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.

Kansas 913.345.0900
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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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Go, Fight, Win: SCOTUS Says Cheerleading Uniforms Are Functional AND Creative

Stuffed miniature mascots in cheerleading uniforms. Monthly calendars featuring cheerleaders. Clothing designed to mimic cheerleading uniforms. What do all of these have in common? They are sold in university gift shops and, under the Supreme Court’s latest decision on cheerleading uniforms, they are likely infringing works.

The US Supreme Court recently ruled that fashionable 2-D and 3-D aspects of clothing, traditionally considered functional, are copyrightable.  Previously, an artist had to make an election to protect creative expression: to seek a limited duration monopoly with a design patent, or a copyright with a longer duration that did not cover functionality. However, the Supreme Court has indicated that now an artist can seek both a copyright for creative aspects and a design patent for functional aspects.

In reaching this decision, the Supreme Court relied upon Section 101’s protections for certain aspects of design where “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  Under this ruling, the designs on cheerleading uniforms can be copyrighted separate from the useful article of the cheerleading uniforms themselves.

One concept of intellectual property law is that usefulness is channeled toward patent protection, as the duration is shorter than copyright protection, thus providing a benefit to society much earlier. As designs on cheerleading uniforms have been viewed as functional – identifying the wearer as a member of a cheerleading squad for a particular team – it has been assumed that such designs were not copyrightable, but should instead receive protection in the form of a design patent.

The decision likely has serious implications for the sporting and fashion industries, as well as other utilitarian applications (e.g. industrial designs). But its effects could ultimately have the largest impact on smaller universities where their budgets are more limited.

Implicit within this decision is that all reproductions and derivative works of the cheerleading uniform designs would likely require a license. Manufacture and sales of toys, photos, clothing, etc. would require a license from the uniforms’ design copyright holder.

Questions about copyright protection or patent prosecution? Contact one of our intellectual property attorneys today at 913.345.0900.

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The MET Announces Access to Free Images

The Metropolitan Museum announced access to nearly 400,000 images – for free. The Museum provides these images under an Open Access license for all public-domain works in the Met collection. The Creative Commons Zero (“CC0”) license allows use of the images without restriction.

Entrepreneurs, artists, and business owners can now use and share these images for free, whether for commercial or non-commercial purposes. So, if you are looking for free images, start with this awe-inspiring collection. Filter your search to public-domain works and look for the CC0 logo. (Note: not ALL images on the Met website are free, but the ones that are licensed under CC0 have been made available to billions of individuals worldwide.)


To further encourage accessibility to creative ideas, the Museum has also announced partnerships with Creative Commons, Wikimedia, Artstor, the Digital Public Library of America, and Pinterest.

Subscribe to the Intellectual Property Center’s blog for more up-to-date info.


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