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Kansas City Intellectual Property Blog

Copyright Slam Dunk?

By Kyle Mendenhall

Lebron James is being sued for copyright infringement after posting a cropped photograph of himself on Facebook. The original photograph was taken by professional photographer Steve Mitchell, who has registered the photograph with the U.S. Copyright Office. In the lawsuit, Mitchell argues that James violated his copyright by posting the photograph without Mitchell's consent. Although James is certainly the subject of the photograph, Mitchell owns the copyright and generally has the right to control licensing and distribution his work. This case will likely hinge on whether James' posting of the cropped photograph constitutes "fair use" under copyright law.

Patent and Trademark Deadline Extensions for COVID-19 Related Delays

The U.S. Patent and Trademark Office ("PTO") announced that it is extending the time to file certain documents or fees if a person is unable to meet the deadline due to the COVID-19 pandemic.

Certain deadlines related to Patent or Trademark prosecution falling between and including March 27, 2020 and April 30, 2020 will be extended 30 days from the initial due date. To receive deadline relief, the filing must be accompanied by a statement that the delay was due to the COVID-19 outbreak because a party involved was "personally affected" by COVID-19 "such that the outbreak materially interfered with timely filing or payment." The Notice gives examples such as, "office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances."

A message from Hovey Williams LLP

Information about COVID-19 (coronavirus) and its impact are now evolving on a daily basis. We are monitoring the COVID-19 situation closely and will follow recommendations from the WHO, CDC, and other health and governmental organizations.

At Hovey Williams, we are taking careful measures and following governmental recommendations to protect the well-being of our employees, clients, and guests, while also ensuring that we continue to meet your legal needs. We have implemented a rigorous plan to minimize the risk of transmission related to firm business, including working remotely. 

Email Addresses of Applicants Now Required in Trademark Filings by Blair Barbieri

The U.S. Trademark Office has released its new Examination Guide (available here). Among other changes, the new rules require applicants and registrants to provide an email address, with limited exceptions.

Effective February 15, 2020, applicants, registrants, and parties (collectively "parties") to any proceeding before the Trademark Trial and Appeal Board (TTAB) must provide and maintain a valid email address to receive correspondence from the USPTO. Appointed attorney correspondence information is still required and will be the point of contact with the Trademark Office. But the email address for the applicant, registrant, or party must be maintained to ensure the USPTO has accurate contact information if the legal representative withdraws its counsel. Although the parties' email addresses will not appear in the Trademark Status and Document Retrieval (TSDR) tab, it will be viewable in the filed application, which will remain accessible in the TSDR documents tab. The party may file a petition to redact the email address in TSDR documents where an extraordinary situation exists. 

IP strategies for strengthening your new idea

Often the biggest problem for building a business around a new idea or invention is not coming up with the initial concept but developing a strategy that enables it to flourish in the marketplace. Once an inventor has the idea, need to consider the landscape in the project’s category at large, business objectives of licensees, who investors will be and their objectives, as well as wooing potential customers or buyers.

Different concepts have different needs -- licensing needs an agreement drafted from a position of strength, while startups look to align business objectives with those of investors -- but here are eight strategies that can help it flourish:

Patent trolls target small business

Patent trolls are patent assertion entities who buy up patents from bankrupt businesses, auctions and inventors for pennies on the dollar. They traditionally would then use these purchases to go after large corporations and sue for infringement. They do not engage in any business other than suing operating companies.

Change in law effects targeting

Ban on offensive trademarks ruled unconstitutional

We discussed the issue of the immoral, scandalous or deceptive trademarks back in January when the Supreme Court announced it would hear the case involving the FUCT clothing line’s attempt to trademark its brand and products since 2012. The case (Iancu v. Brunetti) was obviously attention-grabbing with news reports soberly discussing the validity of curse words and explicit imagery, but the case also was a legal clash between the First Amendment right to free speech versus the United State Patent and Trademark Office’s 113-year-old policy and the Lanham Act, which prohibits immoral, explicit or scandalous trademarks.

Final ruling based on viewpoint discrimination

Infringement claims only work when there is a registered copyright

A significant change in intellectual property law took place when the Supreme Court ruled recently on a copyright infringement case. With contradictory rulings on the books in the Circuit Courts, the highest court unanimously determined that copyright infringement claims are valid only when the copyright is registered with the U.S. Copyright Office.

The old way of doing things

Disney wins again

Disney has faced lawsuits in the past regarding its movies allegedly stealing plot lines, dialogue, or likenesses. Despite these lawsuits, the company has a strong record of successfully defending itself. It was most recently in court when two writers claimed that Pirates of the Caribbean: Curse of the Black Pearl used ideas from a script the duo submitted to the company in 2000 for the popular 2003 movie.  The writers identified suspicious similarities in the scripted dialogue, plot lines, and characters. Although the plot was substantially different, the writers claimed that the film used such ideas as:

Busting some patent myths

Anyone who has needed to copyright something has likely considered the option of the so-called “poor man’s copyright.” This is where you mail yourself a copy of the work to get a postal date on the envelope proving when you mailed the material. You keep the envelope sealed and, if there is ever a dispute about when you created the content, you can present the sealed envelope with the material inside as proof.

There is no provision in U.S. copyright law that approves this type of protection. It doesn’t work. And yet the strategy has been so widely circulated over the decades that it has also been proposed as a means to patent something on your own.


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