Plant Patent Provides Monopoly for Holiday Flowers

U.S. Plant Patent

Many of us associate the holiday season with Poinsettia Plants. However, few people realize that it was covered by a plant patent for over a hundred years. Like the poinsettia plant, its history, is colorful and interesting. It also provides an example of how valuable a patent can be, namely, Plant Patents.

Plant Patent for the Poinsettia

The Poinsettia was introduced into America from Mexico in 1828 by Dr. Joel Roberts Poinsett, after whom the plant was named. From an economic standpoint, it is estimated that annual poinsettias sales are greater than $250 million with more than $60 million typically occurring during the six-week period near Christmas. The poinsettia plant has been referred to as the most popular potted plant in America.

Poinsettia’s history dates back to the Aztecs. In fact, Montezuma, the last of the Aztec Kings, like the plant so much that he adorned his palaces with the plant and used its red leaves as dye in his fabrics and its leaves and stems for medicine to treat fever, stimulate breast milk production, and to terminate pregnancies. Its latex (the milky fluid in the stem) can be used to kill pain, kill bacteria, and cause vomiting.

When it comes to patents most people think of utility patents. A utility patent provides a form of monopoly for new and useful processes, machines, manufactures, compositions of matter, or any new and useful improvement thereof.

While most patents are utility patents, there are two other types of patents. Design Patents which are on the rise and Plant Patents. A plant patent may be provided to an inventor who has invented or discovered a plant (not a potato, root or tuber) and is able to reproduce a distinct and new variety of the plant through asexual reproduction. “Asexually reproduce,” means that the plant is reproduced without the use of seeds, usually by cutting or grafting the plant although there are other ways including division, slips, rhizomes, and root cutting, among others. The patent grant under plant patents, lasts for 20 years from the date of filing the application and provide a form of monopoly right, allowing the inventor to exclude others from asexually reproducing, selling, or using the plant reproduced. Since the Plant Patent Act of 1930, more than 23,000 U.S. plant patents have issued.

At Intellectual Property Center, we hope you have a Happy New Year. Feel free to call tel:+1-913-345-0900 or email us to schedule a meeting with one of our attorneys to discuss ways to protect your invention or extend your intellectual property protection with a patent attorney.

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Disney Accused of Looting (i.e. Infringing) Pirate Franchise

Copyright infringement typically involves copying someone else’s creative work. However, what happens when you copy something that was itself a copy of something you create? For example, what happens when someone creates a new website for you or your company; if the new website was based on your old website is it still infringing to loot or steal the website? Is it copyright infringement to use the new website even though it was “based” on your original work?

This issue may be visited in a recent lawsuit filed against Disney involving a movie script based on Disney’s Pirates of the Caribbean ride which was opened fifty years ago. The ride was an attraction that some still describe as “the greatest ride in Disneyland history.”

The recent copyright infringement case against Disney involves two screenwriters, Arthur Alfred II and Ezequiel Martinez, Jr., along with their producer Tova Laiter.  They filed suit against Disney for copying portions of their 1999 screenplay Pirates of the Caribbean and using them in their billion-dollar Pirates of the Caribbean movie franchise.

The lawsuit, filed November 14, 2017, claims that Disney took the “expression of themes, settings, dialogue, characters, plot, mood and sequence of events” from the screenwriters’ screenplay. This screenplay was originally based on one of their original screenplays which was redrafted as a possible back story for Disney’s “Pirates of the Caribbean” ride, which has been around since 1967.

Many works such as book and movies incorporate various similar elements, such as themes or characters.  There are many books which are directed towards common themes, like pirates, natural disasters, and financial success. Just because they have similarities does not mean that one is copied from the other. For instance, your website may include a contact us page with an email and phone number, and the new version may include the same page with an email and phone number.  The fact that they have these similarities does not in and of itself indicate that one is copied from the other.  However, webpages having the same unique and creative description or layout may be more problematic.

In the recent Pirate copyright infringement lawsuit, Captain Jack Sparrow is substantially similar to a “Davey Jones” character created by the screenwriters. The Davey Jones character was a “good” pirate “with a sense of humor.” In addition, the movie uses nearly identical dialogue to the screenplay written by the screenwriters. Ultimately it will be up to the court to sort through this one, but Disney has a reputation for disregarding copyright laws and has been named in various copyright infringement suits such as Lion King, Toy Story, Monsters, Inc., Up, Frozen, Inside Out, and Zootopia.

If you have questions about how this case may apply to your copyright infringement situation, please contact one of our copyright attorneys today at 913.345.0900.

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SCOTUS: ‘The Slants’ Trademark Gets First Amendment Protection

Simon Tam, lead singer of the Asian-American rock group “The Slants,” chose the derogatory term intentionally. Tam wanted to reclaim the racial slur and turn it into a name to be proud of. However, the Patent and Trademark Office (PTO) denied registration, calling the group’s mark “disparaging” under trademark law.

On June 19, 2017, the Supreme Court ruled that the PTO may not reject trademarks on the grounds that they express offensive ideas. Although the government grants trademark registration, the marks themselves are not considered government speech. This means that trademarks do receive protection as free speech under the First Amendment.

The PTO has allowed “positive” marks to be registered while rejecting disparaging marks. The Supreme Court says this is considered viewpoint discrimination – and it is prohibited by the First Amendment. This ruling will no doubt affect similar trademark cases, such as the use of the offensive Washington Redskins mark.

Questions about registering your trademark with the PTO? Contact one of our trademark attorneys today.

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Pay BEFORE You Play: Why Music Licensing Matters

Does your business need a license to play music? Do you really need a music license just to play cover songs?

Music licensing is not something to gamble with. Spotify recently settled a class action lawsuit for more than $43 million after failing to pay publishers and songwriters when they streamed their music. While Spotify’s business will survive, what happens when a business cannot absorb the costs associated with copyright infringement?

A local St. Louis blues bar, called Beale on Broadway, was recently sued by Broadcast Music Incorporated (BMI). BMI, ASCAP, and SESAC are performing rights organizations that represent artists and publishers. These organizations represent singers and songwriters and require restaurants and other venues to pay for the music that they play. This arrangement allows businesses to play copyrighted music without fear of a lawsuit for music copyright infringement.

Unfortunately, Beale on Broadway did not obtain a license from BMI.  They have been sued for allowing a cover band to play copyrighted music in their venue.

Copyright law is very unforgiving. The statutes often dictate that if a copyright has been infringed, a defendant has to pay staggering damages that could upend them financially. (Before Spotify’s settlement, the damages were upwards of $200 million.)

In case you’re wondering how BMI found out about cover songs playing in a small St. Louis bar, note that performing rights organizations employ “undercover” representatives to visit venues in search of music copyright infringement.

Does your business or band need help with music licensing? Contact one of our copyright attorneys today.

Kansas 913.345.0900
Missouri 816.363.1555 

Toll Free 888.IPC.OO2O (472.OO2O)

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SCOTUS: Forum Shopping Spree Over for Patentees

Good litigation strategy involves reviewing a case and potential jurisdictions based upon historical outcomes, some which may have more positive (or more dire) effects on your client’s case. This is sometimes referred to as “forum shopping.” And frankly, it’s just good advice.

One of the most popular forums for patent litigation and patent infringement suits is located in the Eastern District of Texas. Labeled a “rocket docket,” the Eastern District of Texas has built an industry for local business based upon the large number of lawsuits filed by non-practicing entities (NPEs), or “patent trolls.” Because of the jurisdiction’s speed and efficiency in handling patent cases, the Eastern District of Texas has resulted in a large number of settlements by defendants. In 2016, over one-third of the entire United States’s patent cases were litigated in the Eastern District of Texas.

The patent venue statute has been interpreted to allow a patent lawsuit to be brought anywhere the infringing activity occurs (i.e. anywhere a device can be bought, made, or sold). However, last month the Supreme Court of the United States limited forum shopping practices when it comes to patent litigation.

If you believe you have a patent infringement issue, please contact one of our attorneys at 913.345.0900 to discuss litigation strategies.

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Stolen Photos Costs Company

Capturing just the right photograph, often is the result of countless hours of time, effort, attention, planning and preparation.  While capturing the photograph can represent countless hours, stealing the photograph off the internet takes only seconds.  In today’s digital world, many photographers try to promote their best work on the internet where they can showcase their best photographs.  However, in some cases, other internet users feel that the cost of paying for a photograph is too much, so instead of paying the artist for their work, sometimes people just take the photographs. The law disfavors stealing.

That is effectively what happened last month when a jury awarded almost a million dollars to a company whose images were stolen by a competitor and used to promote the competitor’s products.

In the case, Under a Foot Plant Co. created a series of images to promote its plants.  The copyright infringement lawsuit was filed after a competitor took and used these images on their website, posters and in brochures.  After many years of trying to prevent the unauthorized use, a federal jury awarded a photographer almost a million dollars in actual damages based on the unauthorized use of 24 copyrighted images.

The jury calculated the copyright damages based on 133 separate acts of infringement which occurred repeatedly from 2011 until 2014, when the lawsuit was filed.

Despite many attempts to resolve the matter, including sending cease and desist letters between 2011 and 2014, the infringer continued to use the stolen photographs, forcing the copyright owner to sue for copyright infringement, unfair competition, and unjust enrichment. The federal jury awarding the photographer the option of either $900,000 in actual damages or $300,000 in statutory damages.

If you believe someone has stolen your photographs or artwork, please contact a copyright attorney at 913.345.0900 or 816.363.1555 to discuss your rights and potential claims.

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SCOTUS: Whoever’s on First Denied Cert

The U.S. Supreme Court will not review the copyright infringement lawsuit based on a Broadway play’s use of Abbott and Costello’s “Who’s on First.”

“Hand to God” writer Robert Askins scripted a character to use portions of the famous duo’s comic act – for little more than a minute of the entire play.

Askins’ victory in trial and appellate court, seemingly affirmed by the Supreme Court’s denial, has been called a “vindication of artists’ rights.”

Plaintiffs, TCA Television Corp., Hi Neighbor and Diana Abbott Colton, argue that Circuit Judge Reena Raggi misinterpreted the Copyright Act of 1909 in finding no valid copyright in “Who’s on First.”While the judge did not expressly state that the act is in the public domain, the outcome makes that an implicit possibility. Without a valid copyright, there can be no infringement, so a fair use defense is unnecessary.

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The Billion Dollar Block

In 1958, President Eisenhower was president of the United States, Khrushchev was in charge of Russia and Charles de Gaulle was Prime Minister of France.  NASA was formed that year, satellites were launched and the computer chip, the modem and TV remote controls were invented.

By all accounts it was an amazing year.  But one more amazing thing happened that year, U.S. Patent 3,005,282, titled “Toy Building Brick,” was filed on January 28, 1958.  It covered a series of interconnected Toy Building Bricks.  The patent was issued three years later and was the beginning of an international toy empire for LEGOs.  Lego’s however, didn’t stop with just one patent. Lego filed for many patents to cover its building block business, over 900 patents worldwide with many patents still pending.

In addition, to patents, Lego’s brand is a valuable and famous trademark.  It is instantly recognized around the world and has substantial “goodwill” associated with its brand name.  One of the main purposes of a trademark is to help consumers recognize you as the source of your goods. That recognition is often referred to as “goodwill.”  In fact, Lego owns dozens of U.S. trademark registrations, and many more worldwide, on the marks Lego, Legoland, and other variations.

Lego also values the artistic appearance of its building sets.  Today, more than ever, it is developing unique and artistic models which are subject to copyright protection.  These copyrights are very valuable, because if timely registered, may account for statutory damages of up to $150,000 per work intentionally infringed.

Using patents, trademarks and copyrights, Lego has successfully built a worldwide empire in blocks which is worth billions of dollars.  If you think you have a better invention than a billion dollar block and would like to patent, copyright or trademark it, please feel free to call one of our intellectual property attorneys.

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The Importance of Trademark Goodwill

A “trademark” (less commonly called a “service mark”) can be a single word, phrase, symbol, or design that identifies and distinguishes the source of goods or services.

Some trademarks are a combination of words and symbols, and many evolve over time. For example, Target’s trademark has become a red bull’s eye, now widely recognized by consumers throughout the world without the need for words.

Trademarks allow consumers to readily recognize the quality of a particular product or service, creating a standardized expectation.  This is called goodwill. By using trademarks in marketing and advertising, businesses develop their trademark’s goodwill, increasing consumer recognition and long-term growth.

Trademark laws provide protection for this created goodwill and protect trademark owners by awarding them category specific exclusive rights in the use of their “marks.” Trademark laws not only protect consumers, but also reward businesses who have created a reputation for their trademark goodwill.

Interested in trademark protection for your business? Contact one of our trademark attorneys today at 913.345.0900.

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Music Copyright Law: “Musical Works” and Sound Recordings

Copyright Law: Distinguishing Between Musical Works and Sound Recordings

In general terms, copyright protection extends to “original works of authorship fixed in any tangible medium of expression.” Pursuant to Section 102 of the federal Copyright Act (“the Act”), works of authorship include, among other categories:

  1. Musical works, including any accompanying words; and
  2. Sound recordings.

As these two categories often overlap, understanding the difference between “musical works” and “sound recordings” can be crucial to understanding the scope of copyright protection afforded to each.

Copyright Protection for Musical Works
First, federal copyright law provides for copyright protection in “musical works, including any accompanying words.” The U.S. Copyright Office has interpreted “musical works” to include “both original compositions and original arrangements or other new versions of earlier compositions to which new copyrightable authorship has been added.”
Although copyright protection is usually automatic from the moment a work is created, registering a work with the Copyright Office is a better method of providing others with notice, and can provide more remedies for the copyright owner in case of infringement. The copyright owners of musical works can register their work with the Copyright Office by completing the Performing Arts application form (Form PA), which must be accompanied by a “deposit” of the work to be registered. Depending on the type of work to be registered, the deposit requirement varies from either one or two copies of the “best edition” of the work.

“Best Edition” Requirement
The Act requires that deposits be of the “best edition” of the work. The “best edition” is usually the edition that the Library of Congress determines to be “most suitable for its purposes.”When two or more editions of the same work have been published, the “best edition” is typically the one of the highest quality. For example, the Library of Congress considers compact digital disks to be the “best edition” of a phonorecord, as compared to a vinyl disk or a tape. If the work has only been published online, there are specific rules about the best edition of the work.

Copyright Protection for Sound Recordings
The Act also provides copyright protection for “sound recordings,” which are defined as “works that result from the fixation of a series of musical, spoken, or other sounds.” Sound recordings are typically “fixed” in “phonorecords,” which are the material objects in which sounds are fixed, such as tapes and disks (among other formats). The author of a sound recording is the performer, or the record producer, or both.
The author of a sound recording can register the work with the Copyright Office by completing the Sound Recordings application form (Form SR). When the same person owns the copyrights in both a musical work and a sound recording fixed in a phonorecord, Form SR may be used to register both. There is also a deposit requirement to register a copyright claim in a sound recording, which varies from either one or two copies of the best edition, depending on several factors.

Questions about copyright protection? Call a Copyright Attorney at 913.345.0900.

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