United States Supreme Court Allows Booking.com as a Federal Trademark

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Walker, JeremyBy Jeremy T. Walker

In a decision issued on June 30, 2020,[1] the United States Supreme Court ruled that the domain name “Booking.com” was entitled to federal trademark protection.  With an 8-1 majority, the Court surprised many in the intellectual property community because the decision seemingly contradicts longstanding trademark jurisprudence that prohibits generic terms from receiving trademark protection.  Generic marks are those used to describe common terms or categories of goods such as cars, bikes, hats, etc.  Because these are terms that are commonly used, they are not afforded any trademark protection.  Otherwise, businesses could register these generic terms as trademarks and unfairly prevent competitors from using those terms to sell like products.

The United States Patent and Trademark Office (“USPTO”) previously rejected Booking.com as generic because the term “booking” is commonly used by hotels and related businesses for the process of reserving rooms.  The USPTO decided that a generic term remains generic despite the addition of the .com and use as a domain name.  But the Supreme Court relied on evidence that Booking.com was recognized by consumers as a unique source of services, and thus, was not truly generic.

Justice Breyer, the lone dissenting vote, asserted that Booking.com is generic and refers simply to an internet booking service.  He wrote:  “By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of “generic.com” marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”  Time will tell if Justice Breyer is correct.  On the other hand, many applaud the decision as necessary for those brand owners that have invested considerable resources in protecting their online brands, such as Hotels.com, Cars.com, etc.  Without any trademark protection available, these companies may not be able to effectively stop competitors from unfairly trading off the goodwill associated with their domain names.

 

[1] Patent and Trademark Office v. Booking.com B.V., No 19-46 (U.S. June 30, 2020)

U.S. Supreme Court Rules Copyright Owners Must Wait On Registration Before Filing Against Infringers

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Walker, JeremyBy Jeremy T. Walker

In its March 4, 2019, opinion in Fourth Estate Public Benefit Corporation v. Wall-Street.com, the United States Supreme Court unanimously ruled that copyright owners must wait for copyright registration before pursuing lawsuits against accused infringers.  Under the Copyright Act of 1976, copyright protection attaches to “original works of authorship,” such as literary, musical or dramatic works as soon as they are fixed in any tangible medium of expression.  Thus, for example, once a novelist prepares a handwritten draft of her work, she immediately gains exclusive copyrights to that work.

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Know the Law: Who Owns Intellectual Property Created by Employees?

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By Scott C. Rand

Q: Who owns intellectual property created by employees? 

A: It is widely assumed that when someone is hired to create a work product, intellectual property rights will be owned by the hiring party.

However, that is not always the case. If there is a written agreement, the details of intellectual property ownership are often spelled out.

Written agreements addressing intellectual property ownership are common, particularly where the employee is hired in a creative capacity. Sometimes, such agreements will take the form of an intellectual property assignment agreement.

In other cases, there may be provisions governing intellectual property ownership within a larger employment agreement.

To read my full article that was published in the Union Leader, please click here.

Is Graffiti Protected by Copyright?

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By Catherine S. Yao

One of the latest battles over the rights to “unlawful” street art comes from fast fashion brand H&M, over marketing photographs that capture the artwork of graffiti artist Jason “Revok” Williams.  Following a demand from Williams that H&M immediately cease use of the photographs, the clothing company filed suit, asserting that Williams’ work in question was not entitled to copyright protection because the work was “unauthorized and constituted vandalism.”

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Raymond Area Rotary Club Sparks Colorful Exchange

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By Catherine S. Yao

The Raymond Area Rotary Club’s 4th annual Thunder Run is a 5K obstacle race to be held in Epping, NH, on May 20 this year.  But, just a few weeks from race day, the Rotary Club seems to have run into an obstacle of its own.

According to the New Hampshire Union Leader, an attorney for Tough Mudder, an endurance event series, has recently notified the Rotary Club that Tough Mudder is the owner of a trademark registration for the color orange “in connection with obstacle course mud runs” and has requested that the Rotary Club cease significant usage of such color on the Thunder Run website (http://thunderrunnh.com/).  It’s unclear how long the club has been using the color orange for the Thunder Run.

Rotary Club member Joe Pratt was not at a loss for words in his response, painting any potential litigation between the two sides as a scene of David and Goliath proportions.  Pratt further stated that the club might change the colors for next year’s race “if we have to.”  The full story may be read here: http://www.unionleader.com/courts/raymond-rotary-pushes-back-after-tough-mudder-lays-claim-to-the-color-orange-20170511.

U.S. trademark registrations (whether for color or otherwise) are always tied to particular goods and services.  Over the years, many companies have successfully obtained federal trademark/service mark registrations for their valued brand colors, such as Tiffany & Co.’s famous shade of blue and Owens Corning’s pink, the color of the company’s ubiquitous fiberglass insulation.  Colors are often an important aspect of a company’s brand identity, so it really comes as no surprise that a trademark registrant/owner would be protective of such intellectual property.

With the race only days away, we’ll be interested to see if and how the attorneys for Tough Mudder respond!

Copyright Office Releases New Rule Governing Designation of Agent

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By Scott C. Rand

The U.S. Copyright Office recently announced a final rule changing the registration requirements for online service providers seeking to avail themselves of the “safe harbor” under the Digital Millennium Copyright Act (“DMCA”).  Under the DMCA, online service providers that store or post content from users can shield itself against claims of copyright infringement provided certain eligibility requirements are met.

To be eligible under the safe harbor from copyright infringement, online service providers must designate an agent to receive notifications of copyright infringement.  Previously, the Copyright Office maintained an online directory of scanned copies of agent designation filings.  Effective December 1, 2016, designation of agent filings must be made using the Copyright Office’s new electronic system.

This requirement also applies to any online service provider that has previously designated an agent under the old system.  Any online service provider that wishes to maintain a designation filed under the old system is required to re-designate their agents using the new electronic system by December 31, 2017.  Designations that are not re-registered by December 31, 2017 will expire.

Another change under the new rule is that agent designations will expire every three years.  Thus, periodic renewals will be required for an online service provider to maintain safe harbor protection.  Under the new system, agent designation fees have been reduced from $105 to $6.

Know the Law: How Can I Start Protecting My Trademark?

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By Catherine S. Yao

Q: I have a small business in New Hampshire and have been selling goods to customers in New Hampshire and Massachusetts for several years.  How can I start protecting my company’s trademark?

A:  It sounds like your company has been around for some time, so the mark has likely already started accumulating rights, at least in your geographic area.  Simply applying the mark to a product or using the mark to provide a product/service, creates “common law” trademark/service mark rights, which is the lowest level of trademark protection.  Notably, common law trademark rights are limited to the geographic area of use.  At this point, you can start using the “TM ” superscript (for trademarks not federally registered; “SM” for service marks not federally registered) to put others on notice of your mark.  The mark should be prominently displayed/used on the products themselves and/or the labels, tags, or packaging of the product.

To read my full article that was published in the Union Leader, please click here.

The ABCs of IP

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By Catherine S. Yao

Anyone from individuals to companies of all sizes may have a range of intellectual property (“IP”) considerations.  Even where you do not specifically intend to create intellectual property, you and/or your company may have protectable rights or interests to consider.  You should also be wary of the possibility that you may be using and even unintentionally infringing the intellectual property of others.  From trademarks to copyrights to patents to trade secrets, it is important to understand each distinct category of intellectual property as well as the respective protections and limitations that surround them.

Therefore, the goal here is to provide a general baseline of understanding of the different types of intellectual property and help you to begin to identify and understand your property as well as the relevant rights, protections, and risks.  Subsequently, you will likely find it worthwhile to further explore certain categories in detail.

To read the full article that was published in the NH High Tech Council’s newsletter, please click here.

Know the Law: Copyright Infringement or Legal Fair Use?

/ Michael McLean

By Jeremy T. Walker

Q.  My company subscribes to various technical journals. We often copy pertinent articles and distribute copies to our employees for their reference. Could we be exposing ourselves to copyright infringement liability?

A.  Possibly. The issue is one that implicates the “Fair Use” Doctrine of Copyright Law. A copyright is the federal grant of exclusive legal rights for original works of authorship, such as books, articles, songs, and computer programs. A copyright owner has certain exclusive rights, including the rights to copy and distribute the work. A violation of any of these rights constitutes copyright infringement. Penalties for copyright infringement can be severe, with statutory damages of up to $150,000 per infringement for willful infringement.

To read my full article that was published in the Union Leader, please click here.

New Domain Name Dispute Policy a Boon to Trademark Owners

/ Michael McLean

By Mark A. Wright

Those who use Internet domain names in bad faith beware. On January 1, 2000, the Internet Corporation for Assigned Names and Numbers’ (“ICANN”) Uniform Domain Name Dispute Resolution Policy (the “Policy”) took effect. Under the new policy, if you hold and use a domain name that is identical or confusingly similar to an existing trademark, and do so in bad faith, you may lose all rights in the domain name.

The purpose of the Policy is to provide an administrative process to resolve disputes between legitimate trademark owners and those who adopt domain names that are identical or confusingly similar to another’s trademark. The Policy applies to all registered domain names, and establishes a mandatory administrative process for resolution of such complaints. Unlike the prior policy, both owners of common law and registered trademarks can now block the use of infringing domain names.

To read my full article, please click here.