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

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.

Continue reading

Raymond Area Rotary Club Sparks Colorful Exchange

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

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: Copyright Infringement or Legal Fair Use?

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.

Know the Law: How Should I Respond to a Claim of Patent Infringement

By Scott C. Rand

Q.  My company recently received a letter alleging patent infringement and demanding payment for use of commercially available technology. We are not a technology company, but rather an end user of the technology. The patent owner has been referred to in media reports as a “patent troll.” What protections against patent trolls are in place for companies like mine and can I safely ignore the letter?

A.  Recently, more and more businesses have been receiving letters of this type. Although so-called patent trolls (persons or companies that assert patent rights to collect license fees, but do not manufacture products or provide services, also known as non-practicing entities or NPE’s) have been around for many years, they have historically targeted companies that either develop, manufacture, or sell the technology in question. A trend has now emerged, however, where NPE’s target end users based on their use of off-the-shelf products.

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