Agent Designation Deadline Approaching

DO YOU HAVE INTERNET CUSTOMERS WHO UPLOAD CONTENT TO YOUR WEBSITE?

DO YOU WISH SAFE HARBOR FOR COPYRIGHT INFRINGEMENT CLAIMS FOR THOSE UPLOADS?

In some instances, the U.S. Digital Millennium Copyright Act (DMCA) provides a safe harbor for internet service providers (ISPs) against liability for copyright infringement by their users. An ISP meet all statutory requirements.

 

One of the most high-profile requirements for safe harbor is that the ISP must appoint and register a designated agent to receive copyright content complaints.

 

The Copyright Office has instituted a revised registration process for DMCA designated agents. Existing ISPs registered under the old system have until December 31, 2017 to refile (electronically) under the new system. Beginning January 1, 2018, agents registered using the older interim designation procedure will no longer be recognized as registered agents with the U.S. Copyright Office and the ISP will lose any safe harbor protection provided by the DMCA until an agent is registered using the new online registration. If you have not yet registered, you should consider whether you are an ISP and whether users upload content on your website or channel.

 

The U.S. Copyright Office fee is $6 per agent. The registration system can be accessed at https://www.copyright.gov/dmca-directory/ . Additional information from the U.S. Copyright Office and tutorials on the new system are available at https://www.copyright.gov/rulemaking/onlinesp/NPR/ . At this time, after registering an agent using the new online system, that registration must be updated every three (3) years to remain in compliance.

If you wish more detailed information on this issue, please do not hesitate to contact our office.

© 2017, HOLZER PATEL DRENNAN

Co-Authored by Amy Deveraux, Esq. and Judith Keene, Esq.

Designs on Cheerleading Uniforms Protectable by U.S. Copyright Law

Star Athletica, LLC v. Varsity Brands, Inc.

Varsity Brands holds many U.S. Copyright registrations for designs appearing on cheerleading and other uniforms. Varsity sued Star Athletica for copyright infringement when Varsity's designs appeared on Star Athletica's uniforms.

At trial, the court issued a summary judgment stating that no infringement had occurred because designs appearing on cheerleader uniforms could not be conceptually or physically separated from the uniforms and were therefore ineligible for copyright protection. An appeal to the 6th Circuit by Varsity was successful and the summary judgment was reversed. Star Athletica then appealed to the U.S. Supreme Court. Arguments were held on October 31, 2016 and an Order issued March 22, 2017.

The Supreme Court upheld the 6th Circuit's reversal and held that "a feature incorporated into the design of a useful article is eligible for copyright protection under the Copyright Act of 1976 only 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; that test is satisfied here."

The Court began its Order with:

"The Copyright Act of 1976 makes “pictorial, graphic, or sculptural features” of the “design of a useful article” 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.” 17 U. S. C. §101."

This case goes to the protectability of industrial designs. Here, the designs consisted of chevrons, zigzags and stripes. The Supreme Court stated:

"Applying the proper test here, the surface decorations on the cheerleading uniforms are separable and therefore eligible for copyright protection. First, the decorations can be identified as features having pictorial, graphic, or sculptural qualities. Second, if those decorations were separated from the uniforms and applied in another medium, they would qualify as two-dimensional works of art under §101. Imaginatively removing the decorations from the uniforms and applying them in another medium also would not replicate the uni- form itself.."

Practical Pointer: 

U.S. Copyright law protects an original work of authorship reduced to a tangible medium. 

This decision appears to indicate that the level of "originality" and "authorship" can be quite modest. For graphic designs appearing on a "useful article" such as clothing, if the designs can be reproduced on paper or other two-dimensional form - separately from the useful article, a claim of copyright can be made.

This article is for informational purposes only and should not be considered legal advice. If you have questions or concerns about your copyright rights, or other legal rights, contact a qualified legal practitioner.

U.S. Digital Millennium Copyright Act electronic registration required

If you provide an Internet website where third parties are able to upload information, including (without limitation) videos, images, audio clips or data or if you provide a search engine, information location tools or directories, you may be considered an Internet service provider. As such, in order to take advantage of the safe harbor provisions of the U.S. Digital Millenium Copyright Act (“DMCA”), you must register with the U.S. Copyright Office. In addition, contact information for your designated agent should be available to the public on your site(s). Through such registration, notice and compliance with the DMCA generally, you may be able to avoid liability should a copyright owner allege infringement through third party postings to your site(s).

Even if you have previously registered through a paper-filing, the U.S. Copyright Office now requires electronic registration. Your paper-filing will suffice until December 31, 2017. If prior registrants do not file an updated electronic application by that date, you will not meet the safe harbor provisions of the Digital Millenium Copyright Act and may be held liable for infringement caused by third parties on your site(s).

The new regulations may be viewed here. Electronic registration can begin here. Should you require any assistance, do not hesitate to contact our office.