Darin M. Klemchuk 7/29/19 Darin M. Klemchuk 7/29/19

Weekly IP Buzz for the week ending July 26, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending July 26, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending July 26, 2019.

Philadelphia Bar, The Jacks NYB, Seeks Play Gloria! Trademark Rights

A Philadelphia bar is seeking to trademark ‘PLAY GLORIA’ and use it in connection with the sale of apparel and merchandise emblazoned with the mark, claiming first use and creation of the connection of use with the mark in support of the St. Louis Blues, a hockey team that used Laura Branigan’s 1982 song “Gloria” throughout their Stanley Cup championship series.

The Use of “Play Gloria” as a Trademark

While it is relatively common for sports teams to use songs as rallying cries for their fans, the question of who used it first, the team or the fans, can often become muddled. Moreover, because the sports teams naturally have more resources at their disposal, including but not limited to, legal teams, press divisions, and merchandise manufacturers, fans may often back down from claiming first use or credit for the popularity of the song’s use in connection with any particular sports team.

As the Blues have used the song “Gloria” as both their rally song and postgame victory song, the phrase “Play Gloria” has been printed on all sorts of fan merchandise. Not only have the Blues sold their own apparel with the phrase “Play Gloria” on it, but several other third parties also sell t-shirts, hats, and other similar sports paraphernalia with the phrase printed on it.

The Jacks NYB Claims First Trademark Rights in Play Gloria

The Philadelphia bar, The Jacks NYB, has claimed rights of first use and filed trademark applications to register the marks “PLAY GLORIA” and “PLAY GLORIA!” in order to assert exclusive rights to use the mark in connection with the sale of fan apparel. Although the Blues are actually involved in the creation of the use of the song as a victory song because the idea to adopt the song came from a mix of interaction between fans and actual Blues hockey players that had been watching a football game at the bar, the Blues have officially stated that they have no involvement with the pending trademark applications and have pulled previously existing merchandise with PLAY GLORIA printed on it from their official store.

The Jacks NYB note that St. Louis media has covered the origin story extensively, which they cite as more evidence to bolster their claims of first use. And while the applications have not been officially approved, trademark counsel representing the Philadelphia bar has already sent a number of cease-and-desist letters to other vendors that currently sell merchandise with PLAY GLORIA printed on it. While The Jacks NYB has confirmed that they have already become embroiled in a legal dispute with Arch Apparel over the pending mark, they have vehemently denied bringing any sort of legal action against the St. Louis Blues hockey team itself.

Read the full article here.

Japan Politely Asks Kim Kardashian to Rebrand: Kimono Trademark

Kim Kardashian is no stranger to controversy or being in the news, but her latest business foray has piqued interest abroad as well as in the intellectual property field. The latest public criticism has come from Kardashian’s decision to name her new shapewear line “Kimono,” and her recent moves to trademark “KIMONO,” “KIMONO BODY,” and “KIMONO WORLD” in connection with the shapewear line.

Kardashian’s choice to use “kimono” has incited a considerable amount of public criticism and response. Those involved in questioning Kardashian’s choice range from individuals on the Internet all the way to national representatives in Japan. Specifically, the mayor of Kyoto City, Daisaku Kadokawa has penned an open letter to Kardashian, inviting her to visit Japan to experience “the essence of Kimono Culture” in hopes that she will reconsider use of the term in connection with her shapewear line. While a country cannot typically intervene in a trademark application without holding specific rights in the contested mark or a confusingly similar mark, the mayor of Kyoto City hoped to persuade Kardashian by noting that the kimono had not only been an important part of Japanese cultural history, but also because the Japanese government is actively working to register kimono with UNESCO to be listed on the Intangible Cultural Heritage List.

Similarly, social media has also been abuzz in protest of Kardashian’s latest move. Across multiple platforms such as Facebook, Instagram, and Twitter, Japanese women have posted photographs of themselves in actual kimonos in protest against Kardashian’s latest business venture. Despite all of the public outcry, such sentiment is prohibited from impacting the U.S. Trademark Office’s decision. The decision over whether Kardashian will be able to successfully register “KIMONO” is left ultimately up to the U.S. Trademark Office alone, and the federal agency is banned from making subjective decisions on the registrability of the mark based on public sentiment.

Read the full article here.

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For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charitable movement devoted to changing the world one random act of kindness at a time, and publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys.

Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Darin M. Klemchuk 7/22/19 Darin M. Klemchuk 7/22/19

Weekly IP Buzz for the week ending July 19, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending July 19, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending July 19, 2019.

Federal Court Rules Amazon Can Be Held Liable for Third Party Sellers’ Products

A federal court passed down a blockbuster ruling last week, holding that e-commerce giant Amazon can be held liable for third party sellers’ products, effectively allowing Amazon to be held liable for defective products sold by third party vendors via the Amazon marketplace.

New Ruling Finds eCommerce Platform Liable for Third Party Seller Products

Departing from the ruling of other federal courts that had previously held that Amazon could not be held liable, the 3rd Circuit Court of Appeals in Philadelphia reversed a previous ruling, thus becoming the first circuit court to rule against Amazon.

With this holding, Amazon could be facing a myriad of lawsuits soon as approximately half of the goods currently sold on Amazon come from third party vendors. In the past few years, Amazon has faced increasing criticism from consumers over Amazon’s decision to open the marketplace to Chinese vendors as the website immediately became filled with third-party vendors that sold cheap goods that were often found to be either counterfeit or defective.

Amazon’s Acceptance of “Any” Vendors Opened Door to Complaints and Liability for Third Party Sellers

As Amazon increasingly ceded ground to third-party sellers, it was not only consumers that complained. Other third-party vendors also began to complain that they were constantly being undercut by copycat sellers that sold copies of their goods that were both cheaper and of lesser quality. As a consequence, these vendors often ended up with reviews that negatively affected their brand when the complaining consumers had not even purchased the products from the true vendor. Moreover, these vendors complained that even if Amazon shut down the copycat accounts, new accounts engaging in the same behavior were up within a matter of days, sometimes within hours.

As a result, many authentic brands have pulled their goods from Amazon, increasingly leaving consumers with access to only counterfeit goods or goods of less quality overall. It’s no wonder a court would find Amazon to have liability for third party sellers’ products causing harm in the marketplace.

Read the full article here.

Amazon’s Anti-Counterfeiting Tools

The global counterfeit industry represents over $1 trillion dollars annually. There are many contributors, pitfalls, and points for check-and-balance all along the supply chain, from the creation of the counterfeit item to its point of sale to a customer. Amazon has developed a host of anti-counterfeiting tools, to identify counterfeit items currently being sold on amazon.com and remove them, and to prevent counterfeit goods from being listed for sale in the first place.

Amazon announced Amazon Project Zero at the end of February 2019, on their dayone blog. Described as a three-fold approach to combatting counterfeit products on their stores, covering items already listed for sale and ones coming through the supply chain.

1 – Automated protections: Brands provide Amazon with their logos, trademarks, and other identifying data, so that Amazon’s machines can constantly scan their stores and initiate the removal of suspected counterfeits.

2 – Self-service counterfeit removal tool: Brands have been given the ability to remove counterfeit listings by themselves, instead of reporting the counterfeit item to Amazon and then waiting for Amazon to resolve it. The self-service tool gives brands the control to monitor for counterfeits and to take action.

3 – Product serialization: Brands place a unique code on every item during manufacturing. Amazon scans and verifies each product’s authenticity, and is able to stop a purchased counterfeit product unit from reaching the customer.

All brands, including luxury brands, face revenue loss and tarnishing of the brand when dealing with all aspects of counterfeits of their products. To help combat, and circumvent that, Amazon’s anti-counterfeiting tools provide brands with an automated, proactive system for identifying and removing counterfeit products before they reach a potential customer.

Read the full article here.

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For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk 7/15/19 Darin M. Klemchuk 7/15/19

Weekly IP Buzz for the week ending July 12, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending July 12, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending July 12, 2019.

Japan Politely Asks Kim Kardashian to Rebrand: Kimono Trademark

Japanese Government at Odds with Potential Kimono Trademark in U.S.

Wave of Disapproval Develops in Social Media with News of Kardashian Kimono Trademark Brand

Read the full article here.

U.S. Trademark Office Denies Warner Brothers’ Trademark Application

The U.S. Trademark Office recently made headlines when it decided to deny Warner Brothers Entertainment (“Warner Brothers”) the trademark registration for “I solemnly swear that I am up to no good.” Fans of the J.K. Rowling series Harry Pottermay recognize the phrase as one that Harry uses in the famous book series to access his “Marauder’s Map.”

Warner Brothers Trademark Slogan Deemed Informational Use Only

Despite Warner Brothers’ argument that fans worldwide would recognize the phrase as being connected to the famous Harry Potter movie series, the U.S. Trademark Office refused to accept the Warner Brothers’ trademark application on the grounds that the Harry Potter phrase did not actually qualify as a trademark. In fact, phrases in general cannot be registered as trademarks because U.S. trademark law use trademarks as a means of consumer protection. More specifically, trademarks are marks that should allow consumers to immediately recognize the source from where the goods or services originate.

In this case, the U.S. Trademark Office stated that the phrase “I solemnly swear that I am up to no good” was, at best, an informational slogan, and at worst, a widely-used phrase that could be connected to a wide variety of different sources, concepts, or even sentiments.

As such, because consumers could be easily confused or not immediately identify the source of goods from the phrase alone, the U.S. Trademark Office denied Warner Brothers’ application to register the mark in a variety of trademark categories that cover various merchandising options.

Read the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Darin M. Klemchuk 7/8/19 Darin M. Klemchuk 7/8/19

Weekly IP Buzz for the week ending July 5, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending July 5, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending July 5, 2019.

First Amendment Trumps Trademark Law: Supreme Court Holds FUCT Is OK

supreme-court-decides-first-amendment-and-scandalous-trademarks.jpeg

It has been well known that the federal government has long prohibited the registration of trademarks considered to be “immoral” or “scandalous.” Trademark attorneys have long advised clients to build brands or invest in names that were not edgy enough to be debatable if it came time to register them with the U.S. Trademark Office. In a recent decision, the First Amendment and scandalous trademarks were examined.

Is It Profanity or Clever Art and Free Speech?

In the case at hand, the U.S. Trademark Office rejected an artist’s application to register “FUCT” in connection with his products and merchandise. Even though the petitioner had argued that the trademark was meant to be read as four letters “F-U-C-T,” the U.S. Trademark Office deemed that the proposed trademark was scandalous, too connected to profanity in sound and would only raise such imagery in the mind of consumers upon initial viewing.

This all changed, however, earlier this week when the Supreme Court ruled that the long-standing precedent and prohibition of seemingly scandalous marks violated the First Amendment.

The First Amendment and Scandalous Trademarks

In overturning longstanding trademark law, the Supreme Court held that view pointed-based review and subsequent rejection of trademarks were unconstitutional. Because the U.S. Trademark Office used subjective reasoning when reviewing the submitted materials for trademark registration (e.g., website, imagery) and deemed them misogynistic, depraved, and violence as reasons for rejecting the trademark application on the basis of immorality or “scandalous trademarks,” the Supreme Court found that the government had engaged in analysis that is prohibited by the First Amendment.

Specifically, in the holding, the Supreme Court noted that the U.S. Trademark Office has long demonstrated considerable bias in its rejections based on immorality.

Read the full article here.

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For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk 7/1/19 Darin M. Klemchuk 7/1/19

Weekly IP Buzz for the week ending June 28, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending June 28, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending June 28, 2019.

Lengthy Saga of Porn Copyright Troll Finally Ends in Jail Time

It seems like ages since legal news last covered the protracted court battles and wrangling between the federal government and Prenda Law’s infamous duo, Paul Hansmeier and John Steele, two copyright attorneys allegedly turned copyright trolls that terrorized victims through threats of expensive and embarrassing lawsuits and legal actions concerning copyright infringement of pornographic videos and content.

Attorneys Turned Copyright Trolls?

The two Prenda Law attorneys were back in the news recently as a federal judge handed down the first of two sentences against the Prenda Law attorneys, finding Hansmeier guilty of multiple charges that included counts of identify theft, entrapment, fraud, money laundering, perjury, as well as mail and wire fraud. Ultimately, Hansmeier was sentenced to fourteen years, with Steele to be sentenced later.

Further, the two attorneys that allegedly acted as copyright trolls and had terrorized and extorted victims out of sizeable settlements were ultimately ordered to pay $1.5 million in restitution to their victims. The judge took especial affront to the attorneys’ use of their legal knowledge to intimidate and entrap their victims by creating a complex web that included pornography production and mass bit-torrent uploading designed to ultimately ensnare victims as copyright infringers.

Actions Courts Considered Indicative of Copyright Trolling

The court specifically denounced that Prenda Law attorneys did not merely chase down copyright infringers but were also often found guilty of creating the exact circumstances and situations that led to the instances of copyright infringement they later pursued and attempted to “rectify.” Specifically, Prenda Law was found by the court to have acted as copyright trolls, knowingly creating or exacerbating the situation by uploading the very torrents of pornographic content to websites such as Pirate Bay that were at the center of their lawsuits. By uploading the content themselves, the attorneys were able to more easily chase down “infringers” who downloaded the pornographic videos that Prenda Law itself had uploaded. To add insult to injury, the court noted that many of the pornographic videos uploaded were even produced by attorney Paul Hansmeier himself.

Read the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Darin M. Klemchuk 6/24/19 Darin M. Klemchuk 6/24/19

Weekly IP Buzz for the week ending June 21, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending June 21, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending June 21, 2019.

Federal Government Prohibited from Raising AIA Patent Challenges | Return Mail v. USPS

Earlier this week, the United States Supreme Court decided that the federal government may not challenge the validity of U.S. patents using the three patent review processes (inter partes, post-grant, and covered business method review) introduced by the America Invents Act (“AIA”) in 2012. In Return Mail, Inc. v. United States Postal Service, the Supreme Court held that the U.S. federal government does not qualify as a “person” as necessitated by 35 U.S.C. Section 311 or 35 U.S.C Section 321.

Return Mail v. USPS Holds Government Not A “Person” Per AIA Challenge Requirements

Although the federal government has rarely initiated AIA patent review proceedings since the introduction of the AIA patent review, experts predict that patent holders will likely welcome the Supreme Court’s recent holding with open arms because it will minimize the ability of an actor as powerful as the United States from challenging patents via this avenue.

In Return Mail v. USPS, the Supreme Court specifically held that the U.S. Postal Service was not able to demonstrate that it, and consequently the federal government, could overcome the presumption that “person” as dictated by U.S. code does not include the sovereign. Further, the Supreme Court held that despite the long history of federal participation in the patent system, such activity was not sufficiently persuasive to prove that Congress intended for the federal government to be able to participate in AIA patent review proceedings as a “person.”

Read the full article here.

Supreme Court to Decide Trademark Licensee Rights in Bankruptcy Suit

The United States Supreme Court will hear arguments over whether a trademark license agreement remains enforceable after a trustee’s refusal to honor the agreement upon the company’s filing of bankruptcy.

In Mission Product Holdings v. Tempnology, Mission Product Holdings (“Mission”) and Tempnology agreed to a trademark licensing agreement where Mission would be able to sell Tempnology’s patented and proprietary products in conjunction with use of the Tempnology trademark.

Read the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Darin M. Klemchuk 6/17/19 Darin M. Klemchuk 6/17/19

Weekly IP Buzz for the week ending June 14, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending June 14, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending June 14, 2019.

ApisProtect Announces New Innovation: Internet of Things to Study Bees

Much has been said about how the Internet of Things will change consumers’ daily lives and how it relates to consumer privacy. But now, the Internet of Things (IoT) has also extended to other uses besides AI-assistants and medical devices. A recent innovation has used the Internet of Things to study bees in an attempt to figure out why there has been such worldwide colony collapse.

New Device Utilizes The Internet of Things to Learn About Bees and Help Bee Decline

ApisProtect, an Irish company, has created a device that monitors the health of honey bees and uses the Internet of Things to study bee hives and deliver the information. Currently, the unit is only available to commercial beekeepers and allows data on the hive to be sent back and forth.

The ApisProtect sensor unit is marketed as the ApisMonitor and attaches to the roof of a honeybee beehive. ApisProtect boasts that the unit will allow beekeepers to have access to new insight that will allow them to act to protect the health of the colony before collapse is imminent. The ApisProtect is marketed as being able to show beekeepers the condition of the hive, analyze problems with it, as well as provide suggestions to the beekeepers on how to proceed when the hive is in danger.

ApisProtect and Immarsat Partner to Build Worldwide Network for Internet of Things to Study Bees

ApisProtect is also collaborating with Immarsat, a company known for its global and mobile satellite capabilities. The partnership is intended to allow the Internet of Things to build and access a worldwide network of ApisProtect data in order to slow the current, rapid decline of apiaries. The partnership also hopes that it will actually be able to potentially increase honey production in the end.

Specifically, Immarsat will contribute an analytics platform that measures the bees’ health and report it via Long Range Wide Area Networks and Broadband Global Area Network connectivity. Over time, the data collected will help a machine learning algorithm determine problems or colony collapse much earlier.

Read the full article here.

Japanese Government to Create List of Insecure IoT Devices by Hacking Consumers

Earlier this month, the Japanese government approved a new amendment that permits government agencies to hack into Japanese citizens’ private devices that are connected via the Internet of Things (“IoT”). Calling the move a nationwide “survey” intended to protect the nation from foreign cyber attacks, the Japanese government plans to use the preemptive hacking as a means to detect devices that are deemed insecure or vulnerable to attack but owned by private citizens. They will then create a list of insecure IoT devices. The Japanese government has cited the upcoming 2020 Tokyo Summer Olympics as the main impetus for drafting such a drastic law and intrusion into citizens’ private devices.

The large scale survey of citizens’ devices will be carried out by government employees of the Japanese National Institute of Information and Communications Technology (“NICT”) under the supervision of the national Ministry of Internal Affairs and Communications. To gain access to citizen devices, NICT employees will attempt to log into citizens’ devices by using default passwords, password dictionaries, and other similar “common” passwords. If the government is able to access a citizen’s device in such a manner, the device is deemed insecure and will be recorded on a nationwide list of insecure IoT devices compiled by the government. The NICT will then pass on the list of insecure IoT devices to Internet Service Providers (“ISPs”) and other relevant service providers so they may warn the relevant citizen or account holder directly.

Find the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Darin M. Klemchuk 6/10/19 Darin M. Klemchuk 6/10/19

Weekly IP Buzz for the week ending June 7, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending June 7, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending June 7, 2019.

Amazon’s New Wake-Word Patent Application Raises Privacy Concerns

A recent patent application filed by Amazon has raised eyebrows and reignited debate about consumer privacy in relation to artificial intelligence (“AI”) assistants. One of Amazon’s latest patent applications covers a method for Amazon’s AI-assistant, “Alexa,” to start recording before the trigger or use of the device’s wake word.

What Are Wake Words for AI’s?

For those unfamiliar with AI-assistants, a “wake word” is the word that a user says to activate the AI-assistant. Typically, by default, AI-assistants are named by their respective companies and respond to their “names.” For example, iPhone users may be familiar with “Siri,” Microsoft users with “Cortana,” and Amazon users with “Alexa.”

Long before the technology was available, however, science fiction fans may have become familiar with wake words if they watched “Star Trek: The Next Generation” where Captain Jean-Luc Picard would use the wake word, “Computer” when he ordered his trademark “Earl Grey Tea, hot.”

Thus, the phrase “wake word” came about because the use of that particular word would “wake” the device from idle and tell it to begin “listening” to the user.

What’s New in Amazon’s Wake Word Patent Application?

With Amazon’s recent patent application, however, technology would allow users to use the “wake word” later in a sentence command. For instance, instead of saying “Alexa, play music,” the user would now be able to say, “Play music, Alexa.” While Amazon says this innovation is designed to allow users to “speak” to their AI-assistants more naturally, this new method also means that AI-assistants would potentially be recording much more of a user’s speech in order to listen for the wake word instead of the current method that only begins recording after the utterance of the wake word.

As privacy experts are already concerned with Amazon’s current practice of recording user’s speech and sending it back to Amazon servers without the option to “opt-out” or delete such recordings, the technology disclosed in this new patent application would give Amazon’s Alexa the ability and opportunity to record more user data and speech. While Amazon has always argued that their recordings are used to better tune Alexa in relation to human speech, this new technology would arguably give Amazon even more reason to record lengthier portions of a consumer’s speech, even before addressing the AI-assistant with the wake word.

Read the full article here.

An Evolution of Google Artificial Intelligence: Virtual Assistant Privacy Concerns

In a separate announcement, much quieter than the heralding of Nest and Google Hardware Teams uniting, Google announced that it would no longer maintain the “Works with Nest” program by the end of this summer. And, as an alternative, Google announced that companies are welcome to join the “Works with Google Assistant” program, which allows companies to opt-in to support technology of Google’s AI virtual assistant. But, what are the privacy concerns involved?

Out of Nest and Into Google AI: The Cost to Consumers

Devices that previously were “Nest-compatible” must now be, in essence, “Google-compatible.” Further, Google has announced that in phasing out of Nest accounts, it would no longer allow the creation of new Nest accounts. Google further “strongly” encourages Nest users to migrate their pre-existing Nest accounts over to Google fully, because it is likely they could lose access to upcoming features and future technical support.

Google says that the decision to phase out of Nest accounts is business-centric because it would be costly and inefficient to support and maintain two separate account infrastructures. However, privacy experts and opponents of the merge heed caution of virtual assistant privacy concerns. Critics caution that the erosion of such account division is merely another veiled move of Google to collect more information on consumers through Google’s virtual assistant.

Find the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Darin M. Klemchuk 6/3/19 Darin M. Klemchuk 6/3/19

Weekly IP Buzz for the week ending May 31, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending May 31, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending May 31, 2019.

Copyright Woes are Over the Rainbow: Harold Arlen Estate Sues Tech Giants

The estate of famous composer Harold Arlen, composer of the classic “Over the Rainbow,” has sued multiple technology giants over alleged unauthorized recordings of Arlen’s compositions. In the copyright infringement lawsuit, the Arlen estate claims that there are over 6,000 unauthorized recordings of Arlen’s compositions streaming or for sale on platforms provided by Apple, Amazon, Microsoft, and Google.

Arlen Estate Files Copyright Infringement Lawsuit in California

Filed in California’s Central District Court, the lawsuit alleges that the unauthorized streaming and sale of Arlen’s compositions amount to massive piracy and, as such, the estate of Arlen is entitled to millions of dollars in damages. The Arlen estate is asking for maximum statutory damages under U.S. copyright law, claiming that the infringement has been willful.

At the heart of the case, Arlen’s estate argues that the technology giants’ unauthorized distribution of the copyright works has cheated the Arlen estate out of royalties that should be paid whenever the copyrighted work is copied and distributed on sound recordings. Specifically, Arlen’s estate argues that the “distribution” of the work now also encompasses streaming and digital downloads, in addition to the traditional distribution of works on physical mediums like CDs or vinyl records.

The Arlen Estate Focuses on Infringement Claimed to be Caused by Tech Giants

The rapid innovation of technology plays a particularly relevant role in this lawsuit as it has generally been the impetus behind such rapid unauthorized distribution of Arlen’s works. For example, the Arlen estate points out that Apple’s iTunes store not only sells the official recording of one of Arlen’s compositions, which would rightfully compensate the estate, but also sells an undercutting illegal version of the song at a lower price, effectively deterring consumers from purchasing the authorized, official version that would rightfully compensate Arlen’s estate.

While the consumer that purchases the unauthorized recording is arguably also infringing upon Arlen’s works, the Arlen estate chose to go after the technology giants, because metadata on the works is generally difficult to find, making it hard for consumers to correctly determine whether they are purchasing an authorized version or an illegal copy.

Read the full article here.

A New Business Strategy for Copyright Owners: Filing Suit for Copyright Infringement

registration-required-suit-for-copyright-infringement.jpeg

**What the Supreme Court’s Fourth Estate v. Wall-Street Ruling Means for Businesses**

On Monday March 4th, 2019, the Supreme Court ruled that a copyright owner cannot file suit for copyright infringement until the work in dispute has been granted a copyright registration by the U.S. Copyright Office. This ruling is significant because in many areas of the country—including Texas and California—a copyright owner could bring suit for copyright infringement immediately upon filing an application for registration. Now, a copyright owner must have a registration in hand before running to the courthouse.

What this means for copyright owners is that they need to be more proactive in seeking registrations for their works. In the time it takes to get a registration—right now about seven months—an infringer could divert sales away from the legitimate owner of an otherwise protected work at the most critical time after entry into market. And while the Copyright Office does have a mechanism in place to expedite registrations within weeks for an additional special handling fee of $800, that process may begin to take longer as a result of increased volume due to this ruling. A copyright owner is still entitled to damages for past infringements but cannot file suit for copyright infringement or seek an injunction to stop infringing acts until it has the registration in hand.

Find the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Darin M. Klemchuk 5/27/19 Darin M. Klemchuk 5/27/19

Weekly IP Buzz for the week ending May 24, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending May 24, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending May 24, 2019.

An Evolution of Google Artificial Intelligence: Virtual Assistant Privacy Concerns

Out of Nest and Into Google AI: The Cost to Consumers

The Virtual Assistant Privacy Concerns Increase as AI Integrates into Daily Technology

Some experts similarly point to the further entrenchment and integration of AI virtual assistants into consumer’s daily lives, noting that AI-compatible devices or systems are no longer limited to smartphones or computers but now also include refrigerators, security cameras and even cars. For example, the latest commercials running for the 2019 line up of Toyota cars all boast that they are compatible with Amazon’s AI virtual assistant “Alexa.” With such integration, wanted or not, virtual assistant privacy concerns become prevalent to consumers.

Read the full article here.

FaceTime Bug Creates “HearTime” Allowing Eavesdropping

As technology evolves allowing for easier methods to communicate, so does the concern for privacy with continued findings of loopholes, bugs, and coding errors. On the heels of Facebook’s last privacy breach, Apple has come to the forefront in news for their FaceTime bug.

Consumers Allegedly Brought the FaceTime Bug to Apple’s Attention, Getting No Response

An apparently loophole in the Group FaceTime function allows a caller to listen in on a call recipient’s conversation even if they don’t answer the call. The iPhone microphone enabled a caller to listen in on the call receiver’s conversation during ring mode as well as allowed the viewing of video through the recipient’s phone camera. Claims have been made by consumers of reporting the issue to Apple support, via various methods, receiving no helpful response.

While the window for “listing in” or eavesdropping on a recipient may be small, the bug has created significant consumer privacy concerns. So far, at least one lawsuit is known to have been filed against Apple by an attorney claiming the FaceTime bug allowed for the recording of a private deposition. Apple’s acknowledgement of the issue on January 28th came after the reporting of the FaceTime bug on 9to5mac.com.

Find the full article here.

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For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk 5/20/19 Darin M. Klemchuk 5/20/19

Weekly IP Buzz for the week ending May 17, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending May 17, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending May 17, 2019.

Europe’s Copyright Directive: Article 17 | Shifting the Burden on Policing

Recently we discussed the implications of EU’s Copyright Directive, Article 13. We now discuss the directive further delving into Article 17.

It appears the European Union intends to be at the forefront of intellectual property law innovation through Article 17, another controversial new copyright directive intended to standardize copyright law among European Union member nations.

Article 17 of the Copyright Directive is an amendment that shifts the burden of copyright infringement policing from copyright owners to the streaming platforms on which the works are uploaded. The Copyright Directive’s Article 17 was originally voted upon in 2006, but has now received renewed attention as it approaches the final stages of implementation by the European Union member nations.

Advocate Opinion on Copyright Directive Article 17

While proponents of Article 17 state that the amendment to the Copyright Directive is intended to help protect content creators and allow them to better monetize their works, critics note that the implementation of Article 17 may result in pushing out smaller players. As an example, YouTube has an estimated whopping 300 hours of video being uploaded every minute. Experts in the field note that placing the onus on YouTube to monitor such uploading activity would most likely have to result in the implementation of automated filters to check for copyright infringement. It has been noted in recent news, regarding YouTube itself, that automated filters can have major flaws.

Critical Opinion on EU’s Article 17 of the Copyright Directive

Since it is known that such automated filters are rarely on point and often cannot distinguish original content or fair use of content (e.g., parody or critique of a work from the original work) from infringing content, other experts believe that the end result of Article 17 will be self-defeating.

Moreover, critics of Article 17 of the Copyright Directive also note that smaller platforms and other startups that want to compete with platforms such as YouTube, Facebook, and Twitter will have much more difficulty doing so against such giants, if they cannot afford to implement time consuming review and policing measures, or to pay for the creation of automated filters or other similar procedures that are sure to be costly and potentially deterrent for smaller companies to attempt to do business in the same space.

Read the full article here.

Europe’s Directive on Copyright in the Digital Single Market: Article 13

The European Union has made news again by passing a new comprehensive intellectual property directive that may have big impact on copyright law across the globe. In this blog post, we discuss the most highly-debated portion of the directive, Article 13, which has critics claiming that the directive will have a chilling effect on content creators online and cost hosting sites millions annually in regulation.

A Discussion on the Directive and Article 13

The European Union Directive on Copyright in the Digital Single Market is a directive from the European Union that sets limits for how copyrighted works may be shared online. Unlike actual law or legislation, European Union directives are objectives that European Union regulators believe that member states of the European Union should strive to meet but are not necessarily required to do so.

Article 13, the most controversial section of the directive, requires online web platforms to both filter and/or remove any copyrighted material from their services or websites. As such, this initiative would make a plethora of website and online services, such as YouTube or Tumblr, liable for copyright infringement from simply hosting copyrighted material that users upload. Because the speed at which users upload copyrighted material onto hosting websites is arguably impossible to police, this would open hosting websites to copyright violations they previously were not held responsible for.

Find the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk 5/13/19 Darin M. Klemchuk 5/13/19

Weekly IP Buzz for the week ending May 10, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending May 10, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending May 10, 2019.

Social Media As An Evidence Tool: Uncovering Fraud With Social Media Technology

Unknowingly, the children of wealthy parents have been unwittingly providing evidence against their parents through social media platforms when posting photographs of their luxurious lifestyles online. It has not been uncommon for some of the super-wealthy and affluent to attempt to hide assets from taxation and government scrutiny by bookkeeping trickery or simply moving assets overseas. While some families choose to significantly underreport their earnings or assets in order to avoid paying high amounts of taxes, their lies have become increasingly exposed through social media as an evidence tool.

Fraud Investigators Increasingly Look to Social Media for Uncovering Evidence of Fraud

Fraud investigators report they have been able to use social media technology as evidence to prove the hiding of assets. While many perpetrators (i.e., parents) are not themselves on social media platforms, their children often post daily, or even hourly, on platforms such as Instagram, Facebook, and Twitter. These posts that often include photographs of extravagant vacation resorts, expensive cars, or even stacks of cash can now be used as evidence against people intending to hide such wealth.

Recent studies in the field revealed utilizing social media as an evidence tool now comprises up to 75 percent of evidence used in such litigation cases. For example, in one debt recovery case where a man claimed to have no assets for repayment had his lies revealed when one of his children posted a photograph of the family’s $22 million yacht while vacationing in the Bahamas.

Geolocation Technology in Social Media Acts As Tool For Evidence Discovery

In many of these cases, investigators also use the geolocation of where the posts to social media were made to help build their cases. Investigators have been able to find significant amounts of unreported assets and money by cross-referencing social media posts with land registries overseas. With such specific evidence turned over to the courts, these assets that previously were often concealed overseas can now often be found with specificity.

Investigators have also been able to use such posts to build up profiles on not only the intended targets but on their associates as well. More specifically, because the like-minded perpetrators often run in the same social circles, investigators have been able to use social network posts to catch associates or build parallel profiles on targets that have been under the same scrutiny.

Social Media As An Evidence Tool To Catch Hackers

Investigators have also been able to use social media posts to track down hackers of social media accounts and protect or recover the assets of those being hacked. Information disseminated in social media can often leave hints for hackers to strike. Wealthy families that have fallen victim to hackers being able to guess or crack passwords to their social media accounts have also been able to use investigators to track down hackers based on fake social media posts.

How Will Innovations in Social Media Technology Influence Evidence Gathering for Fraud?

As technology continues to evolve and new innovations are created in how information is dispersed in social media, we can expect that investigators will be able to use such social media tools as evidence with increasing efficiency and speed. Intellectual property attorneys also often use social media to identify, track down, and or prove IP infringement.

Read the full article here.

The Digital Black Market and Dropgangs: The Evolution With Technology

In today’s age of Internet and innovation, it comes as no surprise that new technologies are also being used for more nefarious reasons. For example, with the rapid innovation of wireless technologies, mobile applications, and the Internet of Things, experts have now also seen the reemergence of the digital black market.

What is the Digital Black Market?

While the black market has always existed on the Internet in some form or fashion, the most infamous presence of the black market on the Internet was what many referred to as the “dark web” or “dark net,” which usually meant a website hosted on untraceable and anonymous networks like Tor or l2P. This digital black market would offer digital access and allow digital purchasing of illicit products and services that many would not dare to attempt to procure in the real world. The dark web offered for sale both goods and services that would include, for example, stolen and pirated software, pornography, drugs, pharmaceutical pills, false identification papers, and even firearms or assault weapons.

While the dark web websites were usually quite basic and fundamental in appearance, they all still had the requisite functionality important to any Internet web-market portal such as infrastructure that supported private communications, buyer/seller reputation tracking, and sophisticated escrow services for payment, and forums in which both merchants and buyers could contact and communicate with each other. At the same time, having such a centralized web portal often made these black markets the target of sting operations and law enforcement takedowns.

How Tech and Crypto Helped Revamp the Digital Black Market

With the explosion of cryptocurrency and mobile applications, however, the digital black market has reinvented itself. Now, merchants are able to use more decentralized technology to operate invite-only transactions through mobile messaging programs like Telegram. If the buyer becomes a repeat customer, they can be given different and unique messaging contacts that are different for each purchase and never tied to shared, permanent channels, which make these transactions much less vulnerable to law enforcement takedowns.

Find the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk 5/6/19 Darin M. Klemchuk 5/6/19

Weekly IP Buzz for the week ending May 3, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending May 3, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending May 3, 2019.

How Far Can a Brand Commercialize Contracted Works? | Scope of Copyright

scope-of-copyright-agreement-fresh-step-cats-on-glass.jpeg

New questions were recently uncovered concerning how far a brand can go when it comes to reusing copyrighted works they contracted for use from a third party. What’s the real scope of copyright works?

Photographer Claims Her Work of Cats on Glass for Fresh Step Taken Outside of Scope of Copyright Agreement

In a copyright infringement claim, photographer Jill Greenberg alleges that McGarryBowen and Clorox Company went far beyond the scope of copyright work contracted for when they hired her to shoot photographs of five cats on glass to play off a popular social-media meme for use in advertising under their Fresh Step kitty litter brand.

While Greenberg was compensated for the portraits she shot of the cats, Greenberg alleges that despite a provision that specifically excludes the right to video use, her copyrighted work ended up on local TV news broadcasts, the “Ellen” show, and a number of other viral video uses on the Internet that came about as a deliberate result of the defendants’ actions. Per the scope of the copyright agreement, Greenberg claims these are unauthorized uses of her work.

Scope of Copyright Use Blown Out of Boundaries of Agreement Provisions

Additionally, Greenberg alleges that the defendants also used her work in pop-up galleries that promoted adoption of shelter cats, which again went beyond the scope of the contracted copyright agreement. Specifically, Greenberg noted in her complaint that she was neither contacted nor invited when her work was hung and promoted in these New York and Los Angeles galleries. Greenberg also complains that McGarryBowen and Clorox’s use of her work went beyond the scope of the copyright agreement when they further paid social media influencers to post videos they had taken of Greenberg’s work while it was hung in the Los Angeles and New York galleries.

Lastly, Greenberg alleges that the scope of the copyright agreement did not cover use for allowing her work to become downloadable art, photographs, and mobile wallpaper on devices in connection with Fresh Step’s Paw Points loyalty program. In this aspect, she alleges that this unauthorized use is comparable to selling her work as merchandise.

In response, the defendants have so far declined to comment nor have they taken steps to remove the contested uses despite multiple discussions between the parties as well as a cease-and-desist letters sent in November.

Read the full article here.

Amazon’s Anti-Counterfeiting Tools

Find the full article here.

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For more posts, see our Intellectual Property Law Blog.

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Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Darin M. Klemchuk 4/9/19 Darin M. Klemchuk 4/9/19

Weekly IP Buzz for the week ending April 5, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending April 5, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending April 5, 2019.

Anheuser-Busch Utilizes SLAPP Lawsuit to Protect Trade Secrets

A recent case pending in the Ninth Circuit has drawn attention again to how courts will analyze the divulgence of trade secrets in relation to California’s Strategic Lawsuit Against Public Participation (“SLAPP”) statute. SLAPP lawsuits are generally civil complaints or counterclaims, against either individuals or companies, that argue that the injury came as a result of exercising free speech under the First Amendment.

SLAPP Lawsuits Aim to Chill Public Debate

Usually SLAPP claims are brought by against individuals or organizations over public issues and are often based on civil torts. Many experts in the field argue that the principal purpose of a SLAPP suit is to chill public debate over the specific topic at hand because defending against a SLAPP requires significant amounts of time, money, and legal resources. As such, defendants are often dissuaded from pursuing the legal action.

In the case at hand, Anheuser-Busch had filed a SLAPP lawsuit against former employee James A. Clark (“Clark”) for allegedly releasing trade secret information that was eventually used against Anheuser-Busch in a class action lawsuit. Specifically, the case at hand focuses on Anheuser-Busch’s brewing processes, which they have classified as trade secret and were detailed in a document referred to internally as “Page 13.” Anheuser-Busch argues that Clark’s reveal of the processes eventually led to the class action against Anheuser-Busch over allegations that the alcoholic content of Anheuser-Busch’s products is overstated.

Read the full article here.

Cybersquatting Causes Record High for WIPO Cases Filed

2018 was a record-setting year for the World Intellectual Property Organization (“WIPO”) as the number of Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) filings hit a new high. WIPO expects the trend of growing WIPO cases filed to continue as brands attempt to comply with the European Union’s General Data Protection Regulation (“GDPR”).

According to the WIPO, a new record high of 3,447 complaints were filed with the WIPO in 2018, marking a 12% increase from 2017. Interestingly, the number of contested domain names, however, was down 11% from 2017.

Factors Affecting WIPO Cases Filed

WIPO believes there are several factors responsible for the jump in number of domain/WIPO cases filed for arbitration. WIPO believes that the chief reason to be the dismantling of WHOIS. WHOIS was a free service provided by Internet Corporation for Assigned Names and Numbers (“ICANN”) that allowed the public to search Internet registrar directories to find out the contact, ownership, and technical information connected to a registered domain.

Despite many objections to the removal of WHOIS, the rollout of the European Union’s GDPR in May of 2018 basically brought down WHOIS because of its more stringent privacy requirements. Even though WIPO had asked for a year to figure out how to reconfigure WHOIS in a way that could meet the conditions of the GDPR, the European Union declined to give WIPO such time and, as a result, ICANN’s WHOIS went dark.

Find the full article here.

Click to read the previous Weekly IP Buzz.

For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk 3/25/19 Darin M. Klemchuk 3/25/19

Weekly IP Buzz for the week ending March 22, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending March 22, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending March 22, 2019.

Taking Adequate Steps for Company Secrets to Qualify as Trade Secrets

Most companies, whether aware of it or not, have trade secrets. While the general public may think that only certain famous recipes like Coca-Cola’s recipe for soda or KFC’s recipe for fried chicken qualify as trade secrets, the reality is that much more mundane items like customer lists or other proprietary information may also count as trade secrets.

Because the general rule of thumb is that trade secrets are only trade secrets for as long as they remain secret, many companies mistakenly think that simply marking information as “confidential” or retroactively labeling it as “trade secrets” will be enough to satisfy a court’s inquiry.

When trade secrets become the focus of litigation, courts will often look at many factors to determine whether or not the information at hand truly qualify as trade secrets. For example, in a recent federal opinion, Abrasic 90 Inc., d/b/a/ CGW Camel Grinding Wheels, USA v. Weldcote Metals, Inc., Joseph O’Mera and Colleen Cervencik, the court stated that there are at least two factors that will be considered when determining whether the contested materials are indeed trade secrets.

Read the full article here.

Section 301 Tariffs: USTR Releases Second Set of Exclusions

On Wednesday, March 20, 2019, the United States Trade Representative (USTR) office released a second round to the Section 301 Tariffs List 1 products from China that are currently subject to a 25% tariff.

These exclusions are available for any product that meets the description in the official notice, regardless of whether the importer filed an exclusion request. If you import these products, you may be able to claim an exclusion using HTS number 9903.88.06.

For earlier entries, retroactive refunds of the Section 301 tariffs are not automatic. Importers must request a post-summary correction for eligible entries made subsequent to July 6, 2018 (or file a protest if the entry has already liquidated).

Here is a link to the USTR post: Notice of Product Exclusions

For more information on Jim Chester and the Klemchuk LLP international business and trade practice, please click here.

Click to read the previous Weekly IP Buzz. View on LinkedIn.

For more posts, see our Intellectual Property Law Blog.

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Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Darin M. Klemchuk 3/19/19 Darin M. Klemchuk 3/19/19

Weekly IP Buzz for the week ending March 15, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending March 15, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending March 15, 2019.

City Edition Jerseys: NBA Accused of Copyright & Trade Dress Infringement

The National Basketball Association (“NBA”) has been accused of multiple counts of intellectual property infringement by a New York based clothing line. Coogi, a well-known sweater brand has taken issue with NBA uniforms that debuted last year and has filed copyright, trade dress, and trademark infringement claims against the NBA for “City Edition” jerseys worn by the Brooklyn Nets.

Coogi, a clothing brand that markets colorful, knit sweaters that have bold stripes, patterns, and linework, claims that the Brooklyn Nets’ City Edition jersey uses nearly identical prints that are showcased in Coogi’s sweaters. For example, Coogi claims that last year’s City Edition jersey takes specific patterns from the Coogi line such as “Ricotta” and “Pea Soup” and incorporates it into the border and fringes of the Nets’ basketball jerseys

In the suit, Coogi explains how its colorful knit patterns are representative of Brooklyn culture. Colorful knitwear sweaters like Coogi’s were made iconic by Bill Cosby during his television series run and the knitwear became even more associated with Brooklyn when late Brooklyn rap-star, Notorious B.I.G., also known as Biggie Smalls (“Biggie”), stated he was an avid fan of the Coogi line, even going as far as to reference the sweater brand in one of his songs. Thus, Coogi argues that when the Brooklyn Nets introduced their City Edition jerseys and called them “Biggie-inspired,” the NBA purposely used the designs to trade off of Coogi’s proprietary designs.

In its complaint, Coogi further asserts that the designs are protected by copyright and trade dress law. Specifically, Coogi asserts in its trade dress complaint that its specific colorful vertical cables, sections, and intricate designs serve essentially serve the same function as Coogi’s brand or logo would. Coogi argues that the patterns have become so recognizable in connection with its brand that the Brooklyn Nets knew exactly what they were doing when releasing the City Edition jerseys.

The NBA, however, has pushed back. The NBA argues that the jerseys are not similar to Coogi’s line of sweaters. In support of this argument, the NBA has noted that the jerseys’ stripe colors, positioning, and direction are all different.

While the standard to find copyright and trademark liability are different, with copyright infringement requiring substantial similarity and trademark infringement requiring likelihood of consumer confusion, it will be interesting to see whether the NBA settles or is able to successfully navigate its way out of Coogi’s claims.

Copyright Infringement of Dance Moves in Video Games

Last year’s video game market was dominated by Epic Games’s battle-royale sensation, Fortnite. The game combines elements of building defensive fortifications with third-person shooter elements to create an environment where players basically compete in a cartoonish free-for-all that ends with only one player declared to have achieved “Victory Royale.” However, the game’s dance moves have brought up the question of copyright infringement.

While Fortnite has achieved considerable success and broken many video game records, it also has broken new ground in intellectual property litigation, specifically in copyright litigation. While Fortnite is a free-to-play game, it does offer a number of “premium” options for which players can pay real money. Among some of these premium or cosmetic options is the ability to buy specific dances for the player’s character or avatar. When choosing which dances to incorporate into Fortnite, Epic Games decided to include dances that would appeal to the player base, and as such, programmed in dances that were taken from mainstream, popular culture.

Because these dances, however, have come to be largely associated with the specific characters or celebrities that perform them, Epic Games has found itself in the middle of a flurry of new litigation. While the choreography and public performance of dances have long been recognizable as copyrightable, whether the dances depicted in Fortnite are subject to copyright is hotly contested by both sides.

Read the full article here.

Click to read the previous Weekly IP Buzz. View on LinkedIn.

For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk 3/11/19 Darin M. Klemchuk 3/11/19

Weekly IP Buzz for the week ending March 8, 2019

A summary of interesting developments in intellectual property, technology, social media, and Internet law for week ending March 8, 2019.

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending March 8, 2019.

A New Business Strategy for Copyright Owners: Filing Suit for Copyright Infringement

What the Supreme Court’s Fourth Estate v. Wall-Street Ruling Means for Businesses

Read the full article here.

Supreme Court to Decide Trademark Licensee Rights in Bankruptcy Suit

Trademark License Thrown Out in Bankruptcy

Tempnology, however, ended up filing for bankruptcy. In the bankruptcy estate proceedings, the trustee chose to reject the trademark license agreement, relying on Section 365(a) of U.S. Bankruptcy Code, which gives trustees the power to refuse to honor executory contracts. By contrast, Mission argues that the licensing agreement should fall under the many bankruptcy statutory exceptions included in Section 365(a) that allows specific types of contracts to retain specific rights to be exercised. In this case, Mission is liking to draw comparison to courts having allowed patent license rights to be exercised. Tempnology, however, may point out that Congress had, at one point, specifically considered whether to include trademark licenses under the allowable exceptions but ultimately chose not to do so.

Before the Supreme Court, Mission is expected to argue that Tempnology’s rejection and bankruptcy filing should not qualify as legal termination of all existing licensing rights in the agreement. While the lower district courts have ruled in Tempnology’s favor, the Supreme Court has agreed to review the trademark licensing aspects of the suit and hear arguments this week.

Intellectual property attorneys are closely following the case, and amicus briefs have already been filed by a number of high-profile intellectual property organizations.

Weekly IP Buzz for the week ending March 1, 2019

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending March 1, 2019.

Will Congress Follow California’s Data Privacy Legislation Lead?

Beginning in 2020, California consumers will have more control and say over how Internet companies share, sell, and use their data. Under Governor Jerry Brown, a new law slated to begin in 2020 promises that web users can demand that businesses disclose whatever personal information is collected about them and how that data is being used. Under the new data privacy legislation, California consumers will also have the option to tell the same companies to delete that personal data.

California’s Data Privacy Legislation

The California law also seeks to strengthen privacy protection for young children online. Parents and guardians will be required to give consent before any website, online service, or mobile application may begin selling children’s user data. Moreover, if consumers are able to demonstrate that companies failed to properly safeguard the sensitive, personal data of users, the law has provisions that allows consumers to use in case of such data breaches.

While California has been lauded for passing stricter data privacy legislation, many experts fear that the California law, as currently drafted, is too vague to be considered a good model for a national standard. While the federal government has stated that data privacy remains one of its top priorities, very little legislation and action has been taken on the Congress floor.

State Legislation on Data Privacy

To fill the void, many states have passed their own respective privacy laws, which has made the idea of drafting a federal law that accommodates the different patchwork of state laws an even more daunting task. Because states vary on how stringent their data privacy protection laws are, Congress must decide whether federal law will be more stringent than the strictest of state laws or more lenient in order to accommodate other state laws.

And as if this were not perplexing enough, many companies fear that, with also having to comply with the European Union’s passage of the General Data Protection Regulation (“GDPR”), having to accommodate, state, federal, and foreign law will end up bankrupting business.

EU Data Privacy Rules: Google Fined Millions as First Major GDPR Casualty

In February, France’s data protection agency, known as CNIL, fined Alphabet’s Google 50 million euros ($57 million) for breaching the European Union’s new online data privacy rules – the biggest such penalty levied against a U.S. tech company so far.

The penalty against Google was issued for alleged violations of the EU’s General Data Protection Regulation (GDPR), which went into force in May 2018. It allows users to better control their personal data and gives regulators the power to impose fines of up to 4 percent of global revenue for violations.

“GDPR represents a seismic shift in data privacy rules, requiring tech companies to be more transparent about data use, and giving individuals much more power over the collection and use of their data,” says Jim Chester, a global business and technology attorney and partner in Dallas-based technology boutique Klemchuk LLP.

“Although the industry has been aware of GDPR, it is such a fundamental and comprehensive change in how companies need to think about data privacy that many companies have struggled to adapt their policies – there is no clear ‘best practices’ blueprint for compliance,” Chester adds.

Find the full article here.

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Darin M. Klemchuk 1/5/18 Darin M. Klemchuk 1/5/18

Lessons from Urban Outfitters Willful Copyright Infringement Ruling

Avoiding willful copyright infringement

In April 2017, Urban Outfitters and Century 21 were found liable for willful copyright infringement of a fabric design owned by Unicolors, Inc. Unicolors has filed over 60 lawsuits to enforce its copyright registrations in its fabric designs. The trial court awarded $164,400 in damages and $366,910.17 in fees and costs. On appeal, the Ninth Circuit upheld the infringement ruling and agreed with the district court that the striking similarity between the registrations and the accused designs allowed the court to infer that Urban copied the design even thought there was no evidence of Urban having access to the design. Importantly, the Ninth Circuit rejected Urban Outfitters' argument that knowledge is a requirement of willful infringement, holding that reckless was sufficient.

Steps retailers can take that might reduce the risk of willful copyright infringement

The following provides some considerations retailers make take in handling disputes to potentially minimize the risk of a willful copyright infringement ruling:

In the fashion and fabric design industry, designers are often "inspired" by fabric swatches and material on the Internet as well as provided by third parties. Looking for copyright notices is a good step to take to become aware of third-party copyrights. Internal training on what is considered acceptable "inspiration" and design best practices is also a good step. Unlike trademarks and patents, copyright registrations are difficult to search, which makes it difficult for a retailer to complete a clearance search before selling a copyrightable design or product.
Retailers may want to consider outsourcing fabric and product design to third parties and use agreements that include representations and warranties that the third-party designer has appropriate permission for all deliverables. These agreements should also include uncapped indemnity provisions in the event of an infringement lawsuit.
If a cease and desist letter is received, the retailer should consider retaining experienced copyright litigation counsel and take appropriate action. Due to the difficulty in searching the U.S. Copyright Office website, verifying the owner of the alleged registered work as well as a copy of the registration specimen are common first steps in resolving a copyright dispute.

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In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charity devoted to changing the world one random act of kindness at a time. Click to read more about Darin Klemchuk's practice as an intellectual property lawyer.

Darin M. Klemchuk 1/5/18 Darin M. Klemchuk 1/5/18

Kirtsaeng v. Wiley: Attorney's Fees in Copyright Cases

Kirtsaeng v. Wiley, a Year Later -- Attorney's Fees in Copyright Cases

According to a recent article in Law360, "a year later, experts say the impact of the U.S. Supreme Court’s Kirtsaeng v. John Wiley ruling on attorneys' fees in copyright cases has been clarity and consistency, not a huge change in the ways courts are ruling." That decision was entered on June 9, 2016 and according to the article and the experts interviewed, the decision has not created a sea change in the way district courts are ruling on attorney's fees in copyright cases. Trial courts have focused on the reasonableness or lack of the losing party's position and have been less likely post-Kirtsaeng to award attorney's fees where a party maintained a reasonable position, even though they lost. In Johnson v. Storix, a federal judge in California held that while a losing plaintiff had an objectively reasonable position, he still had to pay attorney's fees.

Future of Attorney's Fees in Copyright Cases

Given the overall message of the Kirtsaeng decision that trial courts should apply their discretion in awarding attorney's fees in copyright cases on as case-by-case basis given the totality of the circumstances, it is not likely that there will be a radical change on how fees will be awarded in the future. However, it's only been a year since the Supreme Court decision, and trends may emerge as federal district courts apply the guidance.

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