Author: Gavin Law Offices

Domain Names Disputes and Delays at WIPO

Posted on by Gavin Law Offices

Last month, attorney Courtney Reigel attended a webinar addressing ongoing delays at the World Intellectual Property Organization (WIPO).  Specifically, the webinar discussed the increase in the overall number of Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints WIPO has received since the beginning of the pandemic.

Domain name registrars such as GoDaddy are required to follow the UDRP. The UDRP establishes an expedited administrative process for resolving disputes involving the registration of internet domain names.  While other trademark-related legal matters must often be resolved through arbitration or litigation in federal court (which can be costly and time consuming), holders of trademark rights may file UDRP complaints with WIPO or another approved dispute resolution service provider to resolve issues involving abusive registrations of domain names (e.g., “cybersquatting”).  UDRP complaints generally offer an affordable, efficient, and straightforward option for us to resolve domain disputes for clients.

While UDRP complaints remain a useful tool for addressing domain name matters such as cybersquatting and “typo-squatting,” WIPO is currently experiencing delays in processing times for reviewing such complaints and issuing decisions.

Generally, the cause for the delay is the increase in overall number of UDRP complaints being filed with WIPO.  2020 was a record-breaking year for the number of domain name disputes filed with the organization.  However, this year is already on track to surpass 2020 in number of domain name disputes filed.  The increase in complaints is due to several factors, including the fact that there has generally been more internet activity as people shopped and worked from home during the pandemic. Additionally, the pandemic created new opportunities for cybersquatters to register and use domain names that contain a trademark plus the terms “coronavirus,” “covid,” or “vaccine,” for example.  The ICANN WHOIS service used to investigate registrant information for potentially infringing domain names no longer offers the same information it used to.  Due to privacy laws such as Europe’s General Data Protection Regulation, as well as the increase in number of privacy and proxy services registrants can use, registrant information (an individual or business’s name, address, and contact information) is no longer readily available.  In some instances, the only way for trademark holders to determine who is responsible for registering a domain that appears to infringe their intellectual property rights is to actually file a UDRP complaint and wait for the domain’s registrar to provide such information.  Further, the lack of registrant information makes it difficult to combine complaints involving several domain names that have the same registrant together into a single complaint (previously a common practice), which is also driving up the number of overall complaints.

Attorneys can help trademark holders monitor for potentially infringing domain names and enforce their rights, which often includes preparing and filing a UDRP complaint.  In light of the increase of bad actors online, such monitoring can be critical for preventing trademark dilution and avoiding the harm that can be caused by infringing domain names.  We can also draft complaints that clearly articulate trademark holders’ rights and address key issues to assist WIPO with reviewing complaints and issuing decisions as quickly as possible. The pandemic and changing laws compel a more strategic approach for handling domain name disputes, and we continue to monitor developments and are readily available to help clients with these matters.

– Rina Van Orden, Esq. & Courtney Reigel, Esq.

Copyright Fair Use Cases that aren’t Google v. Oracle

Posted on by Gavin Law Offices

Fair use is a common yet complicated defense against copyright infringement. And it can be difficult to predict the outcome. Content creators often creatively transform existing copyrighted material for purposes like commentary, criticism, research, or education. Because such use of copyrighted material is ultimately in furtherance of the overall objective of copyrights, would-be infringers can evoke the fair use defense to avoid liability in certain narrow instances. What is and isn’t covered under fair use is often confusing and involves defining “transformative use” for different situations. This can be complex, albeit interesting due to the people and works involved. A roundup of cases sheds some light on recent developments in this area of copyright.

Dr. Seuss Enterprises, L.P. v. ComicMix, LLC

An unlicensed book titled Oh the Places You’ll Boldly Go! (“Boldly”) drew Dr. Seuss Enterprises to take action in 2016. The book was a mash-up of the popular Dr. Suess work Oh the Places You’ll Go! and science-fiction material from the Star Trek universe.

A trial judge initially ruled that due to the “highly transformative” nature of the work, the mash-up was allowed under fair use. However, on appeal to the Ninth Circuit, Dr. Suess Enterprises prevailed on its copyright infringement claim. ComicMix, LLC, the entity behind Boldly, argued that the work was a parody, i.e. commentary and criticism of Dr. Suess’s original work. The Ninth Circuit rejected this defense finding that Boldly was not a transformative use, but merely a “repackaging” of the Dr. Suess world for commercial gain.

This case drew attention from those in the copyright arena since it helps clarify the Ninth Circuit’s views on protection of mash-ups. While ComicMix argued that the combination of elements from the two distinct creative works was inherently transformative, the Ninth Circuit strongly disagreed, finding that all four factors of the fair use test weighed in favor of Dr. Suess Enterprises.  This is a notable decision and content creators in the mash-up space should proceed with caution.

The Andy Warhol Foundation v. Goldsmith

What do Andy Warhol, Prince, and a 1984 issue of Vanity Fair have to do with intellectual property in 2021? A whole lot more than you might expect. These were the subject of a recent ruling by the U.S. Court of Appeals for the Second Circuit that, like the Dr. Suess case above, drew a narrow boundary around transformative use. In this case, the court determined that Warhol’s use of a famous photograph in his artwork did not meet criteria for a fair use defense.

Lynn Goldsmith is a prolific professional photographer known primarily for her work with celebrities and musicians, among other achievements. In 1981, she took a series of portrait photographs of Prince in her studio. Vanity Fair legally used one of these photographs as an artist reference in 1984, and that artist happened to be Andy Warhol. Warhol subsequently made several more works from the photograph without Goldsmith’s knowledge.

After Prince’s passing in 2016, Goldsmith learned about Warhol’s unlicensed use of her work. Soon after, she asserted a copyright claim. The Andy Warhol Foundation contended that the works were not infringement, and the district court agreed. The court reasoned that Warhol’s works constituted transformative use of Goldsmith’s photographs in part due to their immediate recognizability as a ‘Warhol.’  Upon appeal, the Second Circuit reversed the original decision, reasoning that the work did not constitute transformative use. Notably, the opinion included the distinction that if they were to uphold this ruling based on Warhol’s recognizability that it may create a “celebrity-plagiarist privilege.” Like the Dr. Seuss case, this decisions narrows the availability of a fair use defense.

Georgia v. Public.Resource

Public.Resource is a nonprofit advocacy group that focuses on making public domain content accessible to everyone. The group is particularly invested in making United States Federal Government documents accessible, often through digitizing records. Generally speaking, government produced materials are in the public domain. However, Georgia v. Public.Resource brought to light questions surrounding how states should use copyright. The State of Georgia published some state code online, but annotated versions were only available to paying users. Public.Resource spread these annotated – and copyrighted – versions online without permission, which led Georgia to sue them in 2015.

The Eleventh Circuit ruled in favor of Public.Resource, reasoning that the codes were part of state law and therefore could not be copyrighted. The state assembly of Georgia appealed this decision to the Supreme Court. In April 2020, the Court ruled in agreement with the Eleventh Circuit that Georgia does not have copyright over its legal code. The majority opinion held that copyrighting official works of the Georgia legislature could deprive citizens the full knowledge of the laws.

Do these recent rulings change the nature of Fair Use?

Many in the field are looking to these and other relevant rulings to see what can be garnered about the nature of fair use. Unfortunately, as can be seen here, there isn’t a one-size-fits-all approach to determining what is and is not fair use. With factors that must be analyzed on a case-by-case basis, fair use defenses are difficult to assess and content creators should not assume they have a viable defense when using another party’s content. If you’re concerned about infringement, contact Gavin Law Offices today.

 

Interested in copyright? Read here!

 

Hidden Risks of the Side Hustle

Posted on by Gavin Law Offices

If you’ve ever searched online for ways to make extra money, you’ve likely come across a multitude of “side-hustles.” The side hustle has become an increasingly trendy topic, especially with the recent changes in remote work. These ways of increasing your cashflow can be benign, but several popular avenues come with hidden risks.

Domain Name Marketplace

You may be thinking that it’s profitable to buy and sell domain names. That can be true! But you face risks in that process that you need to be aware of. Namely, if you are purchasing a domain name that is valuable specifically because it trades on the brand of a well-known company, you could be infringing someone’s trademark, violating anti-cybersquatting laws, and generally making a lot of people really angry.

Buying and selling domain names is also referred to as domain flipping. This is a side hustle because people can buy domain names from registrars such as GoDaddy and attempt to later resell them for a profit. Whether the flipper builds an actual website with the domain is up to them. “Domain parking” refers to flippers that do not build a site tied to the purchased domain(s). Another strategy is to invest in the site and increase traffic to make it more valuable. This practice can be lucrative – investing.com was sold for $2.45 million in 2012. But like most headline grabbing stories, it’s not as safe or simple as it sounds.

One of the major risks with purchasing domains is the potential to infringe on someone’s protected intellectual property. Even with research, you could purchase a domain name that is too similar to an existing brand and wind up paying the price. It’s a good idea to consult a lawyer to make sure a domain name doesn’t gain value from an existing source.

Finally, domain flippers must be aware of the dangers of cybersquatting. Although cybersquatting as a practice is often intentional, even unintending flippers can violate anti-cybersquatting policy. The Anticybersquatting Consumer Protection Act covers a range of domain buying and selling practices that could get side hustlers in real trouble.

Options for Trademark Owners

Cybersquatters – and potentially unknowing flippers – commonly obtain exact or confusingly similar domain names to protected marks. Since infringement is so frequent, it’s important to monitor your protected property. An experienced legal team can build the best strategy for your situation and help you keep an eye on the marketplace.

Trademark owners worried about potential infringers or cybersquatters have options. There are different types of actions mark owners can take if they find out a domain registrant is making money off of the owner’s mark. The general first course of action is to send a cease-and-desist letter. This addresses trademark ownership, how the domain name is infringing and causing damage, and your willingness to take the appropriate legal action if the infringement does not stop. If no action results from a cease-and-desist letter, you may wish to involve an attorney who can guide you and implement the correct course of action to stop the infringement.

Side Hustle Risk: Creative Infringement

People can make a lot of money selling and designing creative t-shirts, but you are better safe than sorry when it comes to designing shirts that are valuable because someone else has created the content it is based on. Using online platforms such as Etsy or Instagram means that your activity is subject to federal regulation. Goods that use characters, slogans, or even inspiration from protected works risk both trademark and copyright infringement.

Using the content of businesses commercially without express permission or license is trademark infringement. A common example is personalized goods with college or university logos. These are protected intellectual property so commercial use on your t-shirts without permission is infringement. Another example is fan gear for professional sports teams. A quick search of these online marketplaces shows plenty of stores using infringing material which might make you feel safe. However, just because other stores are selling these doesn’t mean it’s legal. Or the the trademark owner won’t shut that store down. The risk of infringement outweighs any potential gain from unauthorized use.

This type of side hustle also risks copyright infringement. T-shirts with popular tv characters or quotes from a new bestselling movie may fly off your shelves, but remember: their value comes from someone else’s work. And federal copyright infringement claims come with a hefty price tag.

Another common mistake is using pictures from Google. Without checking the source, it’s highly likely that you do not have permission to use that property commercially. No matter what good you’re interested in creating and selling, make sure it’s your original design. If what you’re selling gains value from established content – and you don’t have permission to use it – think twice. Like trademark infringement, copyright infringement can lead you into a mess of legal trouble.

To sell or not to sell

The public domain refers to a collection of works without exclusive intellectual property rights. For instance, the works of William Shakespeare are in the public domain. This means that if someone wanted to do a theater reenactment of Shakespeare’s work, they wouldn’t have to have a license or permission to do so unlike a copyright protected work.

Another type of side hustle involves publishing work from the public domain. There’s always a demand for classics such as Little Women, Treasure Island, or The Great Gatsby, which entered the public domain as of January 1, 2021. Entrepreneurial side hustlers have filled this demand by turning these public domain works into e-books on platforms such as Amazon Kindle. Due to the lack of copyright protection of works in the public domain, infringement can disappear if you are using or inspired by works in the public domain. There are enterprises which have successfully used this hustle – such as the man who sold 64,000 Anne of Green Gables e-books.

However, if you’re thinking this is the new trick for you, don’t dive in too fast. Calculation of the time a copyright is active can be complicated. One version of a work may be in the public domain, but another is not.  It’s important to err on the side of caution and contact a lawyer to be safe if you feel conflicted. No matter what side hustle you’re thinking of pursuing, always do your research and be aware of the hidden risks. If you’re a trademark or copyright owner worried about potential infringers, remember you have options.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

– Kat Gavin, Esq.

Intellectual Property of the Galaxy Far Far Away

Posted on by Gavin Law Offices

May the 4th Be With You

Any casual fan of Star Wars would assume the that the words “Star Wars” are registered trademarks. What many people may not realize is just how much of the galaxy is protected intellectual property.

Lucasfilm, the film and television production company responsible for creating and producing Star Wars, has a long history of protecting its brand and securing its intellectual property. George Lucas himself opted for future merchandising rights over a rise in salary in the 1970s (Fieldfisher). The Star Wars universe has continued to expand and evolve, especially since Walt Disney Studios acquired the production company in 2012.  As of 2019, Lucasfilm has over 1,100 federally registered trademarks and 3,952 federally registered copyrights (Suiter Swantz).

Many people contribute Disney’s and Lucasfilm’s widespread financial success to their merchandising strategy. Their expanding involvement beyond television and movie production leads to an increased need for intellectual property protection. Whether you want Star Wars themed clothing, household goods, games, books, or entire theme park experiences – there’s an officially licensed option for you.

Are these the droids you’re looking for?

It’s no surprise that STAR WARS is trademarked, but what else of the galaxy far far away has been protected? Due in large part to Lucasfilm’s, and now Disney’s, penchant for merchandise, many sayings, slogans, and design elements have been federally registered.  For instance, the cast of recognizable faces may not all be on the same side of the force but they do share this in common: characters like Darth Vader, Chewbacca, Princess Leia, and R2-D2 all have their own trademark registrations. These are used in connection with goods such as toys and costumes.

One registered trademark that may not be as obvious as the protected title or characters is the word “Droid.”  Lucas himself developed the phrase in the original 1977 film.  It refers to the humanized machines such as C-3PO and R2-D2.  Although now a common word, other companies have to pay Lucasfilm to use “droid” due to its trademark status. If other companies avoid this license, they must be prepared for possible legal action. Both Lucasfilm and Disney are no stranger to infringement disputes.

I got a bad feeling about this

While many times a cease-and-desist letter informing the infringer about his or her mistake is all it takes, some other cases require further action.  In 2016, after multiple cease and desist notices, Lucasfilm filed a lawsuit against Michael Brown.  Brown operated multiple businesses such as New York Jedi and the Lightsaber Academy.  His services included training, classes, and even certifications centered on lightsaber combat.  Further, the design of his logo was “confusingly similar” to the trademarked JEDI ORDER logo.

Brown’s webpage did include a disclaimer that his operation had no affiliation with Star Wars, Lucasfilm, or Disney.  However, disclaimers do not protect companies from trademark infringement.  It’s a common misconception that including this type of language will protect you from legal trouble.  Additionally, as Star Wars has become a household name and brand, many of its trademarks have almost certainly risen to a level of fame that protects them from trademark dilution, a claim that can be brought against any infringer of a famous mark, even if the infringer is using the mark with unrelated goods and services.

There are many instances where entities infringe upon Disney’s protected material.  Small businesses and fans often unknowingly use protected IP in unauthorized manners.  Such a large company cannot shut down every case of infringement, but they have an obligation to try. It is intellectual property owners duty to police their trademarks and copyrights.

To be continued…

With a decades long enterprise, thousands of devoted fans, and an ever-expanding universe, it’s likely the number of registered copyrights and trademarks for Star Wars will continue to increase. When it comes to both Star Wars and intellectual property, we have you covered. Rina Van Orden is not only an IP expert, but is also a huge Star Wars fan. If you’re concerned about infringement or curious about protecting your own work, Gavin Law Offices has the answers for you.

May the 4th Be With You!

Earth Day 2021: Protect the Earth, Protect Your Work

Posted on by Gavin Law Offices

The first Earth Day took place in 1970, with organized groups in Los Angeles, Chicago, and many other American cities. Founded by Wisconsin Senator Gaylord Nelson, this now global event helped launch the modern environmental activism movement. Over the past 51 years the focus has grown from generating environmental awareness to spurring action for our natural resources. An early proponent of environmental care, Nelson paved the way for the widespread environmental protection measures that we see today.

Branding Sustainably

On almost any store shelf, there are trademarked goods related to Earth Day causes. There are several brands that dedicate their mission to being environmentally conscious. Patagonia and Seventh Generation are great examples of these types of brands. Interestingly, there are also a variety of protected labels, certifications, and other groups that promote sustainability.

Business and Planet

For instance, the movement “1% For the Planet” is a protected mark. The entity behind the mark works to connect businesses and environmental nonprofits to bring awareness and funding to protect natural resources. The name originates from businesses’ commitment to give 1% of gross sales each year to support the partner nonprofits. Many of these businesses are then able to use the 1% For the Planet mark to help strengthen their identity as an environmentally caring brand. The model is a win-win for business and the planet! Another example is Sustainable Forestry Initiative. The organization certifies sustainable foresting practices, which include biodiversity programs, water use measures, and forest health. Products such as paper bags and lumber use the protected mark.

Reforestation

Lastly, a popular nonprofit engaging with several businesses around the world is One Tree Planted. With a focus on global reforestation, the group makes partnership opportunities easy with different models centered on planting trees. Businesses can adopt the “One for One” where a chosen action, such as product sold, represents a tree. Individuals, teachers, and students, can also participate in tree planting opportunities on a smaller level. One Tree Planted is an internationally recognized organization with a large list of dedicated partners. Reforestation efforts significantly protect air, water, and climate, as well as improve social and health related concerns. One Tree Planted’s trademarked text and design represents their dedication to reforestation. Moreover, the mark’s placement on partnered organizations signifies a concrete promise to dedicate time and resources to planting trees.

“Greenwashing”: How does it affect me?

The increase of “green” and environmentally conscious protected intellectual property has gone hand-in-hand with the rise of the practice known as greenwashing. This is often seen when brands make misleading or false claims that their product or service is eco-friendly. Greenwashing is not only questionable from an environmental protection perspective, but it has grown into a major consumer protection concern. The U.S. Trademark Office has increasingly refused to grant registration to “green” trademarks. Marks like these originally faced hurdles to registration based on descriptiveness grounds but more recently are facing refusal on the basis of deceptiveness.  These objections can be especially difficult to overcome when applicants do not fully think these issues through in the initial filing strategy for a trademark application.

When it comes to deceptiveness considerations, brands can refer to the FTC’s Green Guides. Titled “Guides For The Use Of Environmental Marketing Claims” in 1992, the updated versions provide guidelines on how to market environmental claims and how to “avoid consumer deception” [Federal Trade Commission, 75 Fed. Reg. 63,552 (Oct. 15, 2010) (codified at 16 C.F.R. pt. 260)]. Over the past several years, the issues of greenwashing and ethical environmental marketing claims have grown into a substantial topic within the intellectual property community. Brand owners must always be aware of any possible sustainable implications in their mark and communicate to consumers properly. More importantly, those seeking environmental claims should be prepared to provide substantiation of any environmental claims that their marks and/or branding imply.

2020 marked an impressive fifty years of Earth Day. Each year it becomes even more imperative to include sustainability in our lives. Whether through economic partnerships or individual lifestyles, we hope to continue protecting and enjoying our great earth.

– Rina Van Orden, Esq. & Lily Taggart