Intellectual Property Archives

Get Ready for the California Consumer Privacy Act (CCPA)

December 31, 2019/in Blog, Business, Intellectual Property /by Joshua Biletsky

California’s new privacy rights and consumer protection law will change the internet and provide Californians with greater control over their data.

On January 1, 2020, AB-375, which is now titled the California Consumer Privacy Act (CCPA), came into effect and revolutionized how companies across the globe interact with consumer data. Specifically, the law dictates how businesses are permitted to collect, access, delete, and share California consumer’s personal information. Despite only being a state law, worldwide compliance from companies has already started due in part to California’s population of nearly 40,000,000 as well as the CCPA’s broad definition of the who constitutes a “California resident.”

Who does the CCPA apply to?

California Consumer Privacy Act applies to companies collecting data from California consumers.

The law only applies to companies who meet the following criteria:

Is a business that actively or passively collects, buys, rents, gathers, obtains, receives, or accesses information that identifies, relates to, describes, is associated with, or could reasonably be directly or indirectly linked with a particular California consumer or household; AND
Is a business that meets one or more of the the following requirements:

Has gross annual revenues in excess of $25 million;
Buys, receives, or sells the personal information of 50,000 or more consumers, households, or devices; OR
Derives 50% or more of annual revenues from selling consumers’ personal information.

As you’ve likely noticed, many of the major websites that you visit or are subscribed to have all recently announce updates that have been made to their Privacy Policy. These changes are being done by companies that meet the above criteria as well as those who are taking precautionary measures to become compliant, due to the severity of consequences which may result from noncompliance.

What does CCPA require companies to do?

The CCPA requires companies who collect personally identifiable information from California residents to comply with the law’s various requirements. Importantly, the company does not have to be located in, do business with or otherwise carry out operations in California, since the law’s application focuses on the user’s residency.

Notice – Provide consumers with advanced detailed notice of the type of information that the site collects from users and visitors.
Respond – Establish a procedure for responding to consumer’s requests and responses to notices.
- Opt-Out – Consumers may request that the company will not sell their personal information. Companies are required to include a “Do Not Sell My Info” link.
- Know – Businesses must disclose the personal information that is being collected, stored, used or sold. Consumers may request to know what type of personal information has been collected.
- Delete – Requires businesses to comply with a consumer’s request to delete personally identifiable information.
Act – Compliance is achieved by responding to a user’s request and by acting in accordance with the CCPA’s requirements. Additionally, businesses are required to verify the identity of a person who submits a request to know or to delete collected personal data and can deny requests.
Disclose – Companies must disclose any financial incentives that the company receives in connection with the transfer or sale of personally identifiable information. Companies must also disclose any third parties who receives (through transfer, disclosure, sale or otherwise) personally identifiable information from the company as well as any related financial transactions.
Maintain – Establish and keep records, particularly of every request the company receives and how the company responds.

Which consumers can take advantage of the CCPA’s rights and privileges?

In addition to the law applying to company’s with or without California connections, the law is also applied to a broad definition of persons who are physically located both in and out of California . The definition of “resident” is provided in Title 18 of the California Code of Regulations § 17014 and applies to individuals who are considered to be a resident whether or not they are domiciled in California as well as non-residents who are domiciled in California.

How does the CCPA compare with the GDPR?

California Consumer Privacy Act versus General Data Protection Regulation

The California Consumer Protection Act is set to be a digital game changer when it comes to how companies and consumers interact with one another. Recently. the European Union (EU) raised the bar for requirements for sites that collect personally identifiable data have to adhere to. The new EU law is the General Data Protection Regulation (GDPR).

Matter	GDPR (General Data Protection Regulation)	CCPA (California Consumer Privacy Act)
Who [The law applies to]	Consumer: Persons who are identifiable from data that’s collected. Company: Person or entity who determines the means and purposes of processing activities.	Consumer: California residents. Company: Person or entity who collects personally identifiable information from California resident and meets one or more requirements.
What [Information is covered]	Personal data is any information relating to an identified or identifiable data subject.	Personal information that identifies, relates to, describes, is capable of being associated with, or may reasonably be linked, directly or indirectly, with a particular consumer or household.
Where [Consumers or Companies are located]	Applies to organizations outside the EU if they monitor the behavior of persons in the EU or offer goods or services to persons within the EU.	Consumer: California residents regardless of where they are located. Non-residents who are located in California. Company: California location not required.
Requirements	• Notice to be sent within 1 month following collection of personally identifiable information,. • Notice to include specifics about type of data collected, how it was collected and why it was collected. • Consumers may request removal or information.	• Notice to be sent prior to or upon collecting personally identifiable information. • Notice must include specifics of the type of information collected. • Consumers may request a copy of collected information or request its deletion.
Security	Companies must implement appropriate security measures when processing data.	Companies have a duty to implement and maintain reasonable security procedures and practices.
Enforcement	Administrative fines up to €20 million or up to 4% of company’s annual worldwide revenue.	Civil actions brought and enforced by Attorney General. Penalties of up to $7,500 per violation.

What happens now?

Implementing precautionary measures.

An impact report prepared for the California Attorney General office estimates the total cost of CCPA compliance will be approximately $55 billion. The CCPA’s broad definitions concerning the type of information that’s being collected, along with an expansive class of consumers that the law applies to has resulted in a majority of major online sites and services to rush towards becoming compliant with the CCPA’s requirements. Additionally, other states around the U.S, such as Illinois, Texas, Maine, Vermont and others have either passed or have introduced new laws to govern the collection of personally identifiable information so as to increase the protection of consumer data privacy.

Applying universal changes.

So far, the trend has been for companies to become compliant by adopting data management and consumer interaction procedures for all users and visitors, as opposed to being dedicated for visitors and users who meet the CCPA’s definition of being a “California resident.” This practice is anticipated to ultimately be more cost and resource effective given the CCPA’s broad and encompassing language as well as the likelihood that other jurisdictions are anticipated to follow in California’s trend of protection over the gathering of consumer’s personally identifiable information.

Compliance with CCPA’s requirements.

By taking an early stance towards becoming compliant with the CCPA, you may be saving your business from exposure to liability for the CCPA’s fines and penalties. Consult with a CCPA Attorney today and learn more about the internet’s latest breakthrough in protecting consumer privacy.

To Trademark a Smell

July 30, 2015/in Blog, Intellectual Property, Trademark /by Joshua Biletsky

Trademarks are more than just logos and catchy phrases…

When a trademark comes to mind, people typically think of logos, brands, and the names of products or services. But that’s not all that is capable of being trademarked. In the United States, non-conventional trademarks are capable of being registered as well. These non-conventional trademarks include colors, sounds, tastes, and scents.

For scent trademarks (or olfactory marks), it wasn’t until 1990 when the first smell was successfully trademarked. That first scent trademark was for a brand of sewing thread and embroidery yarn which contained a scent “reminiscent of Plumeria blossoms” (In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990).

Although there has been successful registrations (mostly on the Supplemental Register) of scent marks since then, it is not necessarily the easiest thing to trademark. In the United States, a valid trademark must not be functional and must be distinctive. Proving non-functionality requires a showing that the scent be not “essential to the use or purpose of the article or if it affects the cost or quality of the article.” (Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995)). This essentially means that those naturally occurring smells of a product are likely functional as they perform a significant function in the existence of the product.

Take for instance the scent of perfume. The scent of a perfume is inherent to the product since it is the function of the smell that is the basis for the product. In other words, if the product has a natural scent or if the product’s scent is what makes consumers buy the product, then the scent will likely not be able to be trademarked.

Even after being able to show that the scent is not functional, the distinctive component can be another hurdle in the trademark process. Distinctiveness is one of the core concepts of trademark law and deals with how “descriptive” the mark is of the product. How distinctive the mark is depends on whether there is a relation between the mark and the product or service. For instance, if a lawn mower company was named “Lawn Mower” the name would be very descriptive of the product and therefore, the trademark would not be distinct from the product and the trademark would likely be refused.

Distinctiveness can also be acquired through use and a show of evidence that consumers are readily able to identify the product or service. As you can see, distinctiveness is not just a complex concept, but it can also be difficult to prove.

It is because of the hurdles of non-functionality and distinctiveness that trying to trademark a scent can be such a difficult task. To make matters a little more difficult, you must also provide a description of the mark in the trademark application. Descriptions of scents are difficult in that not only are scents subjective, but putting words to smells can sometimes be difficult as well.

Keep in mind however that these obstacles for scent trademarks are specific to the United States. In Europe, it is a much different story for olfactory trademarks. The Office for Harmonization in the Internal Market is the governing body in the European Union. There, the issue is not functionality, but rather that the trademark needs to be “represented graphically” and be “capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

The biggest hurdle with obtaining a scent trademark in the EU is the “represented graphically” part. One court has held that if the mark can be graphically represented “by means of images, lines or characters” in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective” way, the sign may be eligible for registration. Ralf Sieckmann v. Deutsches Patent- und Markenamt (Case C-273/00, [2002] ECR I-11737 (ECJ Dec. 12, 2002)).

Beyond the United States and the EU, the status of scent trademarks vary from country to country and before attempting to trademark a smell, it is best to consult an intellectual property attorney.

For more information on scent trademarks or for assistance with your trademark, contact Biletsky Law.

DMCA Takedown Notice

June 28, 2015/in Blog, Copyright /by Joshua Biletsky

In 1998 the United States enacted the Digital Millenium Copyright Act (DMCA). The DMCA updated various parts of the then current copyright laws. One such provision that was updated was the Online Copyright Infringement Liability Limitation Act (OCILLA). OCILLA provides a conditional safe harbor for Online Service Providers and similar “middlemen of the internet” (think content hosting sites such as Youtube, Vimeo, etc.).

While there are many different parts of the OCILLA which provide certain protections from liability, this article will focus in particular on the Takedown Provisions. The Takedown Provisions require that in order for an Online Service Provider to be able to take advantage of the safe harbor provisions, they must comply with certain notices and in particular, any Takedown Notices. These Takedown Notices act as an easy way for content owners to be able to protect their intellectual property by notifying the service provider that their intellectual property has been infringed upon.

Once the content owner has made the service provider aware of the infringment, it is now up to the service provider to take action to stop the infringment. When a service provider complies with the Takedown Notice and removes the content, the service provider is deemed to have fulfilled their obligations under the law and they can then take advantage of the safe harbor provisions which protect them from being liable for the infringement.

If the service provider is made aware of the infringement and does not take action to prevent it, if such infingement is occuring, then the service provider may not be in compliance with the law and therefore may not be able to take advantage of the safe harbor provisions.

So how do you file one of these Takedown Notices? It is advised that if you do find out that your intellectual property is being infringed that you contact an intellectual property or entertainment lawyer immediately. However, to explain what the process is:

First, it is important to determine whether the content provider provides a way for content owners to send a Takedown Notice. Usually, this will be found in the very bottom of a website and will be under the “Terms of Use” (or similar worded page) or there may be a “DMCA” link. Within the terms or in the DMCA page, there will be a list of statements that must be sent to the service provider in order for hte Takedown Notice to be in compliance with the law:

Worded in one way or another, the following is required in order for the Takedown Notice to be effective:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

Once a Takedown Notice which includes all of the above is sent to the servie provider, it is up to them whether or not to comply. Many of the larger service providers will have certain procedures in place to determine whether there actually has been infringement and whether they should remove the content.

While what goes into the Takedown Notice is pretty much the same for every service provider, each service provider has their own protocol for dealing with the notices. You may or may not receive any kind of confirmation or response. You may eventually notice that the infringing content has been removed, or not.

If you have sent a service provider a DMCA Takedown Notice but the infringing content has not been removed, it is important that you contact an attorney to take the next steps necessary to protect your intellectual property.

Has your content been posted without your permission? Contact Biletsky Law to ensure that your intellectual property rights are protected.

Trademark Classes

June 28, 2015/in Blog, Trademark /by Joshua Biletsky

A common misperception about trademark law is that once you have registered a trademark, that you own all of the rights to the name, logo, or brand (these are referred to as the “mark”). In reality, this is not necessarily the case. When registering a trademark, one of the essential steps is choosing which class best fits your product or service. Once the trademark application survives the examination process, you will then receive the trademark rights to your mark in the particular class that you selected.

For example, Coca-Cola may have originally registered their mark as a beverage (Perhaps under Class 032 – Beers and Beverages). At that point, someone who sold couches and other furniture (Class 020 – Furniture) under the name Coca-Cola would likely have been permitted to use the name Coca-Cola because there isn’t a high likelihood of confusion amongst consumers. A likelihood of confusion is the standard for trademark infringment, but that’s a whole other topic for another article!

Nowadays, because of the massive branding around Coca-Cola, and the possibility of the company having registered their mark under a multitude of different classes, the opportunities for other people to come up and use the name in a different product or service is diminishing.

Before getting back to what the different classes mean, here is a little history on the classification system. In 1957, the Nice Agreement, or the “Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks” established a set of classifications to be used as the basis of registering trademarks.

One of the underlying purposes for establishing this class system was to set up a uniform method for making it easier for trademarks to be classified appropriately regardless of the country of origin of the mark. As of now, the Nice Classification had been adopted by 84 different countries and contains over 11,000 detailed descriptions of different products and services.

Now that you have a basic understanding of what classes are, and where they came from, we can dive into what this all means for you. The classes are divided into two major subsects, Products and Services. There are 34 product classes and 11 service class. Each of these classes are further divided into descriptions. For instance if you are selling camoflauge t-shirts the class would be 025 – Clothing and the description would be “Camoflauge T-shirt.”

Each class has a separate filing fee which ranges between $225 and $375. However, descriptions within each class can be added at no additional fee. So, going off the t-shirt example, if you are also selling dress shirts and sweat shirts, there is no additional fee to include those descriptions in your trademark application.

So, if you have enough money to be able to register your trademark under each class, you’ll be able to have the trademark rights to your mark for pretty much everything, right? Well, not exactly. Trademarks are based upon the use of the mark in commerce. However there are many situations where you may wish to obtain the trademark rights to a product or service but you may not be using the mark in those service quite yet.

That’s where the “Intent to Use” basis comes in. What this means is that you are not currently using the trademark for that product or service, but you intend to do so. However, you cannot just state that you intend to use the mark for every product or service, rather you need to have a bonafide intent to do so. The trademark application even requires you to state that you intend to use that particular class, under penalty of perjury. This means that lying about whether you had the intent to use the product or class can come with serious consequences.

So that is a crash course about the classification system for trademarks. There are many other nuansces to the the trademark process and for the classification selection process. Before submitting a trademark application, it is important that you speak with an intellectual property attorney to help you choose which class is best for your product or service.

For more information on trademarks or the classification system, contact Biletsky Law.

Streaming Issues

May 18, 2015/in Blog, Copyright /by Joshua Biletsky

The way that people consume media has been evolving throughout the 20^th century. The advent of commercial radio in 1920 followed by the first television station in 1941 were seen as milestones in the evolution of entertainment. Fast forward to the second half of the century and the evolution of our media consumption has evolved at an unprecedented rate. Radio and phonographs evolved to audio cassettes which evolved into 8-tracks and eventually compact discs. Terrestrial television morphed into cable and satellite, which was eventually recorded onto VHSs, DVDs, and BluRay discs.

Even the 21^st century has made a leap into a new format which was not even conceivable until recently. In 2000, the way that music was being consumed drastically changed as a result of downloading services such as Napster, Kazaa, and Limewire. From that point on, the digital download started taking a larger foothold in the marketplace of the music industry. Within just a few short years, as personal computers and internet capabilities advanced, streaming services began to flood the marketplace where downloads had just recently taken over.

Nowadays, high speed internet delivers unlimited steaming capabilities right into our hands, anywhere in the world. Streaming media still continues to evolve with resolution and quality constantly reaching new levels. But with anything new, comes new problems. The earlier years of internet media and in particular, downloadable content, brought a new wave of piracy into the world. Copyright infringement soon became as easy as the click of a button. While the music and motion picture industry are constantly battling to thwart online piracy, streaming media has not only caused those industries new headaches, but has also created these headaches for others.

Take for example some of the recent sporting events that have taken place. On May 2^nd, the world watched the “boxing match of the century” featuring Floyd Mayweather against Manny Pacquiao. Pay-per-view orders of the fight in the U.S were around $100 per order. The revenue earned from just the video on demand sales sky rocketed to reach record breaking figures. But it wasn’t just the paying or legally watching customers who were able to view the fight.

In the beginning months of 2015, well known and easy to use live-streaming applications have started to transform people’s ability to transmit content around the world, live. While the purpose of these applications are to facilitate the distribution of user made content or to broadcast certain events, these applications are more commonly being used to distribute the content of others illegally. HBO and Showtime, the co-producers of the Mayweather/Pacquiao fight, had done all they could to attempt to eliminate the possibility of people in the crowd streaming the fight for free. Other live-streaming concerns include movie premiers, sporting events, music festivals, concerts and other pay-to-view events.

With the spread of the popularity of these types of applications, it is difficult to see how content producers will be able to keep their content from being distributed for free. But, going back to the beginning of this article, this isn’t exactly the first time that these content makers have had to deal with this issue. Starting with programs such as Napster in 2000 and torrent downloading software thereafter, content producers have been in this struggle for a while.

Perhaps most hardly hit has been the music industry. Albums featuring 10-15 songs were at one point able to get a premium sale price of $20 per unit. With the explosion of downloading software, the business models have had to shift and now iTunes sells songs for just 99 cents and streaming sites offering music for free.

But the music industry hasn’t collapsed because of this, and in fact, new artists that would never have been known are now starting to thrive due to the free distribution of their music which has allowed consumers who would not have usually purchased their music to become fans. Where the future of streaming content goes is anybody’s guess, but what impact it has on the entertainment industry is up to the consumers.

For more information about the legal issues involved in streaming media, contact Biletsky Law.

Electric Daisy Carnival Trademark Battle

May 18, 2015/in Blog, Music, Trademark /by Joshua Biletsky

In 2009, a trademark application for the mark “Electric Daisy Carnival” was filed on behalf of Pasquale Rotella of what is now Insomniac Holdings LLC. The trademark application alleged use as early as 1997. On April 20, 2015 Gary Richards of HARD Events filed a lawsuit seeking to cancel Insomniac’s trademark. Before diving into who owns what, it is important to understand where this lawsuit is coming from.

Starting as early as 1991, Gary Richards and Stephen Enos (also known as Dr. Kool-Aid) began hosting events under the name “Electric Daisy Carnival” in Southern California. It wasn’t until 1997 when Rotella began using the name for Insomniac’s flagship festival.

For nearly six years, Insomniac’s use of the “Electric Daisy Carnival” trademark went uncontested. Then, on June 5, 2013 Enos filed an Australian trademark application for “Electric Daisy Carnival.” After that trademark was filed, on June 21^st, Insomniac filed an Australian trademark application for “Electric Daisy Carnival” as well. In addition to the filing, Insomniac also opposed Enos’ application. Taking the legal battle closer to home, some five years after the initial U.S trademark application for “Electric Daisy Carnival” was submitted, Enos filed suit in California against Insomniac claiming prior use of the mark.

While the outcome of the Australian trademark opposition and the U.S lawsuit is uncertain, Richard’s claim for ownership of the mark has thrown Insomniac back into the courts. Even though this lawsuit is likely to last for several months before any major developments occur, there is plenty of time to speculate what will happen.

Although Richards may not have federally registered the trademark, a person or a company receives “common law” trademark rights to the mark just by using the mark in commerce. However, unlike other intellectual property rights such as copyrights and patents, the user of a trademark only owns the rights to that mark so long as they are using the mark in commerce. What this means is that although Richards may have been the initial user of the mark, if Insomniac is able to show that Richards “abandoned” or failed to continuously use “Electric Daisy Carnival,” then Richards argument that he is the rightful owner to the mark will likely be met with rejection.

While the battle over the rights to the “Electric Daisy Carnival” wages on, Insomniac will continue to use the brand and has its’ flagship festival in Las Vegas lined up for next month with revenues expected to surpass the record-breaking receipts of previous years.

For more information about trademarks or to have a trademark of your own registered, contact Biletsky Law.

Work-for-Hire

April 13, 2015/in Blog, Business, Copyright /by Joshua Biletsky

If you take a closer look into your favorite movie, television show, or song, you may come to realize that there are a lot of different components that go into these productions. Even more so, each individual who contributed to the project may have different roles in the production as well. Take a hit song for instance; the music that you are listening to is likely owned by a record label and/or a publisher. Although it is the artist’s song that you are listening to, the song is likely owned by someone other than the artist. Likewise, the important individuals who produced or mastered the song likely have no ownership interest in the song either.

This comes from an important concept in copyright law called a “work-for-hire.” Under the U.S Copyright Act, a work-for-hire is something that is either a work prepared by an employee within the scope of their employment or a “work commissioned for use as a collective work, part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as an answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire” (17 U.S.C 101) .

Before explaining the concept of work-for-hire more, it is essential to understand why it is so important for something to be categorized as a work-for-hire. What it mostly comes down to is ownership. When a work-for-hire is commissioned either by an employer or by someone contracting an individual or a group to create the work, that person is entitled to the complete ownership of the copyright within that work. Since the owner of the copyright is the only one who is legally allowed to exploit the work (without permission or a license otherwise), this means that the owner gets all of the money that comes out of the work.

Now that you see some of the importance of a work-for-hire, we can discuss what it is and when it applies. Normally, a person automatically owns the copyright in the work that someone creates (an artist owns the painting, a writer owns the book, etc.), but when something is designated as a work-for-hire, the employer or the person commissioning the work automatically becomes the owner. As I mentioned above, the work-for-hire concept is often found in an employer-employee relationship. A big issue that the courts have had to deal is when an independent contractor is involved, but that is a topic for another article. The reason that the employer-employee relationship requires that the works that are created by an employee become the property of the employer is simple; the employee is being employed to create the work (note the “within the scope of employment” definition above; whether someone is within their scope of employment is again, another issue).

In addition to the typical employer-employee relationship, there are also the works that are commissioned by another person. This is where we come back to the example of the song, or a movie, or a television show. A movie is a great example because it is even defined in the U.S Copyright Act as something that a work-for-hire may qualify for. Songs often qualify as well under one or more definitions such as “collective work” or “compilation”. The reason songs qualify is because they are actually compilations or collective works. If you think about it, it is not as often that you find an artist that writes, records, producers, and masters their own song (Although these artists still do exist!) and that’s where the compilation part comes in.

So to bring it all together, a work-for-hire is a vital piece of copyright law that allows other people to own and monetize off of the work of others. Of course, the people who make it are often rewarded (think advances, royalties, cash compensation, etc.) and that is just one part of what makes the entertainment industry function.

For more information on the concept of a Work-for-Hire, contact Biletsky Law.

Happy Birthday Copyright

The timeless classic “Happy Birthday” has been around in some form since as early as the late 19th century. However, for the last 80 years, there has been an underlying ownership claim to the song which has required those who had performed the song to pay license fees or royalties.

First, a little background about the song “Happy Birthday.” In 1893 Patty and Mildred Hill composed a tune called “Good Morning to All.” Around 1912, lyrics were added to this tune and the song became “Happy Birthday to You.” Up until this time, there were never any registered copyrights for the song and it is even disputed if the song itself was written down anywhere. The reason that this is an important aspect of the story is that one of the requirements for a copyright to exist is that it be embodied in a “tangible medium of expression.” (See my blog post “WHAT’S IN A COPYRIGHT?”).

In 1935 a company named The Summy Company registered the copyright in a song entitled “Happy Birthday.” This copyright was then purchased by Warner/Chappell Music for an estimated $5 million.

Modernly, Warner/Chappell Music has aggressively protected what the Guinness Book of Records calls the “the most recognized song in the English language.” Synchronization licenses (a license to use the music in a TV show or movie) can cost thousands of dollars with willful copyright infringement coming with a hefty $150,000 penalty.

In 2013, a class action lawsuit was filed against Warner/Chappell Music to refute their copyright claim to the renowned song. The class action was brought by Good Morning to You Productions Corp. on behalf of the individuals and companies who had to shell out sometimes thousands of dollars to use the song in television shows and movies joined the suit. One of the main arguments against Warner/Chappell’s ownership is simple, that the original tune, made in 1893, is no longer subject to copyright protection.

Like most other laws in the U.S, copyright laws have evolved over time. The largest milestones in copyright law in the U.S have been in the years 1790, 1909, 1976, and 1998. Without going too specific into each law, copyrights under the 1790 law enjoyed a duration (how long they lasted) of up to 28 years. Then the Copyright Act of 1909 changed the duration to a maximum of 56 years. The modern 1976 Copyright Act changed the duration to the life of the author plus 50 years. Finally, duration was changed to where we are today, the life of the author plus 70. As you can see from the duration of copyrights above, a work that was copyrighted in 1893 would likely not still be valid.

As of now, the suit is slowly inching towards trial with motions having been heard as recent as March of 2015. Either way, this trial is likely to last for a while as the battle between one of the largest music publishers in the world continues.

For more information on copyright laws, contact Biletsky Law

Cuba Trademarks

April 13, 2015/in Blog, Business, Trademark /by Joshua Biletsky

For the last 50 years, Cuba has been an almost unreachable destination for U.S citizens. Sure, there were loop holes and ways to get there, but for the majority, Cuba was an off-limits territory. This all changed in December of 2014 when U.S President Obama declared the easing of the embargo that has placed restrictions between the U.S and Cuba. With this announcement came a whole slew of new issue involving U.S and Cuban relations including visitation, immigration, telecommunications, and of course business.

Now that the trade lines between the U.S and Cuba are starting to resurface, there is a new realization of the untapped market that lies just 90 miles from the Florida coast. Cuba, which is home to over 11 million people, has not been saturated by any U.S companies for the last half century and as businesses start to pour in, there are several vital issues to take into consideration. One such consideration is the protection of intellectual property and, in particular, trademarks.

Cuba is a “first to file” jurisdiction where the first individual or company to file a trademark will be entitled to the use of that trademark. This is in contrast to the U.S which has a “first in use” policy which makes it that whoever used the mark first is the one that is entitled to continue to use of the mark. Now that U.S companies are permitted to obtain Cuban trademarks, it is essential that companies evaluate whether steps need to be taken in order to protect their intellectual property.

So what does this mean? Well, it doesn’t necessarily mean that without action that your trademark will be taken, but if you are in an industry where there is some likelihood of a cross-over between markets, then it might be a good idea to secure your trademark.

As of now, there are two ways to secure your trademark in the Cuban territory. Which way is appropriate for you depends heavily on your circumstances and it is best to consult an attorney before taking either step. One way to secure your trademark is to register your pre-existing mark with the World Intellectual Property Organization (WIPO) under the Madrid Protocol Treaty. Another way to secure the trademark is to register the mark with the Oficina Cubana de la Propiedad Industrial (OCPI), which is the Cuban equivalent of the US Patent and Trademark Office (USPTO). The new developments in the U.S – Cuba relations also allow U.S companies to pay filing fees, obtaining Cuban registered agents, and to litigate to protect their intellectual property.

For more information on how to protect your intellectual property in the U.S and abroad, contact Biletsky Law.

What’s In A Copyright?

In modern society, copyrights come up more than you may notice. Basically every book, movie, television show, play, and drawing are subject to copyright laws. Understanding what exactly copyrights are and how copyright laws work will help give you a better understanding of the subject.

So let’s start with what a copyright is. Copyright law has a long history dating back several hundred years, but for now, we’ll focus on modern copyright law in the United States. A copyright is an exclusive right that allows someone to print, publish, perform, film, or record literary, artistic, or musical material. What that means is that the owner of the copyright controls how the copyright is used legally. An owner can license, transfer, or sell their copyright and that’s where most copyright owners are able to make money from their creation.

What does it take to have a copyright?

Owning a copyright is easy if you created an original work. In fact, you do not even need to go through the formal process of registration in order to own a copyright. Copyright is automatically granted once an original work is “fixed in a tangible medium of expression.” So let’s talk about what it takes to have a copyright:

Originality

It should come as no surprise that in order to have the copyright to something that it needs to be original. If this was not the case, everyone would just attempt to gain the copyrights to work that people had already created and the law would essentially be useless. Determining whether something is “original” can be a complex issue and courts around the country have wrestled with this issue time and time again. Whether you are able to use enough creativity to make someone else’s work original is a separate issue in and of itself, but if you are the original creator and have used creativity in the objects’ creation, you have likely met the requirement for originality.

Fixation

Fixation is a concept that may seem more complex to understand, but for most purposes, it is rather straight forward. Keep in mind however that this concept has continued to change along with the evolution of digital media. Putting many of the digital media issues aside, fixation comes from simply putting the work onto something “fixed.” When words are printed on pages, they are fixed. When a song is saved as an .mp3, it is fixed. When the frames of a movie are imprinted onto film, it is fixed. And well…you get the point, almost anything physical (or digital if it can be saved) will fulfill the fixation requirement.

So if you’ve used creativity to create an original piece of work that is fixed onto something tangible, you may have a copyright. Copyrights are automatic in that you do not need to register your work with the Copyright Office in order for you to have a valid copyright. Rather, as soon as it goes down on paper or is saved as a file, you receive copyright protection. The classic myth that you need to mail it to yourself or any of those shortcuts to copyright ownership is unnecessary. However, even if you do have the copyright to the work, you may still consider registering the copyright.

So why should I register?

Although you may automatically have a copyright, registration is still an important part of protecting your work. Here are some of the advantages of registration:

You can sue

In order to sue for copyright infringement you must have registered your copyright. Although you may still be able to bring a lawsuit against the infringing party, to bring a claim for copyright infringement, you need to register. In addition to this benefit, timely registration can provide you with even more benefits. Timely registration allows you the benefit of receiving statutory damages. Statutory damages range between $750 to $30,000 or can go up to $150,000 for willful infringement. Whether registration in timely depends on several other factors such as the date of publication of the work.

It makes things easier

Registering your copyright makes several things easier. First, it makes it easier for you to win a lawsuit. The reason for this is because it makes it harder for someone to argue that the infringement was innocent because registration provides notice to everyone that you are the owner of the work.

Registration also makes it easier to transfer, license, or sell your copyrighted work. In fact, certain agreements are not even possible without your work being registered. For example, agreements that lead to the production of films and television shows usually require purchase agreements for the underlying work. Many of these agreements require the copyright to be licensed or assigned to the other company. Without having your work copyrighted it may be harder to enter into these kinds of agreements.

Now what?

If you had not given serious consideration into registering your work with the U.S. Copyright Office, hopefully you’re thinking about it now. The Copyright Office has made it easy to register your copyright and the fee for doing so online is only $35 (as opposed to mailing in the registration which costs $65). Depending on the work, registration can be easily be done yourself or if there are complicating circumstances, a legal professional will be able to perform the necessary registration procedures.