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Two days before the inauguration, the Trump campaign applied to trademark "Keep America Great!" (both with and without the exclaimation mark, in Serial Nos. 87305582 and 87305551 respectively), as a forward looking measure to a potential 2020 re-election. The new slogan, branded halfway through a Washington Post interview, was filed on January 18th by the campaign's attorney and includes wide ranging goods and services, covering bumper stickers, clothing, political campaign services, online publications, social networking services, and more. Having registered hundreds of federal trademarks throughout his business career, Donald Trump obviously understands the value of marketing and protecting a brand. In fact, he had previously registered the four simple words "Make America Great Again", as early as November 19, 2012 (Serial No. 85783371), which assisted in propelling him to the White House steps.

The U.S. Department of  Justice and the Federal Trade Commission (FTC) jointly issued an updated Antitrust Guidelines for the Licensing of Intellectual Property. This update modernizes the guidelines originally issued in 1995, and describes how the agencies will evaluate the competitive effects in licensing agreements which involve patents, copyrights, trade secrets, and general know-how.

Tuesday, 13 December 2016 20:45

IC9 vs. IC42: Is It a Software or a Service?

The Federal Circuit recently rejected the TTAB's holding in In re. JobDiva, which previously required for "something more" than selling software in order to protect a mark as a service. The court found that the appropriate legal standard to use was whether purchasers would perceive a mark to identify the indicated services, which is a factual determination to be conducted on a case-by-case basis.

Today, President Obama signed the Better Online Ticket Sales (BOTS) Act of 2016, which makes it unlawful to use software to purchase tickets online. The new law is intended to create equitable consumer access to tickets for certain events, which has been susceptible to the automated purchase and resale by various third parties. Under the law, it is now illegal for anyone to use software (or a "bot") to circumvent the rules set by a ticket issuer, such as purchase limits. Additionally, it is also illegal to sell or offer to sell any ticket in interstate commerce purchased in violation, and liability extends to anyone who knew or should have known that the event ticket was acquired unlawfully with the assistance of software. The full text of the bill can be found at https://www.congress.gov/bill/114th-congress/senate-bill/3183/text.

Today, in Samsung v. Apple, the Supreme Court reversed the $400 million verdict Apple won against Samsung over certain elements of Apple's iPhone design. In an unanimous decision authored by Justice Sotomayor, the Court threw out the earlier verdict of the Federal Circuit, holding that the lower court erred when it ordered Samsung to pay damages equal to its entire profit from smartphones with infringing design elements. 

Following our November notice, we are again reminding all online "service providers" to re-register  with the U.S. Copyright Office's new DMCA agent directory. Any service provider that has designated an agent with the Office already prior to December 1, 2016, must re-submit a new designation electronically using the new online registration system by December 31, 2017, in order to avoid loss of DMCA safe harbor protection (17 USC 512). The new flat fee is now only $6 per registration (compared to the $105 previously). However, registrations will now expire after three years, and online service providers need to renew their registrations before the time of expiration in order to maintain the safe harbor protection. To familiarize users with the new system, the Copyright Office has released a number of tutorial videos: https://www.copyright.gov/rulemaking/onlinesp/NPR/index.html.

The Supreme Court has recently granted certiorari on the issue of patent exhaustion, in Impression Products, Inc. v. Lexmark Int., Inc., Docket No. 15-1189. Patent exhaustion is a doctrine which holds that the initial authorized sale of a patented item terminates all patent rights to that particular item thereafter. Two questions are presented in this case, regarding both domestic and international exhaustion.

On November 21, 2016, the Federal Circuit reversed a CBM institution decision made by the PTAB in Unwired Planet, LLC. v. Google Inc., criticizing that the PTAB's defiintion of a CBM patent was overly broad. This case originated when Unwired Planet enforced U.S. Patent No. 7203752 (the '752 patent) against Google, which related to methods and systems for managing location information for wireless devices. In defense, Google concurrently petitioned the PTAB to institute both an IPR proceeding as well as a CBM proceeding in December, 2013, challenging the validity of the '752 patent. 

Tuesday, 15 November 2016 18:45

Trademarking and Protecting Marijuana

Last week marked the tipping point for marijuana legalization in the US. Recreational use is now legal in California, as well as Maine, Nevada, and Massachusetts. Medical use was also approved in historically resistant states including North Dakota, Montana, Arkansas, and Florida. The national cannabis industry as now tripled in size, primarily attributed to California's recent legalization, which could exceed the size of its famed wine businesses, with the market projected to grow to $22 billion in four years, from $7 billion this year in 2016. However, conflicts with federal law still exist, including the ability to protect marijuana branding.

A new Copyright Office rule will go in effect this December 1, 2016, and will require all service providers to now electronically register with the Copyright Office, in order to qualify for DMCA Safe Harbor. This new filing system replaces the old, and will also require even those who have already filed with the Copyright Office to re-register. Further, re-registration will be required every three years thereafter. The cost of each filing now, however, will only be $6, compared the the $105 fee previously set. The DMCA Safe Harbor provision, codified in 17 USC 512, provides limitations to liability for certain conduct of a service provider's users which may violate the copyright ownership of another, so long as the service provider is in compliance. To avoid inadvertent loss of this protection, please contact your copyright counsel or file a new registration by December 31, 2017.

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