March 12, 2015

By: Francis J. Ciaramella

 The song Blurred Lines by musical artists Robin Thicke and Pharrell Williams was the longest running number one single of 2013 in the United States.  Thicke and Williams claimed that their song was a homage to the 1977 song Got to Give It Up by Marvin Gaye.  The estate of Marvin Gaye was inclined to believe that Blurred Lines was more than a mere tribute.

 The litigation between the estate of Marvin Gaye, Robin Thicke, and Pharrell Williams began in August of 2013 when the Plaintiffs (Thicke and Williams) filed suit against the Gaye estate seeking a declaratory judgment that Blurred Lines does not infringe on the copyright to Got to Give It Up.  The Gaye estate counterclaimed, amongst numerous other copyright claims, that the Plaintiffs infringed on the copyright to Got to Give It Up.

 During trial, expert musicologist Judith Finell for the Defendant testified that “’a preliminary review comparing Give It Up and Blurred has revealed a constellation of eight substantially similar features…and that these similarities surpass the realm of generic coincidence, reaching to the very essence of each work.’”  Williams v. Bridgeport Music, Inc., 2014 WL 7877773 (C.D. Cal. 2014).  Plaintiffs’ expert musicologist Sandy Wilbur testified that there was no similarity.  Because of the disagreement between experts who examined the same musical pieces, the Court held that there was indeed a genuine issue of material fact, and that Plaintiffs’ Motion for Summary Judgment was improper.  This allowed the case to proceed to full jury trial.

 At trial, the jury had to determine whether Plaintiffs had indeed committed copyright infringement.  To establish copyright infringement, two matters must be established: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.”  Id.; Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).  Here, the constituent elements of the work (i.e., Got to Give It Up) were analyzed by the jury and compared against Blurred Lines, and included the following factors: signature phrases of both songs, hooks (i.e., memorable melodies), hooks with backup vocals, backup vocals, bass melodies, keyboard parts, percussion choices, harmonic similarity, melodic similarity, and overall structure.  Williams v. Bridgeport Music, Inc., 2014 WL 7877773 (C.D. Cal. 2014).

 Ultimately, the jury determined that both Robin Thicke and Pharrell Williams were liable for copyright infringement, having met the requisite elements.  On March 10, 2015, the jury awarded the Gaye estate $7.4 million in damages for copyright infringement.

 For additional information regarding copyrights and infringement, or if you have any other intellectual property law questions or concerns, please feel free to contact our office at the telephone number above.

March 6, 2015

By: Francis J. Ciaramella

Many times one person will hire another in order to draft a new piece of copyrightable work, whether it be musical, graphical, sculptural, etc.  However, should this new work become popular or valuable, a dispute will often arise as to who owns the original and its accompanying copyrights, such as the right to reproduce the original work.

Naturally, the one who commissioned the original work will leap to the conclusion that they own such rights.  Unsurprisingly, the hired person will quickly arrive at the opposite conclusion.  Who is ultimately right is a question of whether the work was created as a work made for hire.  If it is a work made for hire, then the person who commissioned the original work owns not only that work, but also the copyrights to that work.

Under section 101 of the U.S. Copyright Act, a work made for hire is defined as:

1. A work prepared by an employee within the scope of his or her employment; or
2. A work specially ordered or commissioned for use as a contribution to a collective work.

Unfortunately, this is often a question of fact, which will be the subject of vigorous debate.  At what point does a person become an employee for the purposes of copyright law?  Courts have looked to the degree of control that the hiring person exercises over the hired person:

1. Does the hiring party retain any right to control the finished product?
2. Does the hiring party actually wield any control with respect to the creation of the work?
3. Does a principal-agency relationship exist between the parties?
4. Is the hired person a formal salaried employee of the hiring person?

Fortunately, there is an alternative to involving oneself in expensive litigation to determine the answer to this question.  Contracts involving the creation of copyrightable subject matter can be carefully drafted to make sure such copyrightable works either vest to the hiring party, or to the hired party.

For additional information regarding copyrights and works made for hire, or if you have any other intellectual property law questions or concerns, please feel free to contact our office at the telephone number above.

March 3, 2015

What is a trademark?

 Any word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others may act as a trademark.  Even a color or a sound may act as a a trademark.  A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.  The term “trademark” and “mark” may be used to refer to both trademarks and service marks, whether they are word marks or other types of marks.  Normally, a mark for goods appears on the product or on its packaging or labels, while a service mark appears in advertising for the services.  One should not confuse a mark with a tradename or tradedess, which may be protected under the common law but cannot be registered.

 A trademark is different from a copyright or a patent.  A copyright protects an original artistic or literary work;  a patent protects an invention or a design.

 How does one establish trademark rights?

 Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the United States Patent and Trademark Office (USPTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress.  Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark.  However, federal registration can secure benefits beyond the rights acquired by merely using the mark.  For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, is entitled to use the mark nationwide, and enjoys constructive use, and therefore priority, nationwide.

Trademark rights are largely territorial.  Neither use nor registration in another country provides rights in the U.S., or viceversa, except for certain privileges provided by international treaties.

 There are two related but distinct types of rights in a mark:  the right to register and the right to use.  Generally, the first party who either uses a mark in commerce or files and application in the USPTO has the ultimate right to register that mark.  The USPTO’s authority is limited to determining whether a mark is entitled to registration.  This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration.  Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement.  In this and other situations, a federal registration can provide significant advantages to a party involved in a court proceeding.  The USPTO does not provide advice concerning rights in a mark.  Only a private attorney can provide such advice.

 Does incorporation provide trademark rights?

 The Florida Administrative Code explicitly warns that “the filing of any corporate entity is only a grant of authority to use such a name and does not include the adjudication of the legality of such use.”  Therefore, incorporation by the state of Florida (or other states) is not a valid defense to tradename, trademark, or service mark infringement, unfair competition, or anti-dilution claims.  To protect one’s rights, or to prevent possible actions against one by other parties claiming trademark rights, it is not sufficient to check the availability of a corporate name or to register such name.

 How does one obtain a registration of a mark?

 The first step is to analyze the type of proposed mark.  Generic marks are never registrable.  Descriptive marks may be registrable in the Supplemental Register.  Suggestive or arbitrary marks are registrable in the Principal Register.  While a Supplemental Register registration does not provide all the protection of a registration in the Principal Register, it offers several advantages.  A qualified attorney should be consulted in this regard.

 The second step is to conduct availability searches.  Although the USPTO maintains a public database of registered, pending, and inactive marks, it is wise to use the more sophisticated search queries that are possible only in proprietary databases.  Often, a mark’s availability is not a black or white issue.  Subjective elements enter into the evaluation of a mark by a trademark examiner.  Sometimes a mark may pass the three tests of likelihood of confusion, “sight,” “sound,” and “commercial impression,” at the level of the USPTO, but a risk may exist that a senior user will oppose registration, petition to cancel it, or otherwise litigate the matter.  Again, a qualified attorney can offer advice in this regard.

Assuming the mark is available or the applicant is willing to run certain risks, the next step is to file papers with the USPTO, including a power of attorney, a declaration, an application form and a trademark drawing.  In the case of a work mark, the drawing is simple.  In the case of a design, the services of a trademark draftsman may be required.  A filing fee is required for each international class applied for.  Which international classes to apply for is a matter for the client to decide, taking into account the desired description of goods or services and the advice of the attorney.

 After the filing of the application papers, a trademark examiner reviews the file and renders a decision.  Often  the examiner will ask for disclaimers, restatements of the description of goods or services, or other changes to the original application.  If everything goes smoothly, a registration will issue in about a year.  The priority date, however, is established as of the date when the application is filed.

 It is possible to file an application on the basis of intent to use.  A registration will not issue, however, until the applicant can show that the mark has been actually used.

For additional information regarding trademarks or if you have any other intellectual property law questions or concerns, please feel free to contact our office at the telephone number above. 

February 26, 2015

By: Francis J. Ciaramella

 Recently, in the case of Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), the Federal Circuit invalidated a patent on the basis that it was an attempt to patent illegible subject matter.  Digitech was the owner of a patent, which directed the generation and use of a so-called “improved device profile” that describes spatial and color properties of a subject within a digital image processing system.

 Digital image processing requires two items.  First, that a source device (like a digital camera), take a picture or video of the subject. Second, this information is then sent to an output device (like a printer).  According to Digitech’s patent, all digital source devices impose a level of distortion on the subject’s color and spatial properties because the source devices each individually allow for different ranges of colors and spatial information to be perceived.  Essentially, a Canon brand camera may interpret a subject slightly differently than a Sony brand camera.  Thus, the image produced is different (even if the specifications of the cameras are otherwise identical).

 “Device dependent solutions” work to calibrate the color and spatial properties on the source devices (i.e., cameras) themselves.  “Device independent solutions” work to translate an image’s pixel data from the original source device into a set format, which can then be distributed to any output device.

 Digitech’s patent worked to capture color information, and create “device profiles” that describe color properties of both the source and output devices, thus allowing for more accurate translations of the subject’s pixel data into independent color.

 Digitech filed infringement suits against 32 defendants.  The defendants filed summary judgment motions alleging that the claims of the patent were ineligible subject matter.  The district court granted these motions, citing that the information collected in these “device profiles” was intangible, and that the claims of the patent encompass an abstract idea not tied to a specific and tangible machine or apparatus.

 In affirming the trial court, the Federal Circuit held that the “device profiles” assembled and claimed by Digitech’s patent were subject matter ineligible.  Pursuant to section 101, an inventor may obtain a patent for “any new and useful process, machine, manufacture, or composition of mater, or any new and useful improvement thereof.”  35 U.S.C. § 101.  The “device profiles” created by Digitech were not a tangible or physical thing, and thus were not eligible subject matter.

 Even though the patent also had method claims that were based on an abstract idea, the patent was still invalid as to subject matter because the claims of the patent merely combined two data sets (i.e., color and spatial data) into a single data set to be used by output devices.  Consequently, the “device profiles” are nothing more than a rearrangement of measured chromatic and spatial stimuli that is reassembled without a claimed physical or mechanical device (in fact, not such device was claimed in the patent).

 Since, the “device profiles” functioned to merely capture sets of data describing color and space, and because the patent did not direct to any tangible embodiment of this information, the claims of the patent are directed to information in its non-tangible form and are thus not patentable.

 The Federal Circuit points out quite succinctly, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”  Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).

 If you have any questions regarding patents, trademarks, and copyright law, including patentable subject matter, please feel free to contact us at the telephone number above.

February 12, 2015

By:  Jennifer C. Ruz

The Foreign Account Tax Compliance Act, better known as “FATCA,” was enacted as part of the United States’ effort to combat tax evasion, specifically by U.S. persons hiding taxable funds in offshore accounts.  Part of the requirements of FATCA have already been in place for a few years, primarily the requirement for U.S. individuals with foreign financial assets to report those assets on a Form 8938, Statement of Specified Foreign Financial Assets, which is attached to their individual income tax return.  Beginning now in 2015, foreign financial institutions (a new term of art under the Internal Revenue Code and treasury regulations thereunder), will also have to report information directly to the IRS regarding foreign financial accounts held directly or indirectly by U.S. persons.  The failure to comply with these new reporting requirements is an additional 30% withholding on any “withholdable payment.”

So, now that FATCA is here, what does that mean for you?  Generally, a foreign person (juridical or otherwise) must determine its classification under FATCA and provide any required withholding forms to requesting foreign financial institutions.  These withholding forms are, generally, Forms W-8BEN, W-8BEN-E, W-8IMY, W-9, etc.  Additionally, certain foreign juridical entities (i.e., corporations, partnerships, trusts), may also need to determine their reporting requirements under FATCA.  They must ask themselves, first, what is their classification, and second, what does not classification require them to report, if anything, to the IRS, and whether they otherwise need to register or enter into any agreements directly with the IRS.  Additionally, they also need to determine what information, if any, they must request from their direct and indirect owners.

These questions are complicated, and require analysis, not only of the FATCA regulations, but also if any applicable Inter-Government Agreement (“IGA”), and its impact on the above questions.   If you have an interest in a foreign corporation, partnership, or trust, or are otherwise being requested from a foreign entity to complete a U.S. withholding form, you should be thinking about FATCA and how it applies to you.  The cost to the unwary is a potential 30% withholding, which may be avoided by simply providing the correct disclosures.  For help with your FATCA needs, contact Jennifer Ruz at (305) 921-9326.

January 15, 2015

Section 2(a) of the Trademark Act provides that the USPTO may refuse an application when the trademark “[c]onsists of or comprises ... matter which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” 15 U.S.C. § 1052(a).

The court’s determination of whether a mark is disparaging in violation of section 2(a) of the Trademark Action involves a two prong analysis.  The first prong of the disparagement test determines “the likely meaning of the matter in question.”  The second prong of the disparagement inquiry asks whether the likely meaning identified in prong one “is found to refer to identifiable persons, institutions, beliefs or national symbols,” and if so, whether that meaning “may be disparaging to a substantial composite of the referenced group.” In re Lebanese Arak Corp., 94 U.S.P.Q.2d at 1217.

In the recent case of In re Geller, 751 F. 3d 1355 (Fed. Cir. 2014) The Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“TTAB”) refusal to register the mark STOP THE ISLAMISATION OF AMERICA in connection with “[p]roviding information regarding understanding and preventing terrorism.”  The Federal Circuit affirmed the TTAB’s finding that the mark contained matter that was likely to be disparaging to members of the Muslim religion in violation of section 2(a) of the Trademark Act.

January 13, 2015
 
By: Francis J. Ciaramella

Section 103(a) denies patentability “if the difference between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”

Recently, in the case of MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 110 U.S.P.Q.2d 1235 (Fed. Cir. 2014), the Federal Circuit rejected a patent for Football jerseys made for pets as obvious.  Mark Cohen licensed an original patent for pet jerseys to Hunter Manufacturing.  Hunter then sold the Football-inspired pet jerseys to third party retailers via licensing agreements with organizations like the National Football League.

 Subsequently, Cohen redesigned his pet jersey into a new form.  Not wanting to do business with Hunter, due to lack of prompt payments, Cohen entered into business with MRC Innovations.  Cohen then assigned his rights in both the original patent as well as the redesigned patent.

 Hunter, nevertheless, contracted with another manufacturing company to produce the redesigned pet jerseys, and again sold them to third party retailers with football teams names and logos emblazoned on the jerseys.

 MRC sued Hunter for patent infringement.  The Federal Court held that the redesigned pet jersey patent had basically the same overall visual impression as the prior art (i.e. original pet jersey and its patent) having similar shape, fabric, and stitching.  The Court further found that a person of ordinary skill would have combined the teachings of the prior pet jersey patent to create the same overall visual appearance as in the claimed redesigned pet jersey patent.

 The Court used a two-part test to determine whether the redesign patent failed for obviousness.  First, whether there was prior art, and second, whether there were secondary references that could be used to modify the original to create the same basic visual appearance as was claimed in the redesigned patent.

 In affirming the trial court, the Federal Circuit held that the original pet jersey and its patent were prior art, and that secondary references present in the marketplace, made the redesign of the original pet jersey patent obvious.  Accordingly, the redesigned pet jersey patent was invalidated for being obvious.

 If you have any questions regarding patents, trademarks, and copyright law, including patent’s non-obviousness requirement, please feel free to contact us at the telephone number above.

October 25, 2013

The U.S. Food and Drug Administration today issued a proposed rule under the FDA Food Safety Modernization Act (FSMA) aimed at improving the safety of food for animals. This proposed regulation would help prevent foodborne illness in both animals and people and is open for public comments for 120 days. The proposal is part of the Food Safety Modernization Act’s larger effort to modernize the food safety system for the 21st century and focus public and private efforts on preventing food safety problems, rather than relying primarily on responding to problems after the fact.

The proposed rule would require makers of animal feed and pet food to be sold in the U.S.to develop a formal plan and put into place procedures to prevent foodborne illness. The rule would also require them to have plans for correcting any problems that arise.  The proposed rule would also require animal food facilities to, for the first time, follow proposed current good manufacturing practices that address areas such as sanitation.

The proposed rule would help ensure the safety of food for animals and prevent the transmission of agents in food for animals that could cause foodborne illness in both animals and people. People can get sick by handling contaminated food, such as pet food.

The FDA will hold three public meetings on the Proposed Rule for Preventive Controls for Animal Food Facilities. The first meeting will be held on November 21, 2013 at the FDA Center for Food Safety and Applied Nutrition in College Park, MD. The second meeting will be on November 25, 2013 at the Ralph H. Metcalfe Federal Building in Chicago. The third meeting will be held on December 6, 2013 at the John E. Moss Federal Building in Sacramento, CA.

For more information as to how our firm can help your company comply with the recent FDA guidelines related to animal food products,  please feel free to contact us at telephone number above.