Category: Uncategorized

Celebrities Continue to Face Paparazzi Lawsuits for Using Photos of Themselves

Celebrities Can’t Simply Re-Post Photos of Themselves

Sounds crazy, but there is yet another lawsuit on the docket because a celebrity posted a picture of…HERSELF…on social media! Mandy Moore is the latest celebrity to face the wrath of an angered paparazzi; however, this paparazzi has federal copyright protection on his side. Ver the past few years, and rapid growth of social media, many celebrities, including Gigi Hadid, Liam Hemsworth, Ariana Grande, Justin Bieber and even J-Lo, have faced legal consequences for posting photos of themselves – taken by someone else.

Copyright Protects Paparazzi

Paparazzi photographer Josiah Kamau filed a lawsuit against the singer/actress, Moore, alleging copyright infringement. Moore shared a photo of a friend opening a car door for her on an Instagram story with the caption “Chivalry is not dead….” A nice compliment to her pal, right? The catch is, Moore did not take the photo, photog Kamau did, and not only did he take the photo – he federally registered it with the Copyright Office. As we’ve discussed in some of our previous posts – Don’t Do The Crime if You Can’t Pay the Ten Billion Dimes, Protecting the Playas, YouTube Has Your Back – copyright protection is available to all authors of an original work that is fixed in a tangible medium. That protection occurs at the moment of creation. Registering one’s work with the Copyright Office provides additional protections, including but not limited to, statutory damages, aka money, and access to enforce the copyright in federal court.

Kamau is now seeking up to $150,000 in damages from Moore and is demanding a jury trial in his suit filed in the Northern District of Florida.

We know Grande and Bieber quickly settled their copyright infringement suits once they were served. Hadid, on the other hand, was able to have the case against her dismissed on the grounds that the photographer had not fully registered his photograph prior to the filing of the lawsuit. As of the date of posting this blog, Mandy Moore had not been served with a copy of the lawsuit, so we don’t know what her legal response will be quite yet.

Why Can’t Moore Just Post a Photo of Herself?

Well, it’s really very simple – it’s not her property. According to the facts alleged by Kamau, Moore actually used a screen grab tool to copy the photo off of its original posting to use it. Photographers, including paparazzi, make their living off of these photos that they take. So, the photos are original works and they are fixed tangible medium, sufficient for common law copyright protection. With Kamau taking the additional steps and federally registering this photo, among dozens others, he has made himself, as the copyright holder, eligible for statutory damages and if his case is successful, possible attorney fees. That is, of course, if Kamau’s photographs were fully registered prior to filing suit since having merely applied for registration no longer suffices.

What Does this Mean?

If Kamau and other photographers are able to enforce the copyright protection on their celebrity photos, then celebrities will have to be more cautious of taking photos of themselves from the internet and re-posting them on their own social media. Yes indeed, you may need to pay to license a photo of yourself for use on your social media unless the photograph was taken for you. Not all photographers will require a fee, some might just ask for credit. However, Photographers have the right to be compensated for their work, and to decide how and when it is used. This is a concept that is hard for some to swallow in the context of paparazzi, where the photos are taken of people without permission, and yet permission from the paparazzi is needed to re-post, but rights of publicity and privacy rights are a blog for another day.

Be on the lookout for more cases like this, and maybe even some legislative changes to address this particular issue…

For more information on protecting your original works, avoiding copyright infringement or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Visual Artists Rights Act of 1990 (VARA)

Graffiti Earns Millions

A staple of the New York City Skyline – well, maybe just an old warehouse building in Long Island City is torn down. Why does that matter – well the building featured graffiti art from hundreds of artists from all over the world representing over twenty years of artistic expression! All this art and history vanished during the night back in 2013 – without the proper permits!

So, What’s The Issue?

Great question – it would make sense that someone who owns a building – since the early 1970’s can paint it, HOWEVER, Jerry Wolkoff had been renting out the spaces within the building specifically to artists which lead this particular area – eventually known as 5Pointz – to become one of the greatest international graffiti centers. This area, neighboring MoMa PS1 and the Sculpture Center, drew in thousands of tourists yearly because of the graffiti art all over the 5Pointz space. World renowned artists left their mark in its over 20-year period. Then, it was all gone in one night.

Again – What’s the Issue?

Again, great question. Well, 21 of the artists filed suit against Mr. Wolkoff under the Visual Artists Rights Act of 1990. This act – better known as VARA, protects moral rights of visual artists. For more in depth conversation on moral rights – please refer back to our June Blog – Moral Rights – WHAT ARE THOSE? – but to briefly sum it up works of art that meet certain requirements give the authors of those works additional rights, regardless of any physical ownership of the work itself. Specifically, VARA, outlines the exclusive rights to authors including the right to claim authorship, right to prevent the use of one’s name on art they did not create, right to prevent their name being associated with any work that would dishonor their reputation, and finally a right to prevent distortion, mutilation, or modification that would prejudice the author’s honor or reputation.

VARA grants the author of a “work of visual art” the right to prevent the destruction of a work of “recognized stature.” Specifically, the work must be either a painting, drawing, print, sculpture, still photographic image and they have to be produced for exhibition only – i.e. display only – , and existing in single copies or in limited editions of 200 or fewer copies, signed and numbered by the artist. Further, although VARA does not define “recognized stature,” courts typically apply a two-part test: (1) the work is viewed as having merit and (2) this stature is recognized by art experts, other members of the artistic community, or some other cross-section of society. Proving this requirement might require expert witness analysis unless the work is already sufficiently recognized as important in a community.

Case at Hand

So, what happened here to give rise to a legal cause of action? Mr. Wolkoff had allowed this graffiti – at times even requesting it to decorate the building to match the evolving neighborhood. When the artists learned of his decision to tear down the building, they requested he not destroy their art, they filed for landmark status and even attempted to buy the building from him to preserve their works. It was very clear the artists did not want their work destroyed – but instead of waiting the 90 days to properly notify the artists of the demolition – Wolkoff just went ahead and had 45 works on the exterior of the building painted over with white paint. The reaction from artists, and 5Pointz fans was immediate, and photographs began to appear on social media grieving the loss of the work and lamenting the white-washing of the building.

The artists sued in 2017, Judge Frederic Block presided and in November 2017 a jury ruled in favor of the artists, and in a February 2018 opinion Judge Block fixed the damages at an unprecedented $6.75 million. Of course, the case was appealed, but in February 2020 the verdict was upheld by the Second Circuit Court of Appeals. Mr. Wolkoff – who apparently showed no remorse – is required to pay $150,000 to the artists of each of the 45 pieces of art that were found to be of “recognized stature” entitled to protection under VARA.

Why Does This All Matter?

This case is significant because it tested the protection that VARA can offer– specifically these artists argued they had a right to prevent destruction of their work. The most significant aspect of this case, outside of the maximum damages awarded, was the fact that the works were graffiti art. This case highlights the reach that VARA has into all types of art. Graffiti began as subversive self-expression, by people simply using spray paint to tag their names or symbols on various walls or subways train cars. This form of expression has now evolved into a form of art that has been found to have “recognized stature” worthy of federal protection. Obviously, there are still specific requirements to be met to meet VARA’s “recognized stature” requirements, but in the finding the 45 pieces of graffiti art were protected by VARA, the courts have confirmed that these artists’ works were important and were entitled to respect and protection.

For more information on protecting your original works, VARA or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Drake Plays Fair (Use)

Although the music industry is always evolving with new music being created, many artists will look back to music of the past and incorporate it in their new works. Many artists, particularly in hip-hop and electronic often use pieces of music from older songs to reinvent them in their new songs. Whether this is done properly, or whether the artist infringes on the copyrights of a prior work is common fodder for federal courts. Recently, hip-hop superstar Drake received a favorable decision from the Second Circuit affirming the holding from the lower court that his use of a spoken-word song from 1982, was considered fair use and not copyright infringement.

Sampling vs. Copyright Infringement

Copyright infringement is a serious offense that authors of original works take very seriously. Infringement is the use of a protected work without the author’s permission. Certain exclusive rights are granted to copyright holders – including the ability to distribute or reproduce the work. Copyright protection begins immediately at creation and does not require registration – copyright registration is a little different, basically, registering a work offers more protections, its encouraged but not required to protect a work. Taking someone else’s work and claiming it as your own or even just distributing it without their permission can carry serious punishment – it is a FEDERAL offense – the notice at the beginning of every movie you watch – it is real!

Sampling is something that often gets artists wrapped up in copyright infringement disputes. Sampling is – well kind of what it sounds like – its taking a piece of a copyrighted work and using a sample of it. We’ve all heard a popular song with a familiar snip of an older tune, from Jay-Z’s use of the musical theater hit “Hard Knock Life”, to Lady Gaga’s sample of Queen’s “We Will Rock You” in her song “You and I.” This is not to be confused with a “cover song” which is a musician’s reworking, updating or interpretation of an entire prior song (which by the way carries its own set of issues regarding licensing for non-infringing use). Under U.S. Copyright law sampling is legal WITH THE PROPER PERMISSIONS. In order to sample you must have permission from both the owner of master recording – usually owned by the label – and then also the permission from the owner of the underwriting musical composition – usually the publisher or the songwriter. With both of these permissions – and likely some type of license and fee – sampling is permitted.

However, in limited cases the Fair Use Doctrine may give an artist use of a prior work, without the need to license the work or pay the original artist(s) any fee for the use. While it is important that the law allow for protection of original works through copyrights, it also hold open several window for the “fair use” of those works in order to promote “the progress of science and useful arts.” If that sounds confusing, it basically is, and you should not attempt to rely on a fair use defense without assistance from an experienced intellectual property attorney or you may find yourself a copyright infringer.

What Drake Did

The Second Circuit ultimately held Drake did not sample or infringe on the complaining songwriters’ work as the songwriters suggested. The Second Circuit found that Drake his team used the song under the Fair Use Doctrine. The Fair Use Doctrine is a defense against copyright infringement. This legal doctrine was created to promote the freedom of expression by allowing unlicensed use of certain works in certain circumstances. However, it’s not just a free for all, there is an analysis that must be done to decide if a work is protected under fair use. The courts will look at the:

  • Purpose and character of the use,
    Is it the same purpose as the original or something different?
  • the nature of the copyrighted work,
    Not often a big factor, but used to examine the form of the new work
  • the amount of the work that is used, and;
    Is the new artist using just a piece or the whole thing?
  • the effect of the use of the work upon potential
    Could this new use harm any potential benefit the old work has?

Courts are always looking at each case on its own set of facts, there may be other factors considered, however these are the essential elements that will be analyzed.

Drake’s Case

Drake’s 2013 album Nothing was the Same, featured the song Pound Cake/Paris Morton Music 2 – with Jay-Z. This song features 35 seconds of a 1982 spoken-word single “Jimmy Smith Rap.” The Court found that Drake’s particular use of the “Jimmy Smith Rap” was transformative, meaning the new song used the old work for a purpose different from the purpose for which it was created. In this case, the original song was an ode to jazz music and its immortality, while the Drake and Jay-Z tune criticizes the original work by stating that their “real music,” will have the longest life because it is authentic. Additionally, the Courts agreed the small 35-second clip was not a substantial amount and also that this use in the new song does not really affect any potential markets for the old song.

The exciting aspect of this case is that Courts rarely rule in favor of the Defendant artist in music and songwriting cases. While this case will be persuasive authority in future cases, the Courts will still review each case on a case by case basis. Luckily for Drake, his use was fair! Artists and songwriters should consult an intellectual property attorney prior to any use of prior works in their new music. An intellectual property attorney can assist in properly licensing the older work if necessary, or to give a thorough analysis on whether a particular use may be fair use.

To read the full Estate of James Oscar Smith, et al. v. Aubrey Drake Graham, et al. opinion in detail click here.

For more information on protecting your copyright, questions on legally sampling music, prosecution or defense of copyright infringement lawsuits, or any other intellectual property needs, contact The Lomnitzer Law Firm at (561) 953-9300 or through our website form to schedule your free consultation.

Don’t do the Crime if you Can’t Pay the Ten Billion Dimes

On Thursday December 19th, 2019, Cox Communications, Inc. (“Cox Communications”) was found liable for copyright infringement of over 10,000 recordings and compositions. Each individual infringement will cost them over $99,000 adding up to a one-billion-dollar verdict. Yes, that is $1,000,000,000.

 

The Lawsuit Itself

This suit was brought by 53 music companies including the top guns, Sony Music, Warner Music Group and Universal Music Group. The suit was filed in July of 2018 stating that Cox Communications, an internet service provider aka ISP, repeatedly ignored infringement notices sent by multiple music companies – allegedly hundreds of thousands of them!

To give a little background, this is not Cox Communications’ first run in with copyright issues. BMG filed a lawsuit back in 2015 where Cox Communications was ordered to pay $25 million in damages – this was overturned on appeal however Cox Communications settled with BMG before a new trial began. For more information on that particular case – click here – So, this is not the first time Cox Communications has dealt with copyright infringement claims.

The complaint filed in 2018 consisted of two counts – one for contributory copyright infringement and the other for vicarious copyright infringement. Contributory copyright infringement occurs when one who, with knowledge, of the infringing activity induces, causes, or materially contributes to the infringing conduct of another. The second count of vicarious copyright infringement requires two elements – first the right and ability to supervise or control the infringing activity and a direct financial benefit from that activity.

After a three-week trial in Alexandria, VA, a jury unanimously found that Cox Communications was liable on both counts and found that each copyrighted work, all 10,017 of them, was worth $99,830.29!

 

Cox Communication’s Side

In the 2005 BMG case, as well as the current one, Cox Communications tried to hide behind the Digital Millennium Copyright Act (“DMCA”) safe harbor provisions. As you may remember from our previous “YouTube Has Your Back” blog post, back in 1998 the DMCA was enacted to keep up with the fast growing internet and new copyright issues emerging from that new technology. This Act also provided some safe harbors, think of them as chances to cure the issue without penalty, for ISP’s (like Cox Communications).

These safe harbors were created because legislature realized it is impossible for ISP’s to track and monitor each and every one of their user’s activity. However, part of the safe harbor requirements are that these ISP’s make every effort possible, including implementing policies and procedures allowing for reporting of copyright infringement and the punishment of those who infringe. YouTube for example has a three-strike policy, if a video is reported to be infringing it is taken down, after the second time a user is reported as infringing the video is removed and a final warning given, after the third time the user’s page is deleted from YouTube and blocked.

Cox Communications stated that they had a 13-strike policy in place. In regard to the 13-strike policy, there was not a complete termination from use of the ISP, the reported infringers were put on a “soft-termination” or what some may call – a time-out. Additionally, each of the major record labels and music companies provided notice of nearly 20,000 Cox Communications subscribers that could be categorized as repeat infringers.

Cox Communications released a news release claiming the verdict awarded against them to be “unwarranted,” “unjust,” and “egregious” citing that today “you can download a song for a dollar,” but the verdict awards nearly $100,000 per song. Cox Communications also stated they “plan to appeal the case and vigorously defend ourselves. We provide customers with a powerful tool that connects to a world full of content and information. Unfortunately, some customers have chosen to use that connection for wrongful activity. We don’t condone it, we educate on it and we do our best to help curb it, but we shouldn’t be held responsible for the bad actions of others.” As of the publishing of this blog, Cox Communications has filed a motion for new trial, and a motion for a judgment as a matter of law to try and circumvent the large jury verdict against them. Those motions are still pending.

The DMCA certainly attempts to bridge the gap between understanding the limitations an ISP has on controlling its users and the protection of copyright holders’ works, however, a 13-strike policy, “time-out termination” and ignoring hundreds of thousands of warnings, just wasn’t enough of an effort on Cox Communication’s end to receive these protections according this jury.

 

What Does this Verdict Mean?

This verdict means a lot of things, mostly positive for copyright holders. Verdicts like this are showing ISP’s and other major communication providers that they have to take responsibility for infringers using their website and networks. There are safe harbors in place to protect these ISPs – however, the ISP’s must take some real steps for reporting and punishing infringers or those safe harbors will not remain available to them. Hopefully this case sends a warning to other companies to examine their policies and implement better procedures for protecting copyrighted works accessed using their services, and better punishments given to their infringing customers.

For more information on how to best protect your copyright and all other intellectual property needs, contact The Lomnitzer Law Firm at (561) 953-9300 or through our website form to schedule your free consultation.

Protecting the Playas

History of the Players

If you’ve heard of pop-phenomenon singer-songwriter TAYLOR SWIFT then you surely have heard of her song “Shake It Off” released back in 2014. The song is certified 9x platinum. Well, the anthem has caused some controversy over the years. Swift is the author of the song and the chorus includes the phrase “the playas gon’ play, play, play, play, play and the haters gon’ hate, hate, hate, hate, hate.” Back in 2001 the short-lived – yet still amazing – all girl group 3LW released a single “Playas Gon’ Play.” This song featured the line “Players they gonna play and haters they gonna hate.” The writers of that song, Sean Hall and Nathan Butler, filed suit in 2017 claiming that Taylor lifted their catchphrase and infringed on the copyright protection of their song. Specifically, these songwriters argue that they coined the phrase “playas gonna play” and “haters gonna hate.” The case was initially dismissed but has now been revived after a successful appeal in the Federal Courts.

History of the Case

Hall and Butler brought this case against Swift in Federal Court in the Central District of California in 2017. In early 2018, the court dismissed the case. In the opinion ordering the dismissal District Judge Michael Fitzgerald specifically highlighted the lack of originality and creativity in the phrases Hall and Butler claimed they originated. Additionally, the judge went on to point out that during the early millennium American pop culture was swamped with player hating, players playing and really just players in general.

The songwriters appealed the dismissal and on appeal in the Ninth Circuit a three-judge panel reversed and revived the suit sending it back to the U.S. District Court. The songwriters look at this as a victory under the argument that the appellate court believes that the complained of phrases are copyrightable. However, Swift and her team of attorneys view the remand of the case to the District Court as simply a procedural issue. The appeals court did not actually find that the songwriters’ case had merit, instead they cited a 1903 Supreme Court Ruling stating, “It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside the most narrowest and most obvious limits.” Basically, the appeals court disagrees that the Judge himself should decide if these phrases are copyrightable, but instead believes Hall and Butler’s complaint at least plausibly alleges originality in the disputed phrases so that a jury, who will not necessarily be well versed in creativity and originality as they apply to copyright law, should hear the case. Intellectual property attorneys for both sides will now have their work cut out for them as the case continues, which underscores the importance of hiring competent counsel.

History of Copyright Law

For more in depth background on copyright law be sure to check out this overview. For purposes of this blog only the basics are necessary – a copyright is available to authors of original works including literary, dramatic, musical and artistic works that are “fixed in a tangible medium”– i.e. a song that written down or recorded and not just in your head – which is also original – i.e. it isn’t a repeat of some or all of a song that already exists. While it seems pretty self-explanatory, copyright law is an area of law that is constantly evolving and changing and there are ever changing standards regarding originality that grow out of cases like the case Swift currently faces.

Future of the Playas

The revival of the suit against Swift does not in and of itself mean that Hall and Butler will win their copyright case. There are still a lot of issues and facts to discuss and various nuances of copyright law to apply to the case at hand. However, it’s hard to imagine that a jury will find that the mere copying of phrases common in everyday language, or used in songs before, during, and after Swift’s 2001 single, constitutes infringement. Then again, juries are unpredictable so the work undertaken by the attorneys leading up to trial will be important for both sides.

Stay tuned for the updates as this case continues, but in the meantime for more information on how to properly protect your copyright, enforce your copyright in court, defend yourself against someone suing you for copyright infringement, or for any other intellectual property needs, contact us at (561) 953-9300 or through our website form to speak with one of our experienced attorneys.

YouTube Has Your Back

Safe Harbors Save YouTube

Recently, a YouTuber – Chris Brady (not related to the Bunch) – allegedly used his YouTube page and the protections of the Digital Millennium Copyright Act (DMCA) to extort money out of fellow subscribers. YouTube found out and indicated that it will not stand for this abuse of its platform or its subscribers. YouTube is now suing Mr. Brady for injunctive relief and to prevent future irreparable harm. For the complete complaint, please go here – but for an overview and some interesting points keep reading!

What is the Digital Millennium Copyright Act?

As the internet first began popping up and growing – even before the new millennium – President Bill Clinton signed into law the Digital Millennium Copyright Act in 1998. This legislation fused two international treaties (WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty) with new laws in an effort to deal with significant copyright issues. Feel free to read about the DMCA in its entirety here, but for today’s blog we are only focusing on Title II – Online Copyright Infringement Liability Limitation Act. This section deals specifically with YouTube’s current predicament. This section provides four safe harbors for online service providers to protect them against monetary damages for copyright infringement. Each safe harbor has specific requirements.

Title II in More Detail

Again, Title II is just one section of the act and provides these protections for online service providers, as long as they are following the requirements of each harbor. The first safe harbor deals with the transitory digital network communications – WHAT? It’s actually not as scary as it sounds, it just means the internet provider must merely be a channel for the messages being sent to its users and doesn’t actually create and store the copyrighted materials. Next topic addressed is system caching – this is simply saying that the internet service provider is not uploading the material itself – a user is – and the provider is using an automated technical process to make the material available to users.

Now the third safe harbor is the one most often discussed when talking about this act – this addresses information residing on systems of networks at the discretion of users. In layman’s terms -the service provider cannot be aware that the material is infringing, is not receiving any type of money to host the infringing material (because then they would be in control of it), and once the service provider is made aware of the infringing material they immediately remove it from their platform.

The final safe harbor addresses information location tools and basically states that service providers that link users to other sites or directories are not liable for those sites’ infringements.

There is an overarching rule under this title that the internet service providers must remove any repeat infringers – which leads us to YouTube’s current lawsuit.

What’s Going on with YouTube?

Well, as many know, YouTube is one of the largest – if not the largest – online service providers of a platform for users to create and upload videos to get views. As stated above, as long as the service provider meets the DMCA safe harbors, it will be protected. Well, YouTube certainly does that, but what happens when you follow the rules too well… YouTuber Christopher Brady took advantage of that.

So, here’s what happened. When YouTube receives a complaint of copyright infringing material on a page, it immediately removes it. YouTube then issues a strike to the user and if the user who had the infringing material on his/her page gets three strikes then – you guessed it – they’re out. Their pages and all content on the page are deleted. A popular genre of YouTube videos is called streaming – e.g. where a person plays a certain level of a video game and transmits it over a computer network to share with other players. Christopher Brady started reporting some of these pages – specifically in the game of Minecraft – as infringing on his copyright knowing that YouTube would then take it down. After each reporting, he would then message the YouTuber telling them that they must pay him a certain amount of money – or bitcoin – otherwise he will report them again and they will receive their possible third strike and lose everything. This would be a perfectly acceptable thing to do if he in fact owned any copyright in what he was reporting. HE DIDN’T – he was lying to try and ruin competitors (at least that is one theory). Additionally, in some of the messages he sent, he didn’t reveal his identity and the message may have been an attempt to make other users believe he was YouTube (again, another theory).

Now YouTube indicated that it was not aware of what was going on until one user created a video specifically detailing what Christopher Brady had been doing. Once this extortion came to YouTube’s attention, it immediately began investigating. Well investigations cost money, lots of money for something this size, so now YouTube is suing Christopher Brady for damages not only to the website and the users, but specifically for having to expend time and resources on the investigation. To read more details about the case check it out here.

For more information on protecting your copyright on YouTube, the DCMA or any other intellectual property needs, contact The Lomnitzer Law Firm at (561) 953-9300 or through our website form to schedule your free consultation.

A U.S. Trademark Application Requires a U.S. Attorney

What’s New?

As of August 3rd, 2019 all foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board proceedings – yes Canada this includes you with limited exceptions – will be required to be represented by an attorney licensed and practicing law in the United States. Check out the law here.

What is the Point?

Well, of course the main goal of any new rule is to increase compliance, but the USPTO (United States Patent and Trademark Office) is also looking to improve the accuracy of trademark submissions made. Not only, will having an experienced US trademark attorney working with registrants increase the efficiency of the office, but it will likely save registrants costly fees associated with misfiling and corrections. Finally, it’s important to the USPTO to maintain the integrity of the office – with the increasing issues – specifically in regard to fraudulent trademarks – the office seeks to regain some control.

What does this all mean?

This means, basically, if a trademark applicant is based out of a country OTHER THAN the United States – Canada you have a slight exception you can check out here – you MUST retain an attorney licensed to practice law in the United States. These attorneys must be able to provide to the USPTO their name, postal address and email, a statement showing they are in good standing of a state or the federal bar and their bar number – if applicable. Without this, you will not be able to register or apply for your trademark in the United States.

Who Do I Turn To?

The Lomnitzer Law Firm, P.A. is an excellent resource for all of your trademark and intellectual property needs. Based in South Florida, The Lomnitzer Law Firm, P.A. has helped clients all over the world and at competitive and affordable rates. The attorneys at the firm have extensive experience in trademark registration and enforcement protection, as well as litigating trademark infringements. The Lomnitzer Law Firm, P.A. can provide all foreign based individuals or entities looking to protect their trademark with more than just registration. The Lomnitzer Law Firm, P.A. also features attorneys working in every aspect of intellectual property including patent law, entrepreneurial law, copyright, entertainment and small business consultation.

For more information on how to protect your trademarks and all intellectual or business law needs contact us at 800-853-9692 or via our website form.

What the Fuct?

Ending a nearly two year debate the Supreme Court, in Iancu v. Brunetti No. 18-302 (U.S. June 24, 2019), finally reached a decision on whether the Lanham Act provision ban on the registration of “immoral or scandalous” trademarks is constitutional…the answer is no!

The History of Fuct

Erik Brunetti, an artist and entrepreneur founded a clothing line using the trademark “Fuct.” The proper pronunciation of Brunetti’s trademark is actually F-U-C-T (said letter by letter) which stands for “Friends U Can’t Trust”, however, it’s easy to see how it may be confused with the past tense of a, well, common curse word.

Brunetti attempted to register the trademark for the first time in 2011. The United States Patent and Trademark Office (“USPTO”) refused to register his trademark based on Lanham Act Section 2(a), 15 U.S.C. 1052(a) being that the mark was “immoral or scandalous.” Brunetti quickly appealed to the USPTO’s Trademark Trial and Appeal Board (TTAB), but they affirmed the rejection. So, Brunetti took the next step and filed an appeal in federal court.

Ironically, the same time Brunetti is fighting for his mark, there was another case in federal court addressing trademark eligibility – Matal v. Tam – under the same clause of the Lanham Act, for a mark the USPTO found to be disparaging. In Matal v. Tam – an all Asian rock band wanted to register their band name “The Slants” but were refused a trademark in the same way as Brunetti was refused for his “Fuct” mark. After going all the way up the appeal ladder to the Supreme Court, the disparagement clause relied on by the USPTO and the lower courts was found to be unconstitutional in violation of the First Amendment because the Supreme Court decided, “… if a trademark registration bar is viewpoint based, it is unconstitutional. And second, the disparagement bar was viewpoint based.” Basically, just because some people might find it disparaging doesn’t make it OK to prevent other people from saying it – i.e. the entire point of our Constitution’s protection for freedom of speech.

Back to Brunetti…in 2018 he won his appeal in a lower federal appeals court. However, not quite ready to allow Fuct any protection, the USPTO actually raised the matter to the SUPREME COURT OF THE UNITED STATES, and the Supreme Court agreed to hear the issues. Now, after six months the decision has been issued – in a 6-3 decision – clarifying that the language of the Lanham Act stating that a trademark can be refused if it is “immoral or scandalous” is unconstitutional.

The Iancu v. Brunetti opinion written by Supreme Court Justice Kagan gets right to the point – it’s unconstitutional to not allow words to be trademarked because certain people disfavor those words. Such “viewpoint” based analysis has no place in free speech says the Supreme Court.

So Why Does This Even Matter?

The USPTO’s reliance on the “immoral or scandalous” bar in the Lanham Act has long been viewed as an attempt to regulate free speech and has denied some business owners federal trademark protection for their marks. The Supreme Court has just affirmed that free speech extends to choosing whatever terms you wish to represent your business identity. Now, should you choose a business name that is disagreeable to some, you may still proceed to request federal protection for your chosen trademark.

What Does this Mean for the Future?

Iancu v. Brunetti, does not automatically modify the Lanham Act, that’s the legislatures job. Will they do it? Will they find a way narrow the limits of “immoral and scandalous” to make it possible for the USPTO to once again reject some vulgar, sexually explicit, and profane marks, as the USPTO suggested it might be possible to do. We will have to wait and see. For now, we can expect that the USPTO will issue updated guidelines to its trademark examining attorneys on the review and registration of trademarks under section 2(a) of the Lanham Act, noting that trademark registrations cannot be disqualified on the basis of being “immoral or scandalous.”

For more information on trademark registration of your marks, or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Moral Rights… WHAT ARE THOSE?

Originating from the French term droit moral, moral rights refer to the personal rights of an author of any creative work related to the association between the author and the work itself.  Moral rights go beyond the monetary and economic value of the works and focus on the integrity of the work and protecting the reputation of the author.

The United States Copyright Office began an analysis of the United States moral rights framework in January of 2017. In April 2019 the office released a report based on its findings. This report is VERY in depth- about 157 pages –  and can be found here. If you would like to REALLY know everything the US has to offer in regard to moral rights, then definitely take a peek at the whole report.  If time is short, this blog is a good introduction.

Who Has Moral Rights?

The author or artist of a work is entitled to moral rights. It sounds simple, right? Well, it is a little more complicated than it appears – you see, moral rights are recognized differently throughout the world. The EEU and many European countries have very high moral rights protection – while the United States is a little more relaxed. The Berne Convention is the best place to look to try and understand moral rights and what they give to an author. Article 6bis of the convention states that the author has rights independent of the economic rights – specifically the right to claim authorship and object to any distortion, mutilation or any other derogatory action relating to the said work that would be prejudicial to their honor or reputation. What does that mean in plain language? To sum it up, there are two moral rights that all members of the Berne Convention must provide to authors – the right of attribution and the right of integrity.

Right of Attribution

The right of attribution – sometimes called the right of paternity – means that the author has the right to have their name on a work – or their pseudonym if they prefer. Seems simple… however, confusion arises for most when authors have transferred their rights in a work to someone else. If JK Rowling transferred all of her copyrights in her Harry Potter books to me can I put my name on the books as author? NO! Moral rights remain with the author even after they have transferred copyrights to someone else (this right of attribution can be waived but we won’t get into that today). Why would an author still want to keep their name on a work they transferred away for other purposes? Well, this goes back to the original idea of moral rights being meant to protect and recognize the inherent connection between an author of a creative work and the work itself.

Right of Integrity

The right of integrity is the other right granted authors by the Berne Convention and this right deals with – you guessed it – the integrity of a work and its effect on the reputation of the author. Even after an author has transferred their rights in a work people may still associate that author with the work. If a subsequent rights holder acquired JK Rowling’s magical Harry Potter works and turned the characters into deviant mass murderers – people may start to associate that content with Ms. Rowling, and it could affect her reputation as an author of family friendly works.

So Back to the United States – Moral Rights or Wrong?

Guess what – the United States is a member of the Berne Convention! That means the United States MUST protect the right of attribution and the right of integrity for all its authors. The United States, and any member of the Berne Convention, can create statutes and laws that expand moral rights – but cannot limit them!

So, the United States over the past 30 years has started to expand – slightly – on the protection of moral rights. When joining the Berne Convention in 1988, the United States met the minimum requirements for protection of moral rights through various federal and state laws. Over time, the moral rights have been enlarged through amendments to title 17 of the United States Code, and judicial decisions have addressed unfair competition and misappropriation laws, especially Dastar Corp. v. Twentieth Century Fox Film Corp. The US has even created the Visual Arts Rights Act (VARA), the first legislation enacted that specifically addresses moral rights, in certain works only – you guessed it, visual arts.

What did the United States Copyright Office Report Conclude Regarding Moral Rights?

As mentioned earlier, the report is very in depth so there was A LOT of information discovered, but the main outcome of this analysis was positive. The United States is doing a pretty good job protecting an author’s right of attribution and right of integrity. The report even suggests that there is no need – right now – to adopt a blanket moral rights law. They find the combination of laws, judicial decisions, and acts is doing a good enough job for now! Is there room for improvement? Always, specifically – suggested – in the areas of the Lanham Act, VARA, 17 U.S.C. § 1202, and the right of publicity.

For more information on moral rights, how to properly protect your moral rights or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Federal Trademark Protection for Hemp Derived Cannabis Products Now a Possibility

2018 Farm Bill and its Impact on Trademark Law

Although marijuana has become legal in many states, either medical and/or recreational, it is still illegal under federal law. According to case law and the rules of the United States Patent and Trademark Office, to be able to receive federal trademark registration the use of the mark in commerce must be lawful. Under the Controlled Substances Act (CSA), marijuana, or the cannabis plant, is a Schedule I controlled substance and therefore cannot be sold interstate. To summarize, interstate marijuana sales are illegal and federal trademark protection for cannabis derived products has not previously been possible.

Times They Are A Changing

However, the 2018 Farm Bill, recently signed into law on December 20, 2018, has made significant changes in regulations that deal with cannabis sales – specifically the sale of products made from or derived from “hemp”. Originally, the 2014 bill defined all parts of the Cannabis sativa L. whether growing or not, the seeds thereof […] as a Schedule I controlled substance, which included hemp. See Federal Statute 21 U.S.C. §802(16). Now, with the new laws being implemented hemp is no longer a controlled substance under the Controlled Substance Act. Hemp and marijuana, though often confused as the same thing are in fact different. Marijuana is still a Schedule I controlled substance, but hemp has been removed from that Schedule 1. This means that cannabis plants and derivatives such as CBD products that are derived from “hemp” and contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA, and product related federal trademarks are now a possibility.

On May 2, 2019, the United States Patent and Trademark Office released an updated examination guide for USPTO examining attorney’s to use when looking at the application of a hemp derived cannabis-related good or service. The USPTO has now amended the guidelines in accordance with the recent changes in federal law. The examining attorney will now look at the application to ensure the goods or services comply with both the CSA and the 2018 Farm Bill. Applications for qualifying hemp derived cannabis and cannabis-derived goods filed before December 20, 2018, regarding hemp will be offered the opportunity to amend their application filing date and basis to support their qualifying under these new guidelines..

Any and all trademarks must still comply with basic trademark requirements in order to be approved.

What Does This Mean for Owners of Hemp Derived Cannabis Products (non-CBD)?

To sum it up, some hemp derived cannabis and cannabis-derived good trade names can now be federally trademarked. Applicants will want to make sure their goods are identified on packaging and advertising as derived from hemp and specifying that they contain less than 0.3% THC.

What Does this Mean for Owners of Hemp Derived CBD Products?

There are still some restrictions blocking federal trademarks as to Cannabidiol (CBD) products, because these items are regulated by the FDA (Food and Drug Administration) and/or the FDCA (Federal Food and Cosmetic Act). Therefore, even though qualifying CBD products may now be legal under the CSA (meaning the CSA will no longer be grounds for denying their trademark), the CBD trademarks may still be denied due to lawful-use issues under the FDCA. According to the May 2, 2019, USPTO guidelines “registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp…”. These CBD product producers will have to wait for the day that the FDA completes its undergoing clinical investigations and approves CBD pursuant to FDA regulations. A CBD product that is not a food or dietary supplement may not be subject to these restrictions.

A Bit of Background – Trademark Basics

A trademark is an name, image, logo, sound or any other identifiable mark that a consumer can use to indicate a specific source of a product or service. There are three main different types of trademark protection. There is common law, state registration and federal registration.

Under common law trademark all an owner needs to do is be the first person to use a trademark in commerce. Sounds easy, well it is, however common law protection gives users only protection in the geographic area where it is identifiable. Basically, it’s the lowest amount of protection available.

Next level of protection is registering a trademark with the state in which the product is distributed. This doesn’t necessarily expand the area of protection, but may provide some more legal remedies to the company in the case of infringement. State trademark laws vary, so certain states have specific requirements, but all states will allow a company to register.

The highest, most coveted and most difficult trademark protection to attain is federal registration. This allows for trademark protection across the United States. We generally recommend our clients look at protecting their trademark on a multi-state or national level to try and federally register their mark with the United State Patent and Trademark Office, when possible.

Now, qualifying hemp derived products and services that meet basic trademarks and are approved by the USPTO are eligible for not only common law and state law protection, but federal protection as well.

Marijuana or devices creating or facilitating the smoking of marijuana still cannot receive federal trademark protection. That doesn’t mean that they cannot receive common law or state law protection. Registering within the state and the geographical area that the marijuana is being sold will allow a company to at least protect their mark in that area. This will allow the mark owner to use the mark in commerce and create brand recognition of their name or logo in preparation for that day in the future that federal trademark protection might become available.

Outlook for The Future regarding CBD and Marijuana Trademarks?

As of right now there is no concrete evidence that CBD, and marijuana products and services, will one day be federally trademarkable, but this particular change in the CSA shows progress is being made in this ever growing – no pun intended – area of agriculture. Laws are often changing so be sure to follow this blog to stay up to date on all changes in this area of the law.

For more information on how to properly protect your company and hemp derived product trademarks, or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.