December 24, 2015 | No Comments
Posted by Melissa V. Skrocki
The Second U.S. Circuit Court of Appeals panel ruled that the rights to the familiar Christmas tune “Santa Claus is Comin’ to Town,” will revert to the original artist’s heirs in 2016. The original composers, John Frederick Coots and Haven Gillespie, licensed the rights to the song in 1934 to Leo Feist, Inc., presently known as EMI Feist Catalog, Inc. Read more
October 7, 2015 | No Comments
Posted by Kurt E. Anderson
Hold onto your hat, but, on October 6, 2015, the Court of Justice of the EU abolished the safe harbor on which US companies rely for transfers of data between the US and EU. So, as of today, if you are transferring “personal data” between the US and the EU and you are relying on the safe harbor to do so, you are no longer in compliance with the EU Data Protection Directive. Full Stop. If this describes your company, here is what you need to do next.
Since you can no longer rely on the safe harbor, you will have to do the following:
1. Intercompany Transfers: If the data transfer is between companies belonging to the same multinational corporation, then you can get back into compliance by adopting “binding corporate rules” and getting them approved by the national “data protection authority.” The problem with this approach is that it may take 18 months to get such approval. If you can’t put all data transfers on hold that long, see option 2 below.
2. Transfers Between Unaffiliated Companies. For all other transfers, the parties will have to enter into “standard contractual clauses.” There are three types of standard contractual clauses, so you will have to pick which ones apply to your roll as either a data “controller” or a data “processor” or both.
3. Comply. One last thing. Once you’ve adopted approved binding corporate rules or entered into standard contractual clauses, you will actually have to comply with them. This may have far reaching implications for internal policies and practices.
Here are links to some resources that might be helpful.
A special thanks to Matthias Berger at Field Fisher for alerting me to this development.
September 2, 2015 | No Comments
Posted by Kurt E. Anderson
Yesterday, the USPTO announced a new pilot program pursuant to which it will allow trademark registrations to be amended where the trademark owner now sells different products from those covered by the original registration due to evolving technology. In the absence of this pilot program, such trademark owners would have to abandon their existing registration and file a completely new application. Read more
August 13, 2015 | No Comments
Posted by Kurt E. Anderson
In a move characterized as “unprecedented,” on August 13, 2015, the Federal Trade Commission (FTC) issued a Statement of Enforcement Principles describing the principles that guide FTC’s enforcement against “methods of unfair competition” prohibited under Section 5 of the FTC Act. It is not yet clear what prompted the FTC pronouncement or what impact it will have. You can read the press release here.
August 11, 2015 | No Comments
Posted by Christopher J. Marino
After a year-long battle, national touring and recording artist Dan Matthews and his American alternative rock band, “The Black Clouds,” can finally get their name back. Giordano, Halleran & Ciesla attorneys, led by Christopher J. Marino, Esq., succeeded in cancelling a nearly identical trademark registration obtained by a competing band.
To read the full article, click here.
March 11, 2015 | No Comments
Posted by Kurt E. Anderson
Yesterday, a federal jury found that the song “Blurred Lines” (by Pharrell Williams, Robin Thicke and Clifford Harris, Jr.) was substantially similar to the song “Got to Give it Up” (by Marvin Gaye) and awarded over $7 million in copyright infringement damages. Because the similarities between the songs were largely based on several very small elements, the case suggests some potentially important implications for software developers.
A brief procedural note. The case was brought by Williams et al. seeking a declaratory judgment that their songs did not infringe on Marvin Gaye’s songs. Thus, in a twist on the conventional copyright infringement case, Williams et al. (the folks accused of copyright infringement) were the Plaintiffs and the successors to the copyright of Marvin Gaye (the folks whose rights were allegedly infringed) were the Defendants.
In the Blurred Lines case, expert reports were provided on both sides and, as you can imagine, the expert opinions were frequently conflicting. According to the New York Times, the analysis and disputes between the experts involved “passages as short as four notes.” ‘Blurred Lines’ Infringed on Marvin Gaye Copyright, Jury Rules, October 10, 2014. In the October 2014 summary judgment decision (the “Summary Judgment Ruling”) which allowed this case to go to trial, the expert for the Defendants found eight features of the songs that were similar. Williams v. Bridgeport Music, Inc., 2014 U.S. Dist. LEXIS 182240 (Oct. 30, 2014). The analysis of both experts on all points was very detailed. For example, the Defendant’s expert found that the signature musical phrase in “Blurred Lines” was similar to the signature phrase in “Got to Give it Up” in that (among other things) both songs repeated their starting tone several times and both contained identical rhythms for the first six tones. By contrast, the Plaintiff’s expert found that only one note in the signature phrases of both songs had the same pitch and placement (but not the same duration).
Now, imagine two experts engaged in the same sort of analysis, but instead of musical songs, they are comparing computer programs. In such a case, the experts would be dissecting routines, subroutines and likely even smaller snippets or phrases of code to determine similarities and differences. To most code writers I work with, that kind of analysis is far from their everyday thoughts as they go about their work.
Software developers are not only tasked with writing code that will automate certain functions, but also with doing so quickly and efficiently with limited resources. They are also frequently required to meet certain non-functional specifications and conform to various requirements. So much of the “big picture” is frequently dictated by utilitarian concerns (which would not be protectable by copyright). However, the individual choices made in composing the code that achieves those goals are left to the human code writer. While two stories may have similar plots (which is, very generally, not copyright protectable), the composition which defines the way in which those plots are stitched together and unfold represents the creative choices of the author (and is protectable by copyright). Similarly, two computer programs may perform similar or the same functions, but the code that defines the way in which those functions are executed represents the creative expression of the code writer.
Even after an extensive analysis of the individual features alleged to be similar, in the Summary Judgment Ruling in the Blurred Lines case, the court found that even if the individual elements were not protectable (and thus could not be infringing, individually), infringement could result from the combination and selection of the elements and the “overall impact and effect.” Williams v. Bridgeport Music, Inc., 2014 U.S. Dist. LEXIS 182240 citing Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000) (citations omitted).
While we don’t know what was in the minds of the jurors, I suspect that they were largely influenced by this last criterion. In the 9th Circuit (where this case was decided), the jury is charged with evaluating the intrinsic similarity of the works. Intrinsic similarity is based “on the response of the ordinary reasonable person.” Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977).
For software developers, the concern is that even where there is no literal copying and even where an analysis of the individual elements of code does not support a finding of substantial similarity (i.e., copyright infringement), there may still be copyright infringement (at least in the 9th Circuit), if the response of the ordinary reasonable person to the overall computer program, module, routine or sub-routine suggests substantial similarity. Are two computer programs substantially similar merely because an ordinary person would see similarities in features and functions and decide that the overall effect of the programs are similar? Hopefully not. Such a result would stifle competition and would likely give copyright a greater scope of protection than was originally intended.
In copyright infringement cases, evaluating substantial similarity is, perhaps, the (pronounced “thee”) most difficult task. In software cases, jury verdicts such as that in the “Blurred Lines” case make this task even more difficult.
January 1, 2015 | No Comments
Posted by Melissa V. Skrocki
Giordano, Halleran & Ciesla, P.C., is pleased to announce that Melissa V. Skrocki has been named Shareholder to the firm.
Melissa Skrocki focuses her practice on counseling business clients through various transactions with an emphasis on contractual and intellectual property issues. Her business law practice includes the representation of clients in contract negotiations, confidentiality agreements, organization and formation of business entities, mergers and acquisitions, shareholder agreements, operating agreements and licensing agreements. In addition, Melissa assists her clients with business succession planning and commercial banking transactions.
To read the full article please click here.
December 17, 2014 | No Comments
Posted by Kurt E. Anderson
The USPTO announced that they are having a sale. You can save $50 per class on all new trademark registration applications and $100 on all renewals. The Final Rule issued on December 16, 2014 announced that trademark filing fees will be reduced.
Small Print: Unfortunately, the discounts will not be effective in time for the holidays. The new discounted fees don’t kick in until January 17, 2015. In the good news department, the discounts will continue thereafter!
December 12, 2014 | No Comments
Posted by Kurt E. Anderson
The Bureau of Industry and Security (BIS) has issued a new advisory opinion (its third) on whether and when cloud-based service providers must be concerned with U.S. export compliance. While such providers are in the clear with respect to many activities, there are still a number of ways cloud-based service providers can unwittingly trigger export compliance concerns.
General Rule. Generally, cloud service providers who provide only “computational capacity … for storing data or running pre-determined programs using” customer data (what I’ll call a “pure cloud service”) are not subject to the Export Administration Regulations (EAR). However, if the cloud provider ships or transmits any “commodity, software or technology” to the user, then the service provider becomes subject to EAR. See 2009 BIS Advisory Opinion and 2014 BIS Advisory Opinion. This creates a potential minefield for unwary cloud-based service providers. A few of those “mines” are described below.
Mine #1 – Software Uploaded in Background. Where cloud providers can get tripped up here is when they transmit software or technology in connection with providing the otherwise pure cloud service. In order to provide a smoother and faster user experience, some cloud-based platforms are configured to (perhaps unbeknownst to the user) upload software to the user’s computer (typically to RAM) to perform certain functions locally. This type of configuration would, of course, constitute a transmission of software which would be subject to the EAR even though the other aspects of the service may not be.
Mine #2 – Export of Technology. The new advisory opinion drives home the point that even where no software is transmitted to the user, EAR compliance requirements may also be triggered by an export of “technology.” The 2009 BIS Advisory Opinion provided that such technology may come in the form of technical data (e.g., manuals, instructions, plans) or technical assistance (e.g., instructions, consulting services). EAR §772.1 goes even further by defining “technology” to include such things as diagrams, tables, specifications, manuals and instructions, instruction, skills training, working knowledge, and consulting services necessary for operation, installation, maintenance, repair, overhaul, refurbishing, development, production or use. So where the cloud service is provided with user instructions or other consulting services, for example, the provision of those items may trigger EAR compliance requirements even though the underlying service itself does not.
Mine #3 – Deemed Export. The 2011 BIS Advisory Opinion clarified that for a pure cloud service, the provider does not constitute an “exporter” since the provider does not ship or transmit any “commodity, software or technology” to the user. In such a case, since the provider is not an exporter, there can be no “deemed export” even if a foreign national monitored user generated technology which was otherwise subject to EAR export restrictions. However, the provider may nonetheless trigger EAR compliance issues where the user is a foreign national and the service is not a pure cloud service. In other words, even where the user is physically located in the United States, if the user is a foreign national and the cloud-based service includes any transmitted software or the provision of technical data or technical assistance (as described above), then a deemed export may occur.
Finally, the 2009 BIS Advisory Opinion suggest that even for a pure cloud service, the provider should “take into account” the location (presumably physical) of the user where the user is located in a country within Country Group D and will be involved in certain activities. The 2009 BIS Advisory Opinion limited its scope to certain “missile” activities, but presumably the provision of even a pure cloud service to a person located in a country on the Country Group D list engaging in activities within the restricted subject matter of the Group D list (e.g., national security, nuclear, chemical & biological, missile technology and U.S. arms embargoed countries) would be problematic or at least warrant close scrutiny.
October 27, 2014 | No Comments
Posted by Kurt E. Anderson
Law suits are expensive. Even when the issues seem like they should be straight forward, cost is both a powerful deterrent before the complaint is filed and a significant strategy consideration during the course of a law suit. In a recently decided case, the 3rd Circuit has made recovering attorneys fees in trademark litigation a little easier by adopted the “exceptional case” standard addressed by the U.S. Supreme Court earlier this year for fee shifting in patent litigation.
Back in April, the U.S. Supreme Court held that the Patent Act’s fee shifting provisions allowed district courts to award attorneys fees to the prevailing party in patent litigation. Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (2014). Before Octane, federal courts had held that an “exceptional case” warranting such fee shifting existed only where the party seeking to recover its legal fees could prove by “clear and convincing evidence” that the other party had engaged in “material inappropriate conduct” or that the other party’s case was “objectively baseless” and was “brought in subjective bad faith.” Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F. 3d 1378 (2005). In Octane, the U.S. Supreme court loosened that standard. After Octane, under the Patent Act, “[a]n ‘exceptional’ case … is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” Moreover, the Octane court rejected the “clear and convincing evidence” standard for determining whether a case was “exceptional” and held that the much lower “preponderance of the evidence” standard should apply. Thus a new standard for fee shifting in patent cases was born.
Fast forward to September. In Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3d Cir. 2014), the 3rd Circuit held that the U.S. Supreme Court’s revised fee shifting standard for patent cases should also apply to trademark cases. In doing so, the court noted that the fee shifting language of the Patent Act and the Lanham Act is identical and that, in rendering its decision regarding the Patent Act, the Octane court had relied on interpretations of the fee shifting provisions of the Lanham Act.
While none of this is shocking (and was largely expected), the 3d Circuit did provided a bit of nuanced guidance with respect to the criteria that might be employed by courts in deciding whether to award attorneys fees. Quoting from Octane, the 3d Circuit noted that “a case presenting … exceptionally meritless claims may sufficiently set itself apart from mine-run cases to warrant a fee award.” Octane at 1757. Comparatively, the 3d Circuit concluded that fee shifting might be appropriate in cases where “there is an unusual discrepancy in the merits of the positions taken by the parties.” It may be notable that the 3d Circuit articulation of the standard may not require “exceptionally meritless claims” (as expressly set forth in Octane). Rather, the 3d Circuit seems to construe Octane to allow for fee shifting under circumstances where “there is an unusual discrepancy in the merits.” Thus, in the 3d Circuit, it may be possible to recover attorneys fees where the losing party’s case was not unusually meritless as long as the prevailing party’s case was exceptionally meritorious in comparison to the losing party’s case.
On a final note, the 3d Circuit ruled that the district court (not the appellate court) should be the one to ultimately make the decision as to whether fee shifting was warranted in a particular case. Since the District Court did not decide whether this case was an “exceptional” one, the 3d Circuit remanded the Fair Winds case back down to the District Court to determine whether the case was “exceptional.”
Quick Take Aways:
1. Attorneys fees are now recoverable in trademark litigation under the Octane (Patent Act) test, namely, where the loser’s case was exceptionally meritless or the loser conducted the litigation in an unreasonable manner.
2. In the 3d Circuit, attorneys fees in trademark litigation may also be recoverable where the losing party’s case was not unusually meritless as long as the prevailing party’s case was exceptionally meritorious.
3. Whether a case is “exceptional” so as to warranty fee shifting is to be decided by the District Court.