Tag: Intellectual property

New Platform to Facilitate Development of COVID-19 Technologies

The United States Patent and Trademark Office (USPTO) has launched a new platform that could expedite the development of COVID-19 related technologies. As explained in the USPTO’s press release, the Patents 4 Partnerships web-based marketplace is designed to “facilitate the voluntary licensing and commercialization of innovations in a variety of key technologies” related to “the prevention, treatment, and diagnosis of COVID-19.”

The Patents 4 Partnerships IP marketplace platform currently lists 175 granted U.S. patents and pending U.S. patent applications, covering such diverse technologies as “Methods of Treating Coronavirus Infection,” “Air-Sampling Device and Method of Use,” “Rapid and Highly Fieldable Viral Diagnostic,” and “Dexterous Humanoid Robotic Wrist.” According to the press release, the initially listed items were “drawn from a variety of public sources, including the USPTO, the Federal Laboratory Consortium for Technology Transfer (FLC Business), the AUTM Innovation Marketplace (AIM), universities, and a number of federal agencies.”

Stakeholders wanting to add their U.S. patents or applications to the Patents 4 Partnerships platform can complete this simple form. As noted on the form, the technology should be “reasonably related to the prevention, treatment, diagnosis, protection from or alleviation of symptoms of coronaviruses in general.”

© 2020 Foley & Lardner LLP

For more in COVID-19 tech-development, see the National Law Review Coronavirus News section.

Jennifer Lopez Sued for Copyright Infringement

More and more often nowadays, celebrities are being sued for posting pictures of themselves on Instagram. While this does not make much sense to many of us, posting a picture on social media that you did not take without permission from the photographer can result in copyright infringement charges.

Actress and singer, Jennifer Lopez, is the latest celebrity to be hit with a copyright infringement suit. Lopez and her production company are being sued for over $150,000 in damages by photographer Steve Sands, who alleges that Lopez posted a photo taken by Sands on Instagram. Sands contends that Lopez and her production company did not license the photograph from Sands or have permission from Sands to post the photo.

While the average person may do something similar and get away with it, celebrities often will not, due to the significant number of likes the photo receives and the celebrity’s large number of social media followers. Some say celebrities post these images to brand themselves without permission from the taker of the photo.

This is not the first time Lopez has been sued for posting. Lopez was sued by Splash News and Picture Agency for $150,000 in October 2019, when she posted a photo taken by the company of her now fiancé, Alex Rodriguez, in her Instagram story in 2017. Splash News alleged they were the owner and exclusive copyright holder of the picture.

The Copyright Act protects the rights of Connecticut photographers by prohibiting others from using their photos for promotion without consent. However, there are exceptions that allow use of another’s photos in certain circumstances.

© 2020 by Raymond Law Group LLC.

Expunge-Examine-Ex Parte; the Trademark Office Seeks to add Arrows to its Quiver

According to a recent audit carried out by the Trademark Office and evaluating over 8000 registrations, as many as 46% of US use-based registrations were unsupported by actual use, with the percentages for Paris Convention and Madrid Protocol registrations reaching 66% and 65 respectively.

In other words, almost two-thirds of treaty-based applications arriving at the Trademark Office from outside the United States failed to meet a proof-of-use test.

For example, in late January 2018 The United States Patent and Trademark Office received a new application for federal trademark registration and assigned it an “87” series number.  The application was for a mark in standard characters, and was based on a Section 44(d) filing basis (15 USC § 1126(d)); i.e., an application accepted by the USPTO under treaty obligations with reciprocating countries.  (As a quirk of trademark law, practitioners tend to refer to sections of the original 1946 Lanham Act, even though their statutory citations are numbered quite differently.)

Under goods and services, the Applicant listed 115 different items (count ‘em) in International Class 03 (“bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices”).

Because the application was a treaty document, rather than a US use-based application, the Applicant provided neither a specimen nor any other evidence of use.  Following a brief prosecution, the registration issued in February 2019.

Trademark registration, of course, carries some important benefits including (but not limited to) “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate….” (15 USC § 1057).

Hunting down the Registrant’s website (or what appears to be the Registrant’s website) took some effort and indicated that the Registrant does not even provide the goods listed in the application, but rather is a service provider who consults with manufacturers and retailers.  These third parties use their own trademarks on their goods rather than the Registrant’s mark on Registrant’s goods.  Thus, this registrant starts with a presumption of rights to which it may not be entitled.

So, what is a competitor to do?  Respect a registration that is arguably invalid?  Such undeserved respect can result in the loss of business.  Obtain a clearance opinion from your intellectual property attorney?  Better, but potentially expensive depending upon circumstances.  File a cancellation proceeding?  Useful, but drawn out and potentially expensive.

The proposed amendments to the Trademark Act Of 1946 (15 USC § 1051 et seqq.; see, H.R. 6196; congress.gov); are intended to provide relief against invalid registrations that is faster, easier, and less expensive, than litigation, opposition, or cancellation.

The amendments also add some administrative touches that should make life better all around, but that will also introduce some new docketing deadlines for practitioners.

Third Party Submissions:  An amendment to current Section 1 (15 USC § 1051) will allow third parties to gain admission to a pending application and submit evidence that the legislation euphemistically refers to as “for inclusion in the record of an application…relevant to a ground for refusal of registration.” In other words, “Dear Examiner the Applicant should never have been granted a registration because….” This provision requires both submitting the evidence and giving a concise explanation of the grounds for refusing registration provided by that evidence.  The examining attorney is then entitled to use the information as they believe best.  This amendment will take effect one year after the final bill passes

Flexible response deadlines (amendments to Section 12(b); 150USC § 1062(b)):  This is an administrative touch which allows the Trademark Office to establish intermediate deadlines less than the statutory six months with appropriate extensions available (read:  “pay extension fees”) in a manner analogous to extensions granted by the Patent Office.  In accordance with US membership in certain treaty organizations, minimum deadlines are 60 days.

Expungement (a new Section 16A, inserted after current 15 USC § 1066):  This is a substantive provision adding collateral attacks on registrations short of a full cancellation proceeding.  In particular, expungement is based on a registrant’s failure to ever use the mark in commerce with some (or presumably all) of the goods and services identified in the petition to expunge (“never been used in commerce”).  The attack requires both supporting evidence and a fee, following which the Office has the authority to initiate an expungement proceeding.  Expungement will generally follow the examination steps for new applications, with the Director given rulemaking powers to establish potential exceptions.

A registrant can respond to expungement by documenting evidence of use, consistent with the “in commerce” requirements of 1946 Trademark Act.  The registrant is also given the opportunity to show some excusable nonuse.

Once the expungement evaluation has been completed, the examiner has the right to cancel the registration for any goods or services for which the owner cannot establish use in commerce.

The Director can also start such an expungement proceeding on his or her own initiative.

In each case, however, an expungement proceeding cannot be initiated until three years following the date of registration. This provides both docketing obligations and marketing opportunities for practitioners because it would presumably be a practitioner’s responsibility to remind clients that if they had included numerous goods and services in their application and registration, they will need to show such use for all of those specific items.

Ex Parte Reexamination (and its differences from Expungement; a new Section 16B following the proposed Section 16A):  At first glance, ex parte reexamination appears to track expungement, but there is an important difference.  To repeat, in expungement, portions of the registration are deleted based on the fact that the mark has “never been used in commerce” on those particular goods and services.

Reexamination applies a different standard to a different situation:  registrations for which the mark was not in use on the goods or services on or before “the relevant date.”  Normally that “date” would be the filing date for a use-based application or the statement of use date for an intent-to-use (“ITU”) application.

As in the case of expungement, the party petitioning for re-examination needs to raise relevant arguments and submit supporting proofs, and the Director can again cancel the registration for some or all of the goods depending upon the proof presented.

The timing for re-examination, however, moves differently than expungement.  In particular, once the registration reaches the five year anniversary, re-examination is no longer permitted.  This of course differs from expungement which cannot be initiated until three years after registration, but presumably remains available for the lifetime of the registration.

Again, this will potentially require some additional docketing by practitioners.  At a minimum, practitioners will need to docket this for their own clients, and presumably enterprising practitioners might track competitors’ registrations to give their clients an appropriate opportunity is to seek reexamination if they believe it worthwhile.

In summary, the amendments are attractive to at least the Trademark Office and competitors of registrants with flimsy factual support for their trademark claims.  The Office gets to clear out the dead wood, legitimate registrants have nothing to fear, and competitors get three flanking attacks, each of which appears to be faster, easier, and less expensive than any other current option.

Copyright 2020 Summa PLLC All Rights Reserved

ARTICLE BY Philip Summa of Summa PLLC.
For more on USPTO registrations, see the National Law Review Intellectual Property law section.

Chinese Rail System for Restaurant Meal Delivery Patent Infringed

Perhaps showing the future of restaurants in times of social distancing, defendant Xuansu Company (炫速公司) implemented a restaurant meal delivery system to deliver food to customers using rails from kitchen to customers’ tables thereby avoiding the need for any interaction between customers and restaurant staff.  However, unfortunately for Xuansu, according to the Shanghai Intellectual Property Court , the installed system infringed Chinese patent no. 101282669B and therefore awarded the exclusive licensee, Yunxiao Company (云霄公司), 1 million RMB.

Xuansu’s meal delivery system in operation

The plaintiff argued that the spiral track system installed in the SpaceLab Weightless Restaurant (Space lab失重餐厅) infringed its licensed patent and requested an injunction as well as 8 million RMB.  The defendant countered it was not infringing and used existing technology.

The Court held “Claims 1, 8, 20, 27, 58, and 59 of the patent in question include “the conveyor system transports meals and / or beverages from the back kitchen work area to the customer dining area”, auxiliary transportation devices, rail lines and customer dining areas. The infringing system has all the limitations of the claims including at least one connected dining table, a circular track, and an ordering system,  and therefore falls within the scope of protection of the plaintiff ’s patent rights.”

With respect to the defendant’s existing technology defense, the defendant claimed  US Patent No. 2216357 was prior art. The Shanghai Intellectual Property Court held that the patent publication date was October 1, 1940, which was earlier than the filing date of the patent in question, and it was prior art relative to the patent in question. After comparing the accused infringing technical solution with the prior patent, the Court found that the prior patent does not disclose the technical structure of the parallel track in the accused infringing technical solution, the circular carousel for transferring food to the table, and the guide assembly of the auxiliary conveying device. There are certain differences in the technical structure of the defendant’s system, so the defendant’s defense based on the existing technology cannot be established.

 

A static view of the restaurant meal rail system.
A static view of the restaurant meal rail system in the dining area.
Fig. 35 of the patent at issue owned by HeineMack GmbH and licensed to Yunxiao.

© 2020 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.

For more Chinese and other nations patent laws, see the National Law Review Intellectual Property law section.

Supreme Court Preserves Availability of Profits Award for Both “Willful” and “Innocent” Trademark Infringement

On April 23, 2020, the U.S. Supreme Court unanimously held in Romag Fasteners, Inc. v. Fossil Group, Inc., 590 U.S. ___ (2020), that the Lanham Act does not impose a “willfulness” prerequisite for awarding profits in trademark infringement actions.

Disgorgement of a defendant’s profits has long been a critical remedy available to brand owners seeking remediation for the infringement of its trademarks.  A profits award can be a proxy for the actual damages suffered by the trademark owner, as actual damages are often very difficult to prove in trademark cases.  Profits awards also serve to deprive infringers of their unjust gains, and can be an important deterrent against infringing activities.  Some federal courts have considered an infringer’s intent as a factor, but not a prerequisite, to awarding a defendant’s profits to the prevailing plaintiff.  Other courts have required proof that the defendant’s infringement was willful before awarding damages measured by its profits, complicating the availability of this important trademark infringement remedy in certain jurisdictions.

The U.S. Supreme Court has resolved this split, finding that a categorical rule requiring a showing of willfulness cannot be reconciled with the statute’s plain language.  Accordingly, prevailing trademark owners do not have to prove willfulness to be awarded the infringer’s profits.

Background

The parties had an agreement allowing Fossil to use Romag’s fasteners in Fossil’s handbags and other products. Romag discovered that the factories Fossil hired in China to make its products were using counterfeit Romag fasteners. Unable to resolve its concerns amicably, Romag sued, alleging that Fossil had infringed its trademark and falsely represented that its fasteners came from Romag.

The U.S. District Court for the District of Connecticut found Fossil liable, and the jury awarded Romag $6.7 million of Fossil’s profits to “deter future trademark infringement.”  The trial court overturned the jury’s damages award because the jury found Fossil acted “callously,” rather than “willfully,” as required by the controlling Second Circuit precedent for a profits award. The U.S. Court of Appeals for the Federal Circuit affirmed the district court’s decision, and the U.S. Supreme Court vacated that judgment and remanded for further proceedings consistent with its opinion.

Overview of Court’s Opinion

Section 15 U.S.C. §1117(a) of the Lanham Act, which governs remedies for trademark violations, states:

When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established . . . , the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. (Underlined emphases added).

Although acknowledging that a defendant’s mental state is a highly important consideration in determining whether a profits award is appropriate, the Court rejected the categorical rule applied in certain lower courts (including controlling Second Circuit precedent) that a plaintiff can win a profits award only after proving that the defendant willfully infringed its trademark.  The Court relied on the plain language in 15 U.S.C. §1117(a) to find that Congress intended to limit such willfulness precondition to a profits award in a suit under Section 1125(c) for trademark dilution. It rejected Fossil’s position that the phrase “subject to the principles of equity” in Section 1117(a) should be read as imposing a willfulness requirement, especially given that Congress prescribed a “willfulness” requirement elsewhere in the very same statutory provision. In no uncertain terms, the Court noted that “the statutory language has never required a showing of willfulness to win a defendant’s profits” in claims under Section 1125(a) for false or misleading use of trademarks (i.e., trademark infringement).

Conclusion

The Court’s decision resolves a split amongst the lower courts and preserves a critical deterrent against trademark infringement by clarifying that Congress intended to allow a trademark owner to recover a defendant’s ill-gotten profits, regardless of whether such infringement was willful.

©2020 Pierce Atwood LLP. All rights reserved.

ARTICLE BY Jonathan M. Gelchinsky and Michael C. Hernandez of Pierce Atwood LLP.

 

For more Trademark Cases, see the National Law Review Intellectual Property Law section.

The Court of Appeals for the Federal Circuit Clarifies that Trademark Protection Is Available for “Graduated” and “Undefined” Color Schemes

There are a number of famous colors that are trademark-protected – such as the color brown, which is registered by UPS, and the color “robin egg blue”, which is registered by Tiffany & Co. This protection stems from the fact that such marks are “inherently distinctive”. That is, the colors have become so readily recognized by the purchasing public as being associated with goods or services. However, some color marks that comprise “undefined” multiple colors, including graduated colors (i.e., where one color fades into another) have generally been treated as never being able to rise to the level of being inherently distinctive.

On April 8, 2020, the United States Court of Appeals for the Federal Circuit (CAFC), held that the Trademark Trial and Appeal Board (TTAB) erred in ruling that an “undefined” color trademark on products and product packaging cannot be distinctive enough for registration unless consumers already recognize it as an indicator of product source. In Re: Forney Industries, Inc., Fed. Cir., No. 19-1073, Opinion 4/8/20.

In its federal registration application, Forney Industries, Inc. described its multi-color trademark as “a solid black stripe at the top” and “[b]elow the solid black stripe is the color yellow which fades into the color red” (emphasis added). Early on, the Examining Attorney at the United States Patent and Trademark Office (USPTO), and later the TTAB, decided that Forney multi-color scheme could not be inherently distinctive.

The TTAB cited two Supreme Court decisions supporting its position – that product and packaging marks using color without defined borders or shape also cannot be inherently distinctive. The CAFC found that the board’s decision overstated the Supreme Court precedent and ruled that the TTAB erred by holding that: (1) a multi-color mark can never be inherently distinctive, and (2) product packaging marks that employ color cannot be inherently distinctive in the absence of a well-defined peripheral shape or border.

The CAFC stated that the correct standard to apply in determining inherent distinctiveness is a legal question, which it could review de novo. The CAFC then recognized that neither the Supreme Court nor it, has directly addressed whether a multi-color mark such as described by Forney can ever be inherently distinctive. Recognizing the “Forney is not attempting to preempt the use of the colors red, yellow, and black, but instead seeks to protect only the particular combination of these colors, arranged in a particular design”, the CAFC concluded that there are instances when a multi-color mark, as well as single-color marks, can be inherently distinctive and, therefore, federally protected via the USPTO.

If your products or product packaging is recognizable by your customers, you may want to consider taking the extra step of applying for federal registration of that color, even if the color is not uniform and blends into other colors. Also, consider consulting an attorney who is well-versed in the area of trademark law to make sure that the description of your color mark is worded the best way possible.

There are a number of famous colors that are trademark-protected – such as the color brown, which is registered by UPS, and the color “robin egg blue”, which is registered by Tiffany & Co. This protection stems from the fact that such marks are “inherently distinctive”. That is, the colors have become so readily recognized by the purchasing public as being associated with goods or services. However, some color marks that comprise “undefined” multiple colors, including graduated colors (i.e., where one color fades into another) have generally been treated as never being able to rise to the level of being inherently distinctive.

On April 8, 2020, the United States Court of Appeals for the Federal Circuit (CAFC), held that the Trademark Trial and Appeal Board (TTAB) erred in ruling that an “undefined” color trademark on products and product packaging cannot be distinctive enough for registration unless consumers already recognize it as an indicator of product source. In Re: Forney Industries, Inc., Fed. Cir., No. 19-1073, Opinion 4/8/20.

In its federal registration application, Forney Industries, Inc. described its multi-color trademark as “a solid black stripe at the top” and “[b]elow the solid black stripe is the color yellow which fades into the color red” (emphasis added). Early on, the Examining Attorney at the United States Patent and Trademark Office (USPTO), and later the TTAB, decided that Forney multi-color scheme could not be inherently distinctive.

The TTAB cited two Supreme Court decisions supporting its position – that product and packaging marks using color without defined borders or shape also cannot be inherently distinctive. The CAFC found that the board’s decision overstated the Supreme Court precedent and ruled that the TTAB erred by holding that: (1) a multi-color mark can never be inherently distinctive, and (2) product packaging marks that employ color cannot be inherently distinctive in the absence of a well-defined peripheral shape or border.

The CAFC stated that the correct standard to apply in determining inherent distinctiveness is a legal question, which it could review de novo. The CAFC then recognized that neither the Supreme Court nor it, has directly addressed whether a multi-color mark such as described by Forney can ever be inherently distinctive. Recognizing the “Forney is not attempting to preempt the use of the colors red, yellow, and black, but instead seeks to protect only the particular combination of these colors, arranged in a particular design”, the CAFC concluded that there are instances when a multi-color mark, as well as single-color marks, can be inherently distinctive and, therefore, federally protected via the USPTO.

If your products or product packaging is recognizable by your customers, you may want to consider taking the extra step of applying for federal registration of that color, even if the color is not uniform and blends into other colors. Also, consider consulting an attorney who is well-versed in the area of trademark law to make sure that the description of your color mark is worded the best way possible.

© 2020 Davis|Kuelthau, s.c. All Rights Reserved

For more on trademark enforcement, see the National Law Review Intellectual Property Law section.

A Registered Copyright is the Only Way to Guard Against Infringement

The legal world and the media closely monitor every move the Supreme Court makes or considers. However, some rulings attract more attention than others. One that the general public might have overlooked was a 2019 ruling involving infringement claims. Trying to clean up some inconsistent decisions in the Circuit Courts, the high court ruled unanimously that copyright infringement claims are valid only when there is a copyright registered with the United States Copyright Office.

This is a significant shift

Before this ruling, the courts were often more open to protecting copyrightable property even if it was not officially registered with the Copyright Office. For example, the Fifth and Ninth Circuit ruled that protection comes as soon as the owner applies for the copyright and pays the registration fee. The Tenth and Eleventh Circuits, on the other hand, ruled that protection was only valid when the application was approved. In the past, it was sometimes enough to say “patent pending” to dissuade infringers even if the application was later rejected. This phrase is now irrelevant.

What does this mean for applicants?

The processing time can vary but takes several weeks, which means that applicants will are vulnerable during the application process, which can important in fast-moving businesses like technology. Moreover, some thought the application was too long or too expensive. This ruling makes it clear that the only protection is when the companies, inventors, entrepreneurs, or content creators register their idea.

© 2020 by Raymond Law Group LLC.

Bank Strategy Briefing: Moving Away From Common Bank Names

It is difficult to overstate the importance of a bank’s name. After all, it’s the centerpiece of a bank’s long-term branding strategy. Before reaching the teller line or setting up a meeting with a banker, seeing a bank’s name on a branch sign, billboard or website is likely the first interaction a customer has with the institution.  With many Midwest institutions approaching or surpassing 100-year anniversaries, a bank’s name may reflect generations of service to a community or the ownership family’s legacy.

Many banks share common names

A surprisingly large number of banks in the U.S. share common naming elements, as detailed below:

tableforweb[2].png

While many reasons for this degree of commonality exist, community pride and company history among them, similar names can result in market confusion, or worse, trademark disputes.

To differentiate themselves, a number of banks have begun changing names. In some instances, it’s a legal name change as specified in the institution’s articles, while in others it’s adopting a trade name.

How to change a bank’s legal name

The process for changing a legal name is relatively simple. First, a thorough search must be conducted to ensure the new name is available. This search would identify existing bank trademarks for the name as well as other potential uses that could cause marketplace confusion. Then comes amending the bank’s articles of incorporation. This requires board and shareholder approval. Once the amendment is effective, customer-facing marketing materials and legal documentation will need to reflect the new legal name.

How to adopt a trade name

Trade names are more nuanced and compliance-sensitive. In addition to validating that a name is available for use, various banking agencies require disclosures about the trade name to appear in signage, advertising and account-opening documentation. This helps customers understand that accounts under each name will be aggregated when calculating FDIC insurance coverage. For example, the Wisconsin Department of Financial Institution’s (WDFI’s) guidance requires disclosure that trade names be identified as a “branch” of the bank. WDFI does not permit other descriptors like “division” or “unit.”

Name changes create new marketing opportunities

Beyond the legal and logistical aspects of a name change, it’s important to develop a robust marketing plan to maximize the opportunity a name change creates. Consider ways to reintroduce the bank to the marketplace and retell its story to the community.

Copyright © 2020 Godfrey & Kahn S.C.

Healthy Habits for You and Your Company: File Your Annual Reports, Replace Your Air Filters, and Renew Your DMCA Agent Registration

Businesses and people alike each have recurring routine tasks they need to perform to stay in good shape. Every year we prepare corporate filings, undergo our necessary medical examinations, and file our taxes.1 And starting in December 2019, companies began adding a new task to this checklist: renewing their DMCA Agent registration. Is your company prepared?

The DMCA can protect your website from its users’ copyright infringement.

Anyone with a website that allows users to post content to the site, even in a simple comment section, risks liability for copyright infringement based on those users’ posts. The Digital Millennium Copyright Act (“DMCA”) helps website owners mitigate that risk. If you operate a site and you comply with the safe harbor criteria, the DMCA shields you from copyright liability. The DMCA isn’t limited to internet service providers; its safe harbor offers websites an immensely valuable protection against costly and lengthy copyright infringement lawsuits. A registered Agent is only one of the many required elements needed for DMCA compliance, but it’s a crucial requirement that’s easy to overlook.

Congress passed the DMCA in 1998 to strike a balance between protecting the dynamic creativity of internet users and enforcing federal copyright protection. And regardless of whether you think Congress managed to find that balance, the DMCA sets the standard for statutory copyright enforcement on the internet—users ignore it at their peril. Websites that don’t comply with the DMCA must2 screen every comment and post submitted to the site by anyone for potential copyright violations, because the site can be held directly liable for any infringing submissions.3 On the other hand, DMCA compliance makes the website essentially immune from its users’ infringement.

Social media networks are the most obvious beneficiaries of DMCA safe harbor protection. Can you imagine if Facebook or Twitter needed to pre-screen every single post or tweet before it went live? In exchange for this safe harbor protection, the DMCA requires businesses to (among other things) create and enforce copyright takedown procedures for copyright holders to use when they spot potentially infringing content on the website.4

The Designated Agent is a key part of DMCA compliance.

Every organization that seeks safe harbor protection needs to designate an Agent as the organization’s point of contact for takedown notices. The designation is submitted to the U.S. Copyright Office, where it’s published on a searchable database. The designated Agent (which can be one person or an entire department) is then responsible for receiving all of the company’s DMCA takedown notices and then ensuring that they are acted upon.

Each Agent designation is effective for three years. Whenever the designated Agent’s information is updated with the Copyright Office, the three-year clock starts over. But if a three-year period ends without an update or renewal, the designation becomes invalid and the organization’s DMCA safe harbor protection ends with it.

You don’t want to forget about your renewal and you shouldn’t wait three years between checkups.

Fortunately, it’s pretty simple to figure out when your company’s Agent designation will expire. You can check the date that your organization’s Agent was last updated by searching the DMCA Designated Agent Directory and clicking on the name of the Service Provider.5 Add three years to the displayed effective date, and that’s your deadline.

You could, in theory, set a calendar reminder for every three years and forget about the DMCA in the interim, but we don’t recommend it. What if your Agent takes a leave of absence or leaves the company? What if your company reorganizes and the designated department is renamed (or gets lost in the transition)? We recommend that you check your Agent’s status at least once a year, just to be safe. It only takes a moment to do.

When in doubt, check with your attorneys to make sure that your rights are still being protected.

There’s much more to DMCA protection beyond Agent registration. Copyright law is constantly evolving—especially when it comes to the internet. DMCA safe harbor protection has many requirements beyond just having a designated Agent, and there’s a lot at risk if your company doesn’t qualify for the safe harbor. You can’t “undo” a gap in safe harbor protection, but you can close the door on future liability. That’s a door you want to keep shut. As your business’s online presence grows, so does its exposure to potential liability.

So when you’re checking your DMCA Agent registration, don’t just tick the box and wait until the next year. Take the time to consider your DMCA protocols. If your company’s DMCA compliance protocols aren’t up to date and compliant, your safe harbor is in jeopardy. What about the company’s future needs? If your company’s online presence will be growing, is your designated Agent capable of handling an increased caseload of takedown notices? This is an area where it’s better to be safe than sorry.

References:

1 This article is not meant to provide specific legal or medical advice. If you would like more specific legal advice, please contact an attorney. If you’re looking for specific medical advice, you’re reading the wrong article.
2 Or at least they really, really should.
3 Damages for copyright infringement are no joke. A successful plaintiff can receive their actual damages while also forcing the infringer to disgorge its profits from the infringement, or can alternatively obtain statutory damages of up to $150,000 per infringed work.
4 Many articles could be (and have been) written on abusive and overzealous DMCA takedown notices, especially since the development of automated takedown services that can act without human interaction. For brevity’s sake, this article won’t dive into those deep waters.
5 If you run a website, you should assume that you’re a service provider under the DMCA.

Copyright © 2020 Ryley Carlock & Applewhite. A Professional Association. All Rights Reserved.

For more on the Digital Millennium Copyright Act, see the National Law Review Intellectual Property law section.

KnowIt 2020: Intellectual Property in a Digital World

KnowIt is a groundbreaking new annual event that brings together the community of creators and protectors of intellectual property and other innovative outputs for an unprecedented discourse and collaboration. With dramatic shifts in both consumer and business technologies, as well as social trends and business models, now is the time for KnowIt.

THE DIALOGUE AT KNOWIT:

  • Includes intellectual property, but goes beyond IP to include all human (and artificial) intellectual output;
  • Includes lawyers and matters of law, but goes beyond law to include the business and science of creating and protecting innovations;
  • Includes panels and speakers, but goes beyond the passive listening experiences of the past to facilitate actionable exchange and collaboration.

Attendees at KnowIt will include lawyers (in-house and outside counsel), academics, inventors, authors, brand creators, cybersecurity and privacy professionals, leaders in government, regulators, startups, tech companies, investors, non-profits, media, Wall Street analysts and more.

As an attendee, you will be immersed in unique and engaging sessions about the future of intellectual enterprises, and will connect with peers beyond those that hold the same job title as you. The agenda features unique general sessions as well as more intimate conversations. KnowIt also provides a multitude of ways to meet and interact with your peers, clients, lawyers, creators, partners, vendors and friends.

KnowIt doesn’t focus on the nuts and bolts. Instead, it examines critical issues that are fundamental to understanding the changes happening today, and the changes that will define the innovation of the future.

Join us on May 11-14, 2020 at the Aria Hotel in Las Vegas, as we define intellectual output in a digital world and usher in the Fourth Industrial Revolution!

 

QUALIFIED IN-HOUSE AND OUTSIDE COUNSEL PARTICIPANTS GET 50% OFF TICKET PRICE!