Copyright Protection Doesn’t Monkey Around

The U.S. Copyright Office released an updated 1,222-page “Compendium of U.S. Copyright Office Practices, Third Edition” in 2014 clarifying its position that it “will register an original work of authorship, provided that the work was created by a human being.”  The report goes on to state that “[t]he Office will not register works produced by nature, animals, or plants.  Likewise, the Office cannot register a work purportedly created by divine or supernatural beings, although the Office may register a work where the application or the deposit copy(ies) state that the work was inspired by a divine spirit.”  The report provides examples of works that will not be protected by copyright, and the first example is “A photograph taken by a monkey.”

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The report was originally released weeks after wildlife and nature photographer David Slater claimed that Wikimedia was infringing his copyrights in the “selfies” taken by macaque monkeys in Indonesia by allowing the pictures to be posted in Wikimedia Commons, a library of public domain photos.  Wikimedia refused to remove the images because it believed the monkey was the photographer, and, therefore, the “author” of the photo…and, as non-humans can’t own copyrights, the photo was in the public domain.  Slater argued that he staged the shot and set up the selfie intentionally, so it’s irrelevant that the monkey pressed the shutter (likening the monkey to an assistant).

Although Slater is still claiming copyright ownership in the photos and could file a lawsuit against Wikimedia (as UK or European law may allow Slater to claim ownership if he employed “labour, skill and judgment” in connection with the photographs or they were part of his “intellectual creation”), he is currently offering free canvas prints of the monkey selfie and donating money to the Sulawesi Crested Black Macaques Conservation Programme for each print redeemed.

 

Controlling Your Domain (Name) to Avoid a Domain Name Fumble

Next week’s NFL Draft brings to mind a cautionary tale…

It could happen to any of us, and it almost happened to the Dallas Cowboys at a crucial time.  In the middle of the 2010 NFL season, buzz surrounding whether Cowboys’ head coach Wade Phillips was going to be fired (which was ultimately the case) was at an all-time high.  No doubt, fans, rivals and press were all scouring the internet for updates on the situation, and the Cowboys’ website was probably the prime online destination of the day. Unfortunately, the team forgot to renew the dallascowboys.com domain, and many would-be site visitors got error screens instead of highlights and instant replays. Talk about a game-changing fumble! See related article here.Blue Url Words Shows Org Biz Com Edu

It’s worth noting that the dallascowboys.com domain name was originally purchased in 1995 and probably was reserved for the longest possible time allowed.  Although most domain name registrars timely send email renewal reminders to domain name owners, it’s likely that whomever was initially responsible for the domain name was long gone and the renewal information didn’t get forwarded to the proper person (and, although auto-renew is available, the credit card info on file with the domain name registrar was probably no longer valid as well). It’s lucky that the ‘Boys became aware of the problem (which you might call an incomplete pass) and quickly renewed the domain before someone else (perhaps a disgruntled, recently fired coach) grabbed it and tried to hold it hostage.

At least Dallas Cowboys Football Club, Ltd. was listed as the domain name owner.  Many times, the person who originally registers the domain name (whether an employee of the organization or someone with the company hired to design the website) is listed as the owner of the domain name and the domain name is never officially transferred to the organization and/or the information doesn’t get updated…which can cause a host of problems for the organization utilizing the domain name (especially if the employee is terminated or if the development company relationship dissolves).

Although the Cowboys had a close call and almost wound up on the disabled list, this is a great example of how easy it can be for an organization to neglect (and almost lose) one of its most important intellectual property assets. We all know how valuable your website is to your business, so here’s what you should do to prepare your domain name offensive strategy…

If you have a website: 

(1)   Determine who is listed as the owner of your domain name.

To find out who owns your domain name and when the registration expires, type in the domain name (e.g., dallascowboys.com) in a WHOIS search database, such as InterNIC, Network Solutions, or GoDaddy.

(2)   Check to ensure that this information is correct. 

If the Administrative and/or Technical Contact information is not in your company’s name, you’ll want to update this information as quickly as possible.

You may need a Domain Name Transfer Agreement to perfect the chain of title for the domain name ownership.  (While you’re at it, you may also want to make sure you have a Website Development Agreement in place with any third-party web developer for the website associated with the domain name so you own/have rights to your web content and design.)

If the domain name is registered to one of your company’s employees or officers, add this to your employee exit checklist to ensure that this information is updated should the employee/officer leave the company.

A disgruntled/terminated employee or website developer with sole control of a company domain name can easily redirect internet, e-mail and intranet traffic within a matter of moments and bring business to a standstill.

(3)   Calendar a reminder for the domain name renewal date.  

The expiration date for the domain name registration is listed in the WHOIS information (see #1 above).

 

Intellectual Property Audits: Taking Stock of Your Intangibles

Most companies routinely perform inventory audits of their physical assets…but — even though it’s not always on the radar — performing audits of intangible assets is equally (and perhaps even more) important.

The objective of an IP audit is to identify and protect intellectual property assets that provide you with Audit Rubber Stamp Shows Financial Accounting Examinationa competitive advantage and promote the goodwill of your business.  By creating a process to identify and take steps to protect intellectual property at least once a year (and perhaps more frequently if IP is a major component of your business), you can ensure that valuable assets are not made public, or otherwise lost or compromised, prior to taking the appropriate actions to protect them.  An intellectual property audit and due diligence review should also be performed in connection with mergers and acquisitions and other buy/sell transactions, as well as financing transactions that affect IP assets.

Typical intellectual property assets include product, service and company names and logos (trademarks), website content, written materials, and creative works (copyrights), formulas, processes, product designs and inventions (patents), and proprietary customer lists and other confidential information, such as pricing data and vendor information (trade secrets). Depending on your industry and the types of products and services you offer, there may be other intellectual property assets to consider.  These items should be identified and reviewed on a regular basis.

An audit should include a variety of information, such as:

  • Name/Description of IP – Identification of mark or domain name, title of copyright or patent
  • Subject of IP – List of goods/services, copyrighted material, description of patent
  • Status of IP – Application and registration number(s), intent-to-use or actual use-based mark, upcoming filing deadlines, IP not protected, related litigation or other disputes or issues
  • When/How/Where the IP Has Been Used – Dates of first use/publication, where/how IP used/published, U.S./International use, and any licenses or agreements regarding the IP
  • Chain of Title – IP owner(s), list of all IP transfers, note any transfers that have not been recorded, note any gaps in the record of ownership

Once your intellectual property has been itemized, you should determine whether any additional protections or updates to existing protections are necessary.  You should also review company policies and agreements with employees, independent contractors and licensees regarding the creation, use and protection of your (or third party) IP assets, as well as confidentiality and non-compete protections.  Additionally, your social media, website and insurance policies should be reviewed, as well as your advertising and marketing materials.  You may also consider whether you need to implement systems to monitor unauthorized use of your IP assets by others and address how to approach infringement scenarios.

Internal IP audits are a great start, but you should consider consulting with an IP attorney to ensure all of your IP has been identified and is protected.

 

Protect Your Brand: The Duty to Police Trademarks

So, you’ve found and registered a unique brand.  Congratulations!  That’s a major accomplishment!  However, once you have rights in a brand, you need to make sure you keep those rights in tact to protect the brand.

Although you are not required to prosecute (or even act immediately against) every potential infringer of your brands, you do have a legal duty to protect against infringement and act reasonably in protecting your trademark rights.  If you fail to properly “police” your marks, you risk diminishing the value of your brand, damaging your goodwill, and weakening your mark.police-294107_1280

In extreme cases, failure to police a mark can lead to abandonment of all trademark rights in the mark.  For example, ASPIRIN used to be a brand name owed by Bayer and ESCALATOR used to be owned by Otis Elevator Company…but these marks became so widely used as the name of the underlying products themselves that the marks became generic terms for those products, and both companies eventually lost their trademark rights in the names.  (Unlike a trademark, a generic name consists of the word commonly used to identify a product.  For example, the terms “computer,” “software” and “internet” are generic names and anyone is free to use them.)

To protect your marks and prevent competitors from using confusingly similar marks that could affect your reputation and bottom line, you should implement a plan to monitor your marks and enforce your rights when necessary.

To help you monitor your marks, you may want to sign up for Watch Services that will notify you of potential issues, such as new trademarks filed with the US Patent and Trademark Office (USPTO), Secretary of State Offices or in foreign countries, as well as domain name filings, common law marks and corporate filings.  At the very least, you may want to set up Google Alerts to monitor mentions of your brand or products on the Internet.  If you have licensed any of your marks to third parties, you should monitor your licensees’ use of your marks as well.

In the event you become aware of a potential infringing or confusingly similar mark, you can determine (in consultation with your trademark attorney) what, if any, actions you may want to take to protect your trademark rights.  Depending on the situation, you may decide to send a cease and desist letter to the infringing party, file an Opposition or Cancellation action with the USPTO, file a lawsuit in State or Federal Court, pursue a combination of these options, or decide on a different strategy.

 

Why Should I Register My Copyrights?

CopyrightThe moment you create and write down, record, photograph or otherwise “fix” your creative work in “any tangible medium of expression,” you automatically have copyright protection in that work under the United States Copyright Act.  Although filing an application for registration of your work with the U.S. Copyright Office is not required for this protection, the benefits of registration could be substantial.

For example, if you wait until your work has been infringed and the infringement occurs more than 3 months after you first made the work publicly available, then you will not be able to obtain statutory damages or attorney’s fees for the infringement, and you’ll have to prove actual damages instead.  This can make or break your chances of recovering any money from the infringer, as actual damages can be difficult to prove and may not exist in certain situations.

Additionally, before you can bring a lawsuit for copyright infringement, you must have a copyright registration for the work that has been infringed.  This means that you could end up filing a copyright application after the infringement occurs and end up paying a much higher filing fee without the main benefits you would have had had you filed the application before the infringement occurred.

Here’s a list of some of the benefits of registration:

  • If registration is made within 3 months after publication of the work OR prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
  • Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin.
  • Registration establishes a public record of the copyright claim.
  • If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
  • Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.

Registration may be made at any time within the life of the copyright. An application for copyright registration contains three essential elements: (1) a completed application form, (2) a nonrefundable filing fee ($35-$55), and (3) a nonreturnable deposit—that is, a copy or copies of the work being registered and “deposited” with the Copyright Office.

As the U.S. is a member to a number of international treaties related to copyright protection, your U.S. copyright rights will be recognized in most countries throughout the world, and vice versa.

 

Why You Should Have Agreements with Your Independent Contractors

bulb-40701_1280A work prepared by an employee within the scope of his employment is owned by the employer (which is known as a “work made for hire”).

However, just because you pay someone to create something for you doesn’t mean it’s a “work made for hire”.

If you hire an independent contractor (such as a freelancer, consultant or third party company) to create something for you (e.g., design a website, create advertising materials, take photographs, etc.), if you want to own the materials created – and not just have limited rights to use the materials –you will need a signed, written agreement transferring the intellectual property rights to you.


Independent Contractors own the copyrights in their creations unless the rights are transferred by a signed, written agreement.


Even if you aren’t going to own the intellectual property rights in the materials created by an independent contractor, an agreement is still a good idea to clarify what rights you have to use (and potentially modify) the materials.