In a nearly unanimous opinion, the Supreme Court recently limited the rights of patent holders to enforce post-sale restrictions on how patented products may be used, reversing a prior decision by the U.S. Court of Appeals for the Federal Circuit.
The case involved a dispute between Lexmark International, Inc., a manufacturer of toner cartridges used in laser printers, and Impression Products, Inc., a “remanufacturer” in the business of acquiring empty toner cartridges from Lexmark’s customers in the United States and abroad. Impression would refill used cartridges with new toner and resell them in the United States at a lower price than new cartridges available from Lexmark.
On June 19, 2017, the U.S. Supreme Court handed down its much-anticipated decision in Matal v. Tam, 582 U.S. __ (2017), issuing a ruling that clarifies that the door is open to trademark registration to a new category of trademarks: trademarks that may disparage others.
The facts that the Court looked at are relatively simple: The Slants, a dance-rock band whose members are Asian-Americans, sought to register their name as a trademark. Although the band argued that they chose the name because they were looking to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity, the U.S. Patent and Trademark Office (USPTO) refused to register the mark THE SLANTS on the ground that it was a derogatory or offensive term. An appeal to the USPTO’s Trademark Trial and Appeal Board failed on similar grounds. But a further appeal to the U.S. Court of Appeals for the Federal Circuit resulted in this case finding itself before the U.S. Supreme Court: the majority of the Federal Circuit, sitting en banc, found that the USPTO’s basis to refuse to register THE SLANTS was unconstitutional. Continue reading
WGA writers, particularly as they advance in their careers, often end up engaged in both their capacity as writers as well as in an additional non-writing capacity, such as executive producers. Article 14 of the WGA Minimum Basic Agreement (MBA) is therefore an important provision to understand for both writers and anyone engaging them; it states that if a writer is engaged in such an additional capacity, but also provides writing services, those services are still covered by MBA and that writer is still entitled to at least a certain level of minimum compensation for writing services. Without Article 14 of the MBA, it would be difficult to determine what portion of a WGA writer’s time is spent writing, versus (for example) producing, and thus difficult to determine the writer’s minimum compensation. Article 14 was one of sections of the MBA that was updated as part of the May 2, 2017 three-year revision of the MBA, discussed here. Continue reading
A panel of the U.S. Court of Appeals for the Ninth Circuit ruled this month that Google’s trademark has not lapsed into the public domain by becoming generic even though today’s digital vernacular uses “google” as a verb synonymous with searching the Internet. As a general rule, generic terms used as trademarks are not protectable because they do not identify the product’s source. Also, an otherwise valid trademark like “GOOGLE” may suffer death by “genericide” when the public “appropriates” the trademark such that the “primary significance” of the mark is as a generic name for a particular type of good or service rather than an indicator of the source of that good or service. Classic examples of former trademarks that are now generic terms include aspirin, thermos, brassiere, and cellophane. On the contrary, the term “google,” at least according to the Ninth Circuit, still stands strong as a brand identifier. Continue reading
Enterprising corporations looking to join the “green rush” and cash in on the marijuana boom have found a loophole in the United States Patent and Trademark Office’s (USPTO) refusal to register trademarks for products that contain cannabis. By registering a trademark for ancillary products not related to marijuana, such as clothing or accessories, corporations can get a head-start in the budding cannabis industry by registering marks that they later hope to use in connection with actual cannabis products.
However, as the Trademark Trial and Appeal Board’s (“TTAB”) March 16, 2017 ruling in Margaritaville Enterprises, LLC v. Bevis (http://ttabvue.uspto.gov/ttabvue/ttabvue-91219403-OPP-44.pdf) demonstrates, applicants in the cannabis space, like all other applicants, should still be wary of the other potential potholes along the way.
Earlier today, the U.S. Copyright Office issued a new release of its electronic system used to designate and search for Digital Millennium Copyright Act (DMCA) agents.
Under the DMCA, a qualified online service provider (OSP) is not liable for copyright infringement with respect to infringing material residing on the OSP’s network if, upon notification of a claimed infringement, the OSP acts expeditiously to remove, or disable access to, the material. One of the prerequisites to receiving this statutory “safe harbor” protection is that OSPs must designate an agent to receive notifications of claimed infringement. The OSP must supply its agent’s contact information to the Copyright Office; in turn, the DMCA instructs the Register of Copyrights to maintain a publicly available, current directory of agents. Continue reading
On May 2nd, The Writer’s Guild of America (WGA) and the Alliance of Motion Picture and Television Producers (AMPTP) reached an eleventh-hour agreement on a new three-year collective bargaining agreement (CBA) that averts a pending strike by the writers that was scheduled to begin that day. The agreement was announced in a joint statement by the WGA and AMPTP mere hours prior to the expiration of the current collective bargaining agreement.
On April 7, in a decision with far-reaching implications for websites that allow users to post content, the Ninth Circuit reopened a paparazzi photo agency’s copyright lawsuit against the social media website LiveJournal. In doing so, the court reversed a lower court ruling in LiveJournal’s favor.
The photo agency, Mavrix Photographs, sued LiveJournal over twenty of its copyrighted photographs posted in LiveJournal’s popular celebrity gossip community, Oh No They Didn’t! (“ONTD”), including photos which appeared to break the news that Beyoncé was pregnant. The photos were submitted by users of the ONTD community but were reviewed and approved by community moderators before they were publicly posted on the site.
One of the Digital Millennium Copyright Act’s (“DMCA”) cardinal features is protection for internet service providers against copyright infringement claims based on content provided by third parties (the “Safe Harbor”). Without the DMCA Safe Harbor, countless websites that allow their users to upload or post content would risk liability for the actions of those users. In order to take advantage of the DMCA Safe Harbor, however, service providers must observe a number of formalities, including registering an agent with the US Copyright Office to receive copyright complaints (commonly dubbed DMCA Takedown Notices).
On April 5th, in a victory for visual content creators and licensors, the Ninth Circuit affirmed the dismissal of a lawsuit brought by former college athletes alleging that T3Media had misappropriated their names and likenesses by selling licenses to photographs from the NCAA Photo Library. The Ninth Circuit held that the athletes’ claims for right of publicity and unfair competition under California law were preempted by the federal Copyright Act.