ILN IP Insider

Picking: A Few IP Collectibles Since My Last Post

ross-sokolovski-123930There is a popular television show in the United States called American Pickers, which follow the adventures of antique and collectible “pickers” Mike Wolfe and Frank Fritz.  Wolfe and Fritz travel around in a van with the logo Antique Archeology to buy, or “pick,” various items for resale, for clients, or for their own personal collections—sometimes with a plan based on background research where destinations and items are predetermined and others by chance when they are “free-styling.”  One of the beauties and challenges of an intellectual property practice is how many interesting issues, cases and developments are out there for one to explore.  And so, in a legal sense, we “pick” as well, sometimes for clients and sometimes for one’s own personal collections, sometimes while looking for specific items and sometimes while free-styling. 

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CarGurus Enters Canada – Suit Ensues For Statutory Damages under the Canadian Copyright Act

11892290_10153570213132792_5698485790065904705_oThe plaintiff in a copyright infringement action has the option to choose to receive statutory damages rather than to establish its actual quantum of damages it has suffered. Statutory damages range from a minimum of $500 to a maximum of $20,000 for the infringements related to a given work. A plaintiff might choose statutory damages when the amount of its loss is difficult to quantify, particularly when works are downloaded in large quantities from the internet. The Canadian Copyright Act provides for various remedies for copyright infringement, including statutory damages as an alternative to compensatory damages and/or profits.

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Can You Register a Copyright on an Artistic Element in an Industrial Design?

sebastian-davenport-handley-146343Suppose that you have expressed your idea into a tangible form such as two-dimensional artistic elements incorporated into an industrial design.  Although your copyright exists upon the moment of creation, do you have a valid copyright?  Should you register your copyright on the two-dimensional artistic elements with the U.S. Copyright Office?  Can you stop a competitor from using your two-dimensional artistic elements in their industrial design?  The answer is YES!

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Oh, Where Cases Like That Will Go: HOW A CEASE AND DESIST LETTER STOPPED THE PLAY BUT STARTED THE SUIT

tamarcus-brown-131431Lombardo et al v. Dr. Seuss Enterprises, L.P., case number 1:16-cv-09974, in the U.S. District Court for the Southern District of New York, is an interesting case for intellectual property practitioners, especially those involved in copyright matters and curious as to how the parody/fair use discussion started in my last post for ILN IP Insider continues to play out.

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CAN YOU SLEEP AT NIGHT – YOU NEED TO KNOW ABOUT INJUNCTIONS IN CANADA

nomao-saeki-63687The mattress business is a competitive one!  Trade-marks in the mattress business are valuable!

Sleep Country Canada Inc. is a major mattress retailer in Canada.  It is best known for its slogan “Why Buy a Mattress Anywhere Else?”.  It owns two Canadian trade-mark registrations for this slogan.  This trade-mark, together with its accompanying musical jingle, have been used by Sleep Country Canada in its promotional campaigns since 1994.  Those campaigns have included television, radio, print and digital adverting.  According to Sleep Country Canada, this slogan is and has been the cornerstone of its brand and marketing for its business.  The jingle was ranked as one of Canada’s 25 catchiest jingles and was inducted into the marketing Hall of Legends and the Retail Council of Canada Hall of Fame in 2005.

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How to Avoid Having Your Patent Interpreted as a Covered Business Method (CBM) Patent

martin-ceralde-40407Suppose that you have an invention disclosure that uses computers and the Internet to carry out transactions that could include financial transactions? When you draft your patent application, is there anything that you can do to avoid having your patent application and resulting issued patent from being interpreted as a covered business method patent?  The answer is YES!

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A REVIEW OF THE DANISH RULES CONCERNING SPAM

_8s9nemczk0-oliur-rahmanIn Denmark, certain rules must be observed, if a company wants to turn to customers by electronic means to promote or to sell products and services.

Basically, the company must have the customers consent before the company can send out marketing. If there is no consent marketing through electronic means as text messages or e-mail would be categorized as spam.

The spam rules do not apply if the messages sent has only a service content. However, the message must not contain any other information that may increase sales or awareness of the company. In practice newsletters, and invitations to competitions or events have been categorized as spam.

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USPTO Adopts New Regulations for Trademark Specimens of Use

ziwuqmznrvs-bench-accountingUnlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue.  Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration.  Effective February 17, 2017, the United States Patent and Trademark Office (“PTO”) has amended its rules relating to the amount of proof necessary to substantiate current use of the mark for post-registration declarations of use.  37 CFR Part§§ 2.161 and 7.37.

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Maybe Axanar Could Klingon To Its Fair Use Defense In A Parallel Copyright Universe

rtzw4f02zy8-nasaOn January 3, 2017, in Paramount Pictures Corp. v. Axanar Productions, Inc. et al., a United States District Court held that Axanar could not rely on a fair use defense during the upcoming trial over whether Axanar infringed Paramount’s copyright in the popular Star Trek television and motion picture franchise.  Axanar has an existing twenty-one minute film Star Trek: Prelude to Axanar (“Prelude”) and at least two trailers for a planned full-length feature film (the “Axanar Motion Picture,” and, collectively with Prelude, the “Axanar Works”).  Central to the Court’s rejection of that defense was Axanar’s inability to convince the Court that the Axanar Works had the characteristics of the sort of works, such as parodies, that are recognized as deserving of a fair use defense under 17 U.S.C. § 107, as further explained by the United States Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).  While seemingly a solid analysis under the applicable U.S. copyrights laws and cases, one perhaps should ask whether a different result could be supported in a parallel copyright universe.  (This does, after all, involve Star Trek, where, since the Original Series episodeMirror, Mirror” episode, examples of parallel universes have existed.)  But to get to that parallel universe here, one need not experience a transporter malfunction, nor travel multiple parsecs—one perhaps need only look the United Kingdom (not to be confused with the United Federation) and Section 30A of its Copyright, Designs and Patents Act 1988.  Understanding more fully the Axanar case and the Axanar Works will help the parallels emerge.

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Industrial Design Protection in Canada: Changes Before the Office January, 2017

a4gptwtaajw-stephen-di-donatoIndustrial design registrations under the Industrial Design Act (the “Act”) are similar to design patents in the US.  They protect the features of a product that are visually appealing and not purely utilitarian. They can consist of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form, such as the design of a table or the shape of a computer monitor.

The Canadian Intellectual Property Office (CIPO) published six new practice notices on  January 13, 2017 regarding the industrial design registration process under the Act. Each notice came into effect immediately and affects both pending and future design applications. According to CIPO, the changes will improve client service, reduce administration and modernize Canadian practices in order to align those practices with international standards. These changes may also impact registrable subject matter (see below).

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