Category: copyrights

Copyright and Trademark Protection in The Digital Age Conference – February 6-7, 2013

The National Law Review is pleased to bring you information about the upcoming marcus evans Copyright and Trademark Protection in The Digital Age Conference:

Copyright and Trademark Feb 6-7 2013

The marcus evans Copyright and Trademark Protection in The Digital Age Conference will provide strategies for organizations who are dealing with digital copyright and trademark issues, address the management of digital content, digital license agreements, and overall evolution of copyright and trademark to ensure they are protecting their brand.

Copyright and Trademark Protection in The Digital Age Conference – February 6-7, 2013

The National Law Review is pleased to bring you information about the upcoming marcus evans Copyright and Trademark Protection in The Digital Age Conference:

Copyright and Trademark Feb 6-7 2013

The marcus evans Copyright and Trademark Protection in The Digital Age Conference will provide strategies for organizations who are dealing with digital copyright and trademark issues, address the management of digital content, digital license agreements, and overall evolution of copyright and trademark to ensure they are protecting their brand.

Copyright and Trademark Protection in The Digital Age Conference – February 6-7, 2013

The National Law Review is pleased to bring you information about the upcoming marcus evans Copyright and Trademark Protection in The Digital Age Conference:

Copyright and Trademark Feb 6-7 2013

 

The marcus evans Copyright and Trademark Protection in The Digital Age Conference will provide strategies for organizations who are dealing with digital copyright and trademark issues, address the management of digital content, digital license agreements, and overall evolution of copyright and trademark to ensure they are protecting their brand.

Abandonment and Revival of U.S. Patent Application

The National Law Review recently featured an article, Abandonment and Revival of U.S. Patent Application, written by Ivan T. Kirchev of Michael Best & Friedrich LLP:

 

The power to protect a company’s inventions with patents comes with the responsibility of seeing its patent applications the whole way through the Patent Office, from the initial filing to issuance and beyond.

The filing of a patent application begins a lengthy and sometimes harrowing dialogue with an examiner at the Patent and Trademark Office (PTO) who is responsible for making sure that the application’s invention is truly deserving of patent protection. If (or in reality when) the examiner does not agree that the claimed invention is patentable, the examiner will send the applicant a series of “office actions” rejecting the application or demanding certain amendments to the application. With each office action comes a turn of the hourglass, giving the applicant a definite window of time (usually up to six months) to submit a response. If the applicant’s reply satisfies the examiner, the examiner issues a “notice of allowance,” indicating that the applicant’s invention will be issued as a patent.

However, if the applicant makes a wrong turn during prosecution, the application may become “abandoned” in the eyes of the PTO. When a patent application is abandoned, the patent application is dead and anyone can practice the invention described in the patent application. Once it becomes abandoned, the application requires special petition procedures and payment of fees to revive, if it can be revived at all. If it cannot be revived, the application will never issue as a patent.

An application can become abandoned in one of two ways. First, the applicant fails to respond to a particular PTO notice within a specified time during the prosecution of the application. For example, if the applicant fails to reply to an office action within the specified time period, or files an incomplete reply, or fails to do whatever it is that the examiner has requested before the hourglass runs out, then the application will become abandoned.

Second, a patent application can become abandoned by a formal, express abandonment, requested by the applicant. Express abandonment is not necessarily a bad thing and sometimes is actually a step in the right direction for a company. Because an abandoned unpublished application will never become available to the public, sometimes abandonment may be a strategic decision on the part of the applicant to keep the invention out of the public eye.

When the application becomes abandoned, the applicant will receive a notice from the PTO. At that point, the applicant can either ask for reconsideration if he or she disagrees with the PTO decision, or petition for revival. In order to petition the PTO for revival, the applicant must file a reply that includes; (1) the reply that was originally required before the missed deadline, (2) a statement or showing that abandonment was respectfully either unavoidable or unintentional, and (3) the necessary fee.

If the applicant claims that the abandonment was unavoidable, it must show the PTO that the entire delay in filing the required reply from the due date for the reply, until the filing of a grantable petition pursuant to this paragraph, was unavoidable. “The entire delay” means every single day from the missed deadline to the submission of the petition for revival; the showing must include documentary evidence to support the claim of unavoidability. What qualifies as “unavoidable delay” is determined on a case-by-case basis by the “reasonably prudent person” standard.

Generally, to justify revival on the grounds of unavoidability, an applicant must either show truly dire and uncontrollable circumstances, or reasonable actions that unexpectedly resulted in abandonment. Examples of justifiable unavoidability include the death of the prosecuting patent attorney, the constant moving and financial burden of an application for the medical treatment of cancer, or any reasonable interpretation of a rule. What will not qualify for unavoidable grounds of revival includes miscalculation of the filing deadline, unawareness or misunderstanding of the rules of patent prosecution, or conflicts with personal life. Therefore, businesses should carefully consider their decision to abandon a patent application intentionally (e.g. by deliberately not responding to an office action). Most likely, this type of action will lead to an abandoned application that can never be revived.

If the applicant claims that the abandonment was unintentional, it similarly must state that the entire delay was unintentional. But because a petition claiming unintentional abandonment must merely contain a statement stating as much, rather than a showing, petitions claiming unintentional abandonment are generally less burdensome than claiming unavoidable abandonment. The Manual of Patent Examining Procedure (MPEP) acknowledges as much, stating that the PTO relies on the applicant’s duty of candor and good faith to accept the statement that “the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional” without requiring further information in the vast majority of petitions. Furthermore, the PTO’s reliance on the face value of this statement is enforced by the applicant’s obligation to inquire into the underlying facts and circumstances before providing the statement to the PTO.

However, if the application is revived based on this statement, but then after the patent issues facts arise showing that the statement was false, the entire patent family can be rendered unenforceable on the grounds on inequitable conduct. This situation may arise, for instance, in the discovery of correspondence from the patent attorney to the inventor or the patent examiner indicating an understanding that the patent application will become abandoned, followed by the patent application actually becoming abandoned.

If the application is revived in either case, the applicant must submit a terminal disclaimer to disclaim the length of time that the application was abandoned, and the term of the patent will be shortened accordingly.

Finally, although the America Invents Act (AIA) will impact a variety of patent prosecution issues as it goes into full effect by April of next year, the rules related to abandonment and revival will remain unaffected.

*Also contributing, J. Ryan Lawlis.

© MICHAEL BEST & FRIEDRICH LLP

Gossip Mag’s “Fair Use” Claim in Publishing a Celebrity’s Wedding Photos Rejected

The National Law Review recently published an article regarding “Fair Use” of Celebrity Wedding Photos, written by Sarah Bro of McDermott Will & Emery:

 

The U. S. Court of Appeals for the Ninth Circuit reversed the district court’s grant of summary judgment in favor of Maya Magazines and Maya Publishing Group (collectively Maya), finding that the media company did not meet its burden of establishing that its publication of previously unpublished photos of a celebrity couple’s wedding constituted fair use. Monge  v. Maya Magazines, Case Nos. 10-56710, 11-55483 (9th Cir., Aug. 14, 2012) (McKeown, J.) (Smith, J., dissenting).

Latin American celebrities, Noelia Lorenzo Monge and Jorge Reynoso (the couple), filed an action against Maya in the district court for copyright infringement and misappropriation of likeness based on Maya’s publication of previously unpublished photographs of the couple’s 2007 secret Las Vegas wedding in the Spanish-language celebrity gossip magazine TVNotas.

Maya purchased the six wedding photos at issue from a paparazzo, who was also an occasional driver for the couple. The paparazzo had previously tried to “sell” the photos to the couple to relieve a debt he owed to one of them. The photos were on a memory chip containing hundreds of photos of the couple that were unrelated to the nuptials.  In addition to publishing one of the wedding photos on the cover of TVNotas, Maya also published a two-page spread within the magazine showing all six wedding photos interspersed with captions. Due to the privacy of the wedding (to protect Monge’s image as a single pop star), the six photos were the only published images of the nuptials.

Because federal registration of a copyright is required before bringing an infringement action, after learning of Maya’s publication of the photographs, the couple registered copyrights in five of the images. The couple’s lawsuit was filed shortly thereafter.

The district court dismissed the misappropriation of likeness claims and granted Maya’s motion for summary judgment based on its affirmative defense of fair use of the copyrighted photographs. On appeal, the sole issue was whether the district court properly granted summary judgment based on the fair use doctrine. Accordingly, the court analyzed the four fair use factors under copyright law, finding that none of them topped in favor of Maya.

1.  The Purpose and Character of the Use of the Copyrighted Work

Although it agreed that the wedding photos were newsworthy, the 9th Circuit reaffirmed that news reporting alone is not “sufficient itself to sustain a per se finding of fair use.” Thus, the commercial nature of the use of the photographs was determined to weigh against a finding of fair use. The Court also found that the reproduction of the photos as a two-page montage with captions was not a sufficient transformation of the original works to allow Maya to properly claim fair use.

2.  The Nature of the Copyrighted Work

The 9th Circuit explained that photographs—even those that are not highly artistic in nature—are entitled to copyright protection.  Even though the unpublished status of a work does not bar a finding of fair use, the court cited Harper & Row v. Nation Enters., stating that the couple’s right to control the first public appearance of its copyrighted photographs outweighed Maya’s claim of fair use.

3.  The Amount and Substantiality of the Portion Used in Relation to the Work as a Whole

With respect to the third fair use factor, the 9th Circuit noted that the only existing photos of the couple’s wedding and wedding night were used in the magazine, and that Maya’s minimal cropping of the photos meant that the “heart” of each copyrighted photograph was published. Because “Maya used far more than was necessary to corroborate its story,” this factor also weighed in favor of the couple.

4.  The Effect Upon the Potential Market for the Copyrighted Work

Finally, the court found that Maya’s unauthorized publication of the photos “substantially harmed” and “completely usurped” the couple’s potential market for the photos.  The court disagreed with the district court’s claim that there was no potential market for the photographs because the couple did not intend to sell their publication rights in the images.

Instead, the court explained that the potential market for the photos existed independently of the couple’s intent to market the photos. Specifically, the court focused on the fact that the couple was in the business of selling images of themselves and that Maya had previously paid Monge to pose for one of its publications and had also paid Reynoso for pictures of his prior marriage.  Therefore, the court determined that Maya’s purchase of the photos from the paparazzo confirmed the potential market for the photographs.

The Dissent

The dissent argued that the decision of the panel majority was inconsistent with Supreme Court precedent and undermined the fair use doctrine and free press. In particular, the dissent stated that it would have affirmed the district court’s ruling with respect to at least three of the photographs that “directly proved” the couple’s marriage. The dissent also noted that the nearly 400 photos on the memory chip (which were unrelated to the couple’s wedding) constituted a “compilation” and that Maya’s use of only five of those 400 photos was not a substantial portion of the work in relation to the whole.

© 2012 McDermott Will & Emery

When Can You Claim A Color As Your Trademark?

In its recent decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., the Second Circuit held there was no “per se rule that would deny protection for use of a single color as a trademark in a particular industrial context.”  The Court found that the single color red on the sole of a women’s shoe that contrasted with the color on the upper portion of the shoe could be protected as a trademark in the fashion industry. A Federal District Court in California ruled recently, that a company’s use of the color orange for markings and text on its medical syringe could not be protected as a trademark since the color was “functional” when applied to that product. It determined that the color orange was functional in the medical industry because it signifies that a device is for oral use. So, how does this color-as-a-trademark work?

Many companies have successfully obtained trademark protection for a single color, for example,  United Parcel Service’s registration for the color brown for transportation and delivery services, Reg. 2901090; Tiffany’s multiple registrations for a particular color of  blue used on bags, boxes and various other products and services, Reg. Nos. 4177892, 2359351, 2416795, 2416794, 2184128; 3M’s registrations for yellow as a trademark for telephone maintenance instruments and POST-IT® notes, Reg. Nos. 2619345, 2390667; and Owens Corning’s registrations for the color pink for masking tape, insulation, and other products used in the building and construction industry, Reg. Nos. 3165001, 2380742, 2380445, 2090588, 1439132.

In Qualitex Co. v. Jacobson Prods. Co., the U.S. Supreme Court held that color alone may be protected as a trademark, “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” The Court held color may not be protected as atrademark when it is “functional”. There are two types of functionality: “utilitarian” and “aesthetic.” A color is functional under the utilitarian test if it is essential to the use or purpose of the product, or affects the cost or quality of the product.  A  color is aethestically functional if its exclusive use “would put a competitor at a significant non-reputation-related disadvantage”.   If color “act(s) as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function,” it can be protected as a trademark. So, how do you know if a color you are using or plan to use in your business can be protected as a trademark to the exclusion of your competitors?

Protecting color as a trademark can be a very powerful advantage if the color has no particular function or meaning in the industry in which it is used. However, in order to claim color as a trademark, the color must be showcased as a source indicator for products or services in its marketing campaigns and advertising materials. Good examples of this are UPS’s reference to itself as “brown” in its advertising and Owen Corning’s blatant use of the color pink in its advertising.  Both companies very clearly highlight a color in their ads and identify it strongly with their respective products and services. This type of careful and clever planning, implementation, and marketing strategy is critical to developing a strong, unique and highly recognized color trademark.

Whatever color is used, it must not be “functional” in any respect in the industry in which it is used. Various “functionality” tests have been developed by the courtsover time, and  some include:

  • whether the design (or color) yields utilitarian advantage
  • whether alternative designs (or colors) are available
  • whether advertising touts utilitarian advantages of the design (or color), and
  • whether the particular design (or color) results from a comparatively simple or inexpensive method of manufacture.

Functionality is evaluated within the context of the specific industry in which the goods or services for which color is claimed as a trademark will be offered. Had the markings on the medical devices been red instead of orange in the case before the Federal District Court in California mentioned above, it is possible that there would not have been a finding of functionality. Thus, know your industry before selecting a color on which to focus your marketing and advertising efforts.

Thinking outside the box when selecting trademarks and planning marketing strategy is critical in any industry. The explosion of social media and changes in traditional advertising and marketing methods have changed the way products and services are recognized. Companies need more unique and  nontraditional approaches for a competitive edge. Promoting non-traditional trademarks such as a color, or other unique source indicators such as sounds, scents, flavor, and product shapes, may provide a fresh method to attract and entice a wider audience.

So, get out those color wheels and start plotting a new course.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.