Just about one hundred years ago, Archibald Query of Somerville, Massachusetts invented the first commercial marshmallow cream, which he pedaled door-to-door in Union Square. Around 1917, he sold the recipe for $500 to two candy makers in Lynn who had just returned from World War I, and their company (Durkee-Mower) still makes Marshmallow Fluff today. In 2006, Union Square boosters began celebrating Query’s achievement with the Fluff Festival, a day of activities literally and figuratively stuffed with marshmallows. In honor of the 10th annual Fluff Festival, which takes place… More
Category Archives: Legislation
On August 6, 2015, the Massachusetts Supreme Judicial Court (SJC) in Commonwealth v. Lucas struck down Massachusetts General Laws, Chapter 56, § 42 (Section 42), which criminalized the utterance or publication of “any false statement in relation to” a candidate for public office or a ballot question. Violations of the statute were punishable by a thousand dollar fine or up to six months imprisonment. Justice Robert J. Cordy, writing for a unanimous court, held that Section 42, which had been around since 1946, violated both the First Amendment and… More
The United States has taken several recent steps towards normalizing its ties with Cuba and, just yesterday, the two countries re-opened embassies in each other’s capitals for the first time since 1961. Despite these developments, one thing that remains largely unchanged for now is the Cuban embargo. Enforced by the Department of Treasury’s Office of Foreign Assets Control (OFAC), the Cuban embargo, as codified in the Cuban Assets Control Regulations, 31 CFR Part 15 (CACR), still prohibits most transactions between persons subject to US jurisdiction and Cuba. … More
Highlights of Congressional Hearings on Copyright Remedies: Statutory Damages, Small Claims and Felonious Streaming
On July 24, 2014, the Judiciary Committee of the United States House of Representatives, through its Subcommittee on Courts, Intellectual Property and the Internet, held hearings on the subject of copyright remedies. Most of the discussion focused on the efficacy of statutory damages, which provide for awards between $750 and $30,000 per infringed work (with adjustments up to $150,000 per work for willful infringement). There was also discussion of the Copyright Office’s recent proposal for a small claims tribunal. The proposed tribunal would enable individual… More
As any IP lawyer will readily admit, trademark practice before the United States Patent & Trademark Office (PTO) comes with its fair share of annoyances: inconsistent treatment of similar applications, unreasonably stringent identification requirements, and so forth. Another difficulty lies in what appears to be a large number of registrations subsisting on the federal register, past their initial maintenance filings, despite a high likelihood that such marks are no longer used, or have never been used, in connection with some or all of their identified goods and services.
About a year ago, we wrote about the final chapter in the copyright saga of Joel Tenenbaum, the Boston University student who was found liable for copyright infringement by a District of Massachusetts jury, based on his admitted sharing of about 30 songs via online peer-to-peer networks. Because the jury found that his infringement was willful, it awarded the plaintiffs a whopping $675,000 in statutory damages, or about $22,500 for each violation. By contrast, the retail value of the music Tenenbaum shared was reportedly about $450.
Highlights of Congressional Hearings on Copyright Moral Rights, Termination Rights, Resale Royalty, And Copyright Term
On July 15, 2014, the Judiciary Committee of the United States House of Representatives, through its Subcommittee on Courts, Intellectual Property and the Internet, held hearings regarding a number of copyright issues, including moral rights, termination rights, resale royalty and copyright term. Despite the eclectic nature of the hearing, all of the issues discussed fell under the general category of what Chairman Howard Coble (R-NC) described as the “rights of the creator, often referred to as the little guy.”
Representative John Conyers (D-Mich.) stated that, at the moment, the… More
A History Of Massachusetts Anti-SLAPP Legislation As A Vehicle For Protecting First Amendment Petitioning Activity From Retaliatory Defamation Claims
Before the passage of anti-SLAPP legislation, citizens engaged in First Amendment petitioning activity often found themselves the targets of retaliatory lawsuits. For example, a group of neighbors might speak out at a local zoning commission hearing to block approval for a new building development, only to find themselves defending against a costly lawsuit brought by the developer for, among other things, defamation or commercial disparagement.
This December will mark the 20th anniversary of the Massachusetts anti-SLAPP statute, Chapter 231, Section 59H of the Massachusetts General Laws. The statute seeks to discourage retaliatory defamation lawsuits and similar claims by providing petitioners the opportunity… More
The United States Patent and Trademark Office is soliciting comments on its draft version of the “Service Mark Specimens” examination guide. The topics covered by the guide include the elements of an acceptable service mark specimen, grounds for refusal, and common issues arising in the examination of specimens for technology-related services. Comments are due by July 16, 2014. More information is available here.
The Department of Commerce is holding a round table at Harvard Law School on June 25, 2014 to discuss the Internet Policy Task Force’s Green Paper on Copyright Policy, Creativity and Innovation in the Digital Economy, released on July 31, 2013. The Boston topics will include 1) the legal framework for the creation of remixes; (2) the relevance and scope of the first sale doctrine in the digital environment; and (3) the appropriate calibration of statutory damages in the contexts of individual file sharers and secondary liability for large-scale infringement…. More
In its recent opinion in Oracle v. Google, the Federal Circuit reversed the Northern District of California and reinstated a jury’s infringement verdict against Google. The opinion is long and complex, and much ink has already been spilled by its critics. As a service to those of you sitting on the sidelines of this particular debate, here is our summary version of the case:
What’s the case about?
Some recent administrative developments may be of interest to copyright and trademark practitioners:
Effective May 1, 2014, the U.S. Copyright Office has amended its registration fee schedule. This includes reduced renewal application fees and increased fees for registering multiple works. A complete list of the new fees is available here.
Updated Trademark Manual of Examining Procedure (TMEP)
On April 30, 2014, the USPTO issued the April 2014 update of the TMEP, which includes precedential case law and other changes since the October 2013 revision. Highlights of the changes are available from the USPTO… More
The United States Copyright Office has announced the initiation of a study of the effectiveness of existing methods of music licensing. Three types of licenses were mentioned in the announcement: (1) compulsory licenses for the reproduction and distribution of musical compositions; (2) licenses for the public performance of compositions through ASCAP and BMI; and (3) licenses for the relatively new right in the digital public performance of sound recordings.
Among the issues that will be considered are:
Compulsory Licenses for Reproducing and Distributing Musical Compositions
The owner of… More
Fox news recently reported on a dispute between Gulfport, Mississippi resident Kelly Taylor and her local Walgreens pharmacy. Ms. Taylor, using Walgreens’ online photo service, attempted to print out a few pages of the Bible to hand out to members of her church. Walgreens refused, citing copyright law. When Walgreens told Taylor that it would require approval from the author, she informed the store that God was the author so “who exactly would I get the approval from?”
Ms. Taylor was “in total shock,” so she contacted Fox News and… More
An orphan work is an original work of authorship whose author cannot be located or identified when someone is seeking permission to use it. For example, say you want to reprint a photograph in a book, but you can’t identify or locate the photographer, and you don’t know where to go for permission. Should you still use it? Have you really searched hard enough for the rights holder?
Big changes may be afoot in copyright law these days, via both litigation and legislation. Courts are considering sweeping infringement claims with potentially far-reaching implications, and Congress is beginning the process of a massive overhaul of copyright statutes. We provide here a brief rundown of some recent developments.
Authors Guild v. Google
As we have reported previously, the Authors Guild and representative individual authors have been waging a long-running battle in the Southern District of New York against Google’s GoogleBooks project, an effort to digitize the collections of major… More
Last Friday, the Republican Standing Committee (“RSC”) published a report by twenty-four year old staffer Derek Khanna, a former Mitt Romney aide and graduate of Georgetown Law School, entitled: “Three Myths about Copyright Law and Where to Start to Fix it.” In less than twenty four hours, the report disappeared from the internet.
The RSC claims that the report was removed because it had been published without adequate review. But Techdirt and others, smelling scandal, speculate that the report was nefariously removed because it was… More
The Federal Trade Commission recently finalized changes to its investigative procedures. The changes are intended to streamline a process that has, in recent years, become increasingly lengthy and unwieldy. The driving force behind the changes, which will become effective November 9, 2012, is the ever-increasing pace of technology, in particular its effect on the amount of electronic data that a respondent must comb through when it finds itself the target of a Commission investigation.
The Current Process
Typically, the Commission commences an investigation by serving a… More
In the wake of last week’s web protests and media attention around pending anti-piracy legislation, leaders in both houses of Congress announced on Friday that they would indefinitely postpone further consideration of the Stop Online Piracy Act (“SOPA”) and the PROTECT IP Act (“PIPA”). Senate Majority Leader Harry Reid (D-NV) cancelled the cloture “test” vote to reopen debate on PIPA that had been scheduled for tomorrow, January 24, citing “legitimate issues raised by many” while expressing optimism “that we can reach a compromise in the coming weeks.” In response, SOPA sponsor Rep. Lamar Smith (R-TX) announced that… More
The tide may be changing in the controversy over SOPA and PROTECT IP (or “PIPA”), the anti-piracy bills that have been making their way through, respectively, the House and the Senate in recent months. Yesterday’s unprecedented 24-hour global blackout of the English Wikipedia site in protest of the legislation and the new enforcement powers it would create has acted as a lightning rod for public attention. In concert with Wikipedia, Google ran a “censored” version of its logo on its home page yesterday, with a plea… More
Bills were introduced in both the House and the Senate earlier this month to increase the penalties for trafficking in counterfeit drugs. Both versions of the proposed “Counterfeit Drug Penalty Enhancement Act of 2011” (H.R. 3468 and S. 1886) would amend 18 U.S.C. § 2320, which criminalizes the use of counterfeit marks on or in connection with goods or services, to provide for enhanced penalties when the good in question is a drug.
A similar measure was introduced in October as part of H.R. 3261, the “Stop Online Piracy Act” or “SOPA,” a bill aimed primarily at… More
Back in May, we wrote about MAFIAA Fire, a browser plug-in created by anonymous coders to counteract the government’s efforts to shut down copyright-infringing web sites by seizing the domain names.
More Thoughts on the “Trademark Bully” Report: The Department of Commerce did a Good Job with a Bad Assignment
I am attending the INTA Annual Meeting in San Francisco, and a number of people are talking about the “trademark bully” report released a few weeks ago by the Department of Commerce. During these conversations, it became clear that a few people misconstrued some comments that I made to the press and in my prior blog post . I would like to clarify my views.
While I am not in favor of devoting scarce government resources to address the so-called trademark bullies issue, I have no problem with how the Department of Commerce conducted the study. In fact, I think the Department of Commerce did a good job carrying out the directive of Congress…
The long-awaited study of so-called trademark bullies was recently released by the Department of Commerce. As you may recall from our prior blog post, the study was the result of legislation filed by Senator Leahy of Vermont and signed into law by President Obama on March 17, 2010 (Pub. L. 111-146, Sec. 4). The legislation gave the Secretary of Commerce one year to “study and report to [Congress] the extent to which small businesses may be harmed by litigation tactics [by corporations] [the purpose of which is] attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.” (Subsequent to enactment, the words “of corporations” were stricken and replaced by “the purpose of which is” by Pub.L. 111-295, Sec. 6(h).)
Nobody likes a bully, and I think we can all agree that the world would be a better place without bullying. Yet bullying in the schoolyard is not the same as bullying in the courtroom, and the issues can be complex. Is it fair to apply the bully label to any intellectual property owner who seeks to enforce its rights against a smaller company or who ultimately loses the case? If not, how can one tell the difference between legitimate enforcement and so-called bullying? These tricky issues are raised in a recent trademark bill signed into law earlier this month.