A Legal Blog by Aaron | Sanders, PLLC


Tinkering, Vision, Business and Patents: What the Tangled History of Windsurfing Can Tell Us About Innovation

A Meditation on Innovation on the Occasion of the Death of S. Newman Darby, Tinkerer, Hobbyist & Inventor

If you enjoy windsurfing, you might raise one to S. Newman Darby, who essentially invented it and who passed away last month. For a long time, not very many people knew this.

He grew up around Wilkes-Barre, Pennsylvania. Though he clearly had a mechanical gift, he was content to run the sign-painting business his father had started, and to tinker on the side. He particularly enjoyed boating on the Susquehanna and on nearby lakes. But he found sailing fussy, and steering by rudder unsatisfying. How much better it would be to steer by guiding the sails themselves and leaning into the wind. It was 1964.

He started by attaching a sail directly to a board. That worked, but it was clumsy and limited. You couldn’t turn very well, and you couldn’t go into the wind. He tried again, this time attaching the sale to the board with a short length of nylon rope, effectively creating a universal joint. This worked a treat, and in a short time, he taught himself how to “sailboard.” You stood on a rectangular board, about the size of an…

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A Business New Year’s Resolution – Don’t Violate the Trademark “Anti-Trafficking” Rule

You need a trademark lawyer. No, really.  Even if you have a corporate lawyer. No, especially if you have a corporate lawyer.  Do not let your corporate lawyer do your trademark lawyer’s work.  Would you let your dentist do your appendectomy?  The following is a story of trademark work gone wrong. (Arguably better than an appendectomy gone wrong, but still).

Perry Orlando files a trademark application for THE EMERALD CITY in 2008. He files on an “Intent to Use” basis. Everything goes fine, and the application is allowed, but Mr. Orlando still has to file is Statement of Use before the mark will register.

In 2009, and before he files the Statement of Use, Mr. Orlando assigns the trademark to Emerald Cities Collaborative, Inc. (The U.S. trademark lawyers, of course, can see the problem immediately). From the case, it looks like the assignment was probably drafted by a lawyer. The lawyer seems to have even maybe understood the problem and tried to get around it.  Mr. Orlando agreed to “assign unto ECC all right . . . in the Mark . . . . at such time as the Mark is registered at the PTO” (emphasis in original). Emerald Cities Collaborative…

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Has There Really Been Fallout from the Blurred Lines Case and What Can Be Done About It?

Giving Credit Where Credit Is Due (or Demanded)

Last week, the Associated Press reported, “More and more, artists are giving credit” to the writers of pre-existing songs “in the wake of the ‘Blurred Lines’ case.” The main point of the article was that songwriters are taking a more cautious approach when they know they have at least been influenced by a particular song and have been giving credit to the writers of the older songs to play it safe. As evidence, the article cited the addition of the Gap Band’s “Oops Upside Your Head” to “Uptown Funk,” the addition of the massively awesome Tom Petty and Jeff Lynne to the credits for Sam Smith’s “Stay With Me”—completely justified, in my view—and the addition the two songwriting dudes from The Fray to the credits for The Chainsmokers’ “Closer” (a song I have never listened to until just now).

That’s hardly overwhelming evidence, particularly since at least two of the additions were really settlements of legal claims before litigation. I don’t know how the Chainsmokers dispute was resolved, but I doubt it was purely voluntary.

Songwriting credit is a big deal because it’s how songwriters get paid. Royalties for a song are divided among…

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Poking Bears and Blocking ISPs

I’m going to post this and then go hide out in a bunker somewhere.  I’m not even sure I can get through the introductory paragraph before needing to take cover.

 

 

SOPA.

 

(Crawling back out from her hiding space under her desk…..)

 

You will all remember the Day the Internet Went Black in protest of the twin legislative boogey men, the Stop Online Piracy Act in the House and the Protect IP Act in the Senate.  The acts were secretly negotiated and quickly drafted attempts to curb piracy and counterfeit from foreign sites by prohibiting U.S. companies from advertising on those sites or processing payments to those sites, or from indexing those sites on search engines. We’re coming up on the 5th anniversary of Protest Day. The primary arguments against the bills were that the DNS blocking provisions would “break the internet,” that it was not narrowly tailored to avoid curbing free speech, that it would chill sites for user-generated content, and that it would generally stifle internet innovation.

The short history is that the bills came out, the Internet went berserk, the Internet went black, and the bill died.  Prior to the demise, those of us who moderated panels on the issue that…

dreamstime_m_48059685

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New DMCA Registration Regime Starts Today. Don’t Delay!

New DMCA Registration Regime Starts Today. Don’t Delay!

Today is the first day to take advantage of the U.S. Copyright Office’s new electronic registration system for DMCA agents Gone are the days of printing out a form, physically signing it, and physically mailing it in, usually accompanied by a fairly large check (over $100). Now, you just create an account (which means picking a user name and password, alas), fill out a fairly simple form, pay a very small fee—currently, $6.00—by credit card, and you’re done. The whole thing can be accessed here.

I just did it for my firm, and it wasn’t that hard. There are only a couple of tricky things. First, you (i.e., your organization or who you’re representing) is the “service provider,” not, for example, your internet service provider. In this context, “service provider” means anyone providing any type of service over the internet, not just traditional last-mile ISPs. Second, you’ll want to include, as “additional names,” any name by which you or your organization might be known. At present, there’s no additional fee for additional names, so there’s no reason to skimp.

Even if You’ve Registered, You Need to Re-register.

Now for the important bit. Today might be the…

Usually, DMCA takedown notifications don't have such nice handwriting.

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Is it Fair Use? Who’s on First (Copyright Fair Use Factor)?

Abbott and Costello Meet the Copyright Lawyer (1 1/2 Stars)

It’s time for another round of “Is it Fair Use?”, the fast-paced, heart-racing game that’s sweeping the nation. This episode of “Is it Fair Use?” features one of the classic skits of American Comedy: “Who’s on First?”

Pure gold. Most of us have this routine more or less memorized, and yet, even knowing all the jokes, the routine is never fails to make us laugh.

Along Came a Demonic Hand Puppet

Much more recently, a Broadway play, called Hand to God, about—if I’m understanding this correctly—a possibly possessed hand puppet, used about the first minute’s worth of routine. The play is about “an introverted student in religious small-town Texas who finds a creative outlet and a means of communication through a hand puppet, which turns into his evil or devilish persona.” It’s meant to be a “dark comedy.”

Early in the play, we get a sense of what we’re in for when the boy with the puppet tries to impress a girl by reenacting the “Who’s on First?” routine, between himself and the hand puppet. (The puppet naturally plays the Costello role.) After about a minute of the routine, pretty much verbatim, the girl…

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The Aftermarket Holy Grail: Using Software Copyrights to Control Replacement Parts

Intellectual Property and Personal Property: Two Great Tastes That Might Not Taste Great Together

When everything runs on software, then everything will be subject to copyright protection, and you might not like the consequences. Let’s take cars, for example. In the old days, if your car needed a new distributor cap, you’d go down the neighborhood auto supply shop, and you would have several different manufacturers competing for your money, which keeps the price for replacement parts low. One of the manufacturers might be “authorized” by the car manufacturer and appropriately branded. And that one might command a somewhat higher price because of that association and the sense that it will somehow work better with your car. That premium is the result of branding—and trademark law—and years of hard work building up the brand.

The Right to Distribute Distributors

Slap a little computer module on the distributor cap, and the car manufacturer has a lot more control over who can manufacture replacement distributor caps. That’s because the computer module requires software, and software is made up of characters, and that makes it a literary work that is subject to copyright protection. It doesn’t matter if the only characters involved are 0 and…

Plug and play! (But where does the software come from?)

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Pitching Buck Rogers: Trademarks and Future Use

Of course, Buck Rogers would be the one to teach us about trademark rights that exist only in the future.

 

In a case that spans almost as much time as Buck’s leap across the centuries, the heirs of Philip Francis Nowlan (the character’s creator) and the Dille Family Trust, purported successor-in-interest to John F. Dille, whose National Newspaper Service had distributed Buck to the masses beginning in 1924,  were most recently in court in the U.S. District Court for the Eastern District of Pennsylvania.1

Anyone who has dealt with legacy properties and heirs will recognize the facts of this dispute. They involve a poorly written release from 1942 in which Mr. Nowlan’s widow transferred all Buck Rogers copyrights to “John F. Dille Company” and all trademarks to “John F. Dille,” for a paltry sum. Nearly 70 years later, around the time other folks were starting to make katrillions of dollars on comic character movie franchises, the successors from both sides took notice, ran a race to the USPTO, and started canceling and opposing and applying like crazy, in an attempt to secure rights to get in on the summer blockbuster money making action.2

During the time that all the shots were being volleyed…

The comic book copyrights were not renewed , although the copyright status of the Buck Rogers is currently (and unsurprisingly) in dispute as well.

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On behalf of the INTA® Academic Committee: Call for Papers

As the co-chair of the Trademark Scholarship Symposium run by the INTA® Academic Committee, I am pleased to share the following opportunity to present at the upcoming INTA Annual Meeting in Barcelona.  Please feel free to share this information with your colleagues in trademark, publicity, unfair competition and design law:

Call For Papers: Eighth Annual INTA Trademark Scholarship Symposium
The International Trademark Association (“INTA”) is pleased to host the Eighth Annual Trademark Scholarship Symposium during the 139th INTA Annual Meeting in Barcelona, Spain. The annual meeting is scheduled to take place May 20-24, 2017, and the Symposium itself will be held on Tuesday, May 23. The symposium is an opportunity for trademark academics and scholarship-minded practitioners from around the world to participate in small group discussions of scholarly works-in-progress.

Each selected participant will present their project in a workshop setting, receive comments, and engage in a dialogue with other academic scholars and accomplished trademark practitioners.

Please send an abstract (approximately 300 words) describing a current trademark, unfair competition, or right of publicity scholarship project to Peter Karol at pkarol@nesl.edu and Tara Aaron at tara@aaronsanderslaw.com by October 31, 2016. The subcommittee will then select a maximum of 8 projects to be presented at the…

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What Two Hamburger Commercials Tell Us About Early Dismissal of Copyright Cases

Sealing in the Juices While Sealing Out the Lawsuits

It’s sadly true that many copyright cases are garbage, and obviously so, even at a glance. In many circuits, fortunately, trial courts are permitted to subject copyright claims to a kind of smell test. Before the case even really gets going, the defendant may move to dismiss the case under “Rule 12(b)(6).” With this kind of a motion, the court assumes everything in the complaint is true, and limits itself to just what is in the complaint. This rule is a kind of filter, where hopeless lawsuits can be thrown out before the parties really start spending money.

Most Rule 12(b)(6) motions fail because most lawyers can write a complaint well enough to avoid dismissal. You just have to make sure you allege facts that, if true, would have a decent chance of convincing a jury of your client’s claim. That one of your key allegations might rest on some shaky evidence is a problem for another time, so long as you have a good-faith basis that you’ll be able to prove the point.

Tests for “Substantial Similarity” Are Themselves Not Substantially Similar. How Ironic.

But in many circuits copyright claims are a bit…

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