On April 27, the Supreme Court took us on a stroll down memory lane in its decision in Georgia v. Public.Resource.Org, Inc., referring us back to its very first copyright case and revisiting the government edicts doctrine for the first time in more than a century. The Court, applying logic from Wheaton v. Peters, along with Banks v.… More
Category Archives: Legislation
With the first retail sales of adult use marijuana slated to take place in just over five months, the Massachusetts Cannabis Control Commission (the “Commission”) is working overtime to regulate an industry that some project will exceed $1 billion in revenue by 2020. As the July 1st target date for the opening of retail cannabis shops approaches, one area that will undoubtedly become the focus of much attention is the ability of retailers to market their wares. … More
We just got back from the Association of National Advertising (ANA) and Brand Activation Association (BAA) Marketing Law Conference in Chicago, held earlier this week. With hundreds in attendance, and dozens of speakers presenting over three days, it was a great opportunity to learn about “hot” trends and key issues in the advertising and marketing space from an array of stakeholders – marketers, attorneys, regulators,… More
Updated June 24, 2016
A few hours ago, citizens of the United Kingdom voted in favor of leaving the European Union. This is a monumental step which historians will analyze in order to understand why and how it became possible. In the meantime, lawyers will have to figure out the consequences, including how to untangle this 60 year-old relationship.
European patents should not be affected by Brexit because the Munich Convention is not a European Union instrument.… More
Last week, in a departure from the partisan gridlock that has gripped Washington, the House of Representatives joined the Senate in passing a sweeping new statute to protect trade secrets. The legislation, which President Obama strongly supported and is expected to sign within days, creates a new federal civil cause of action for trade secret theft.
The speed with which Congress passed this legislation – entitled the Defend Trade Secrets Act of 2016 (DTSA) – reflects the increasing importance of trade secrets to American business.… More
The First Circuit’s “Scungy” Backpage: Copyright And Right Of Publicity Claims Ineffective Against Sex Trafficking
In Doe v. Backpage.com, the First Circuit affirmed the District of Massachusetts in holding that Section 230 of the Communications Decency Act (CDA) shields from civil liability a website used by third parties to facilitate the sex trafficking of underage girls. If you haven’t had a chance to follow the case, there are three basic takeaways: (1) the immunity provided by Section 230 of the CDA is very broad;… More
It’s been a disappointing few months for Machete, Danny Trejo’s “Mexploitation” character created by Robert Rodriguez. After making powerful enemies in Mexico, former Federale Machete found himself a day laborer and vigilante in Texas. His adventures allowed him to exact some bloody satisfaction against fictional corrupt Texas lawmen and politicians, but he is having decidedly less success against the real-world Texas government. … More
Justice Scalia on Trademark and Copyright: Dastar, Penguin-Shaped Cocktail Shakers and “Guilt by Resemblance”
When we decided to mark the passing of Justice Antonin Scalia by recounting a few of his copyright and trademark opinions, we were somewhat surprised to discover that there really hadn’t been that many. In fact, we located only seven matters in which Justice Scalia contributed a written opinion on a substantive issue of trademark or copyright law, and only four were majority opinions. Here they are,… More
Corporate Defendants Find a Safe Harbor from Unfair Competition Claims in California Transparency Litigation
A District Court judge in California has dismissed a complaint against Nestlé USA Inc. and Nestlé Purina Petcare Co. (together “Nestlé”) which argued that the company was obligated to inform consumers that seafood in its catfood products may have been sourced from forced labor. Plaintiffs alleged violations of the California Unfair Competition Law, the Legal Remedies Act, and the California False Advertising Law.
Most readers of this blog are well-acquainted with the Digital Millennium Copyright Act (DMCA) and the anti-circumvention provisions codified therein, 17 U.S.C. § 1201 et seq., which prohibit the circumvention of technological measures that control access to a copyrighted work, even in the absence of copyright infringement. The anti-circumvention provisions of the DMCA are often criticized for their failure to include an explicit fair use exemption like that included elsewhere in the Copyright Act,… More
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,… More
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.… 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),… 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).… 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,… More
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,… More
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,… 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, … 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.… More
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;… 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,… 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.… 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?”
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,… More
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,… 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.… 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.… 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,… 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.… 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.… 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?… More