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PhoneDog, LLC v. Noah Kravitz seeks to determine this very issue. On Monday, January 30, 2012, Judge Maria-Elena James ruled against Mr. Kravitz on his motion to dismiss, allowing PhoneDog’s lawsuit to proceed. PhoneDog, a tech blog, initiated this lawsuit against its former editor-in-chief Mr. Kravitz alleging harm from his continued use of a Twitter account.
Mr. Kravitz worked for the South Carolina based company from 2006 until 2010. During that time, Mr. Kravitz, using the Twitter name PhoneDog_Noah, attracted 17,000 followers. When Mr. Kravitz resigned he kept his account, changing only his Twitter name to noahkravitz. Now, working for a competitor, TechnoBuffalo, Mr. Kravitz has over 24,000 followers.
PhoneDog, claiming to attract a community of more than 2.5 million unique visitors each month, requests its employees to maintain Twitter accounts and tweet links directing their followers to PhoneDog. Accordingly, PhoneDog’s position is that it owns Mr. Kravitz’s followers, likening the followers to a customer list. As noted in Judge James’ ruling, PhoneDog’s position is that “[d]ue to Mr. Kravitz’s alleged conduct, there is decreased traffic to [PhoneDog’s] website through [his Twitter] account, which in turn decreases the number of website pageviews and discourages advertisers from paying for ad inventory on PhoneDog’s website.” PhoneDog seeks damages in the amount of $340,000, based on their valuation of $2.50 per month per follower for the eight months following Mr. Kravitz’s resignation to the commencement of the suit.
Mr. Kravitz maintains that he owns his Twitter account, using the account mostly as a personal outlet for his thoughts on sporting events and pop culture. Mr. Kravitz claims that PhoneDog had allowed him to keep his Twitter account in exchange for posting occasionally on PhoneDog’s behalf. Moreover, Mr. Kravitz claims that PhoneDog’s lawsuit was in direct response to his claim to back pay and his share of advertising revenue.
As noted by Mr. Kravitz on Technobuffalo.com:
Social media is a grey zone to many even as it shapes the world around us. The pixel-drawn lines between what’s “personal” and “professional” have been blurred so quickly that it’s falling upon cases like this one to literally make the rules regarding the rights of employees, work-for-hire contractors, and corporations, let alone journalists and public figures, when it comes to the names and contents of our social media accounts.
While the outcome of this lawsuit is sure to establish precedent as to social media site ownership, this case serves as the perfect example as to why it is imperative for companies concerned with branding to establish and follow a social media policy that clearly defines ownership and control.
Sources:
United States District Court Northern District of California filings
http://www.technobuffalo.com/internet/social-networking/technobuffalo-and-noah-kravitz-on-noahkravitz/
http://www.nytimes.com/2011/12/26/technology/lawsuit-may-determine-who-owns-a-twitter-account.html
In December 2011, the U.S. International Trade Commission (ITC) found that HTC’s Android phones infringe a “data tapping patent” owned by Apple, Inc. Accordingly, the ITC issued an exclusion order prohibiting the importation of HTC devices featuring the technology in question, but interestingly chose to delay the ban for 4 months. Industry observers acknowledge that HTC should be able to easily design around the patent at issue within this time frame, and if it does so, may be able to avoid the effects of the injunction altogether.
The ITC’s choice to delay the ban may indicate its stronger consideration of public interest in its decisions. Unlike Federal court, the traditional judicial venue for patent infringement litigation, the ITC is an administrative branch of the U.S. government charged with regulating U.S. international trade interests. The ITC is not bound by the multi-factor analysis required in Federal Court (per Ebay), but rather may issue an exclusion order preventing the import of infringing devices once it’s considered its potential impact on consumers and competition. As such, the ITC is often considered as a more favorable venue for obtaining injunctive relief than the Federal courts in certain circumstances. By giving HTC time to design around the patent, it appears the ITC strongly considered whether immediate injunctive relief in this case would serve to promote (or harm) public interest. This could be the start of a trend toward limiting injunctive relief in the ITC venue, much like Ebay increased the burden on parties seeking injunctions in Federal Court.
Bo Muller-Moore, a folk artist from Vermont, has built his home business around the phrase “Eat More Kale.” He hand-screens t-shirts with the phrase in an expression of the benefits of local farmers and agriculture. In an attempt to protect his growing business, he filed a trademark application for the mark EAT MORE KALE, drawing the attention of Chick-fil-A.
Chick-fil-A holds the trademark to the widely recognized tagline EAT MOR CHIKIN, typically spelled out by the now-iconic cows who want to persuade customers to eat chicken over beef.
Muller-Moore received a cease and desist letter from the chicken giant, which stated that his use of “Eat More Kale” was “likely to cause confusion of the public and dilutes the distinctiveness of Chick-fil-A’s intellectual property and diminishes its value.”
Chick-fil-A has vigilantly protected its trademark as demonstrated in the letter, which cited 30 examples of attempts by others to use the “eat more” phrase, including “Eat More Goat” and “Eat More Yogurt,” which were withdrawn due to Chick-fil-A’s oppositions. Chick-fil-A has demanded that Muller-Moore cease using the phrase and turn over his website www.eatmorekale.com to Chick-fil-A.
While Muller-Moore has agreed not to expand his business into the food industry, insisting that all he sells is clothing, he is determined not to back down from Chick-fil-A’s threats.
“Our plan is to not back down. This feels like David versus Goliath,” said Muller-Moore.
SOURCE: Huffington Post (http://www.huffingtonpost.com/2011/11/28/chick-fil-a-eat-more-kale_n_1116695.html)
The Stop Online Piracy Act (SOPA) was introduced in the House recently, sparking fierce debate as to whether it provides the tools to effectively curb online piracy, or rather cause indiscriminate harm to both infringing and law-abiding companies.
Proponents of SOPA claim the bill targets ‘rogue’ foreign websites that sell pirated music, movies, television shows, and counterfeit goods in the United States. Lawmakers and authorities have long struggled to curtail these activities, in large part due to difficulties in tracking down the actual operators, as well as jurisdictional complications attributable to the sites being located overseas. A particularly controversial provision of SOPA seeks to sidestep these issues by empowering rights holders to notify payment service providers (i.e. credit card companies, PayPal, etc.) of the alleged infringement, and demand that they cease providing financial services to the offending website. The idea is that by cutting off access to its payment services, a rogue website will no longer be able to sell the infringing goods over the Internet to U.S. customers.
While the movie industry, RIAA, and business software developers predictably support the House bill, digital rights groups, consumer rights groups, and free speech organizations are up in arms. One complaint is that under the proposed bill, accused infringers will have only 5 days to file a counter-notice to their payment service provider, and even then, providers are not obligated to stay any cessation of services. Opponents also argue that legitimate U.S. companies will undoubtedly be affected and will likely suffer significant economic burden – both in legal defense fees and lost sales should financial services be pulled from their site. Companies, not courts, would be left to determine infringement, they warn. Additionally, many fear that companies may abuse the law to harass and damage rivals without legitimate basis.
The House Judiciary Committee will hold a hearing regarding the bill on November 16, 2011.
The fate of the Man of Steel, or at least the copyright ownership of Superman, is being decided in Federal court. The epic battle regarding who owns Superman goes back to the first Superman story. In 1938, the co-creators assigned their rights to DC Comics for $130. While a 1974 court decision ruled that Superman had been signed away forever, later amendments to the Copyright Act would result in a different conclusion. In order to protect creators of works from having to live with bad bargains, provisions of the Copyright Act provided the opportunity for creators and their heirs to recapture ownership and creative control of their works. Thus, the saga began.
Jerome Siegel and Joseph Shuster conceived and created Superman in 1934. The pair then agreed to furnish existing Superman comics to DC Comics in 1937. When DC Comics decided to run Superman as a comic book instead, the creators reformatted Superman to accommodate the idea. On March 1, 1938, the creators assigned their rights in Superman to DC Comics for $130. DC Comics secured its copyright registration by publishing announcements of the debuts of its Action Comics by depicting Superman on April 5th and 10th 1938, with Action Comics No. 1 featuring Superman publishing on April 18, 1938. On September 22, 1938, the creators and DC Comics entered into an employment agreement, which stated, in part, that the creators would continue to supply art work and storyline for Superman and other comics at a per page rate under the supervision of DC Comics.
On April 3, 1997, the widow and daughter of Siegel served Termination Notices, listing Action Comics No. 1 and hundreds of other works relating to the Superman character, to the grantees to be effective April 16, 1999. The court explained that for works created pre-1978, under Section 304(c) of the Copyright Act of 1976, termination of copyright assignments may be effectuated at any time during a five-year window effective from the 56th anniversary though the 61st year from the date the copyright was originally secured. Because the heirs served Termination Notices with the effective date of April 16, 1999, all rights to works secured before April 16, 1938 could not be recaptured. Therefore, the announcements depicting Superman could not be recaptured. Additionally, while the grants to Siegel’s half of the rights to certain post-April 16, 1938 original works and Action Comics No. 1 (and all the characters and story elements included therein) were found subject to termination, the following were expressly held not subject to termination:
- Works for Hire- prepared under the September 22, 1938 employment agreement;
- Derivative Works- prepared under the authority of the original grant before it was terminated, could continue to be utilized by the grantee;
- Action Comics Nos. 2-61 (excluding pre-existing material);
- Superman Nos. 1-23 (excluding pre-existing material); and
- Television series, films, and books (excluding pre-existing material).
It now looks as though DC Comics, and its parent company Warner Brothers, stands to lose more of its rights in the original Superman works as Shuster’s heir filed his own Notice of Termination in January 2004, to be effective in 2013. Section 304(d) of the 1976 Copyright Act allows for a second chance at termination for pre-1978 works, when the work was created between January 1, 1923 and October 26, 1939 and the author or his heirs failed to exercise termination under Section 304(c). In such case, the author or heir must serve Termination Notices with effective dates from the 75th anniversary through the 80th year from the date the copyright was originally secured.
January 1, 2013 marks the beginning of an opportunity for authors and their heirs of post-1978 grants to recapture their copyrights in both pre-1978 and post-1978 works. Section 203(a) of the Copyright Act of 1976 allows creators of works and their heirs to terminate assignments and licenses granted by the creator beginning 35 years after the date of grant.
The motivating force behind enacting Sections 203(a), 304(c), and 304(d), as Congress discussed, was “the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited.” However, the rules set forth by Congress to recapture one’s potentially valuable copyright are all but simple.
Much like its sister statutes Sections 304(c) and (d), which allow creators of works and their heirs to terminate pre-1978 grants made by the creators or their heirs, Section 203(a) requires affirmatively and timely serving notices of termination. As the Siegel court observed, “[d]espite having been passed more than thirty-three years ago, the termination provisions in the 1976 Copyright Act have been little utilized by authors or their heirs and, consequently, little explored by the courts.”
The following provides a brief overview of Sections 203(a), 304(c), and 304(d).
|
Section 203(a) |
Section 304(c) |
Section 304(d) |
| Grant Date |
Post-1978 Grants |
Pre-1978 Grants |
Pre-1978 Grants |
| Works |
Pre-1978 and Post-1978 Works |
Pre-1978 Works in First or Renewal Term |
Pre-1978 Works in First or Renewal Term |
| Grantor |
Author |
Author or their Heirs |
Author or their Heirs |
| Effective Date Window |
35th to 40th Anniversary from Grant Date |
56th to 61st Anniversary from Date Copyright Secured |
75th to 80th Anniversary from Date Copyright Secured |
| Notice Period |
2-10 years before effective date |
2-10 years before effective date |
2-10 years before effective date |
Important Exceptions:
- Works for Hire;
- Derivative Works;
- Dispositions by Will;
- Other Intellectual Property Rights – even if granted in the same agreement; and
- Exploitation outside the United States.
Finally, it should be noted that while failure to identify works subject to termination can be harmless error, failure to serve notice within the statutory time period cannot be harmless error. It is thus imperative that one attempting to recapture a copyright serve the proper party with a notice of termination within the proper time period.
After Dana Thornton’s relationship with Parsippany, New Jersey police detective Michael Lasalandra ended, she took to Facebook to lash out. Thornton created a fake Facebook profile using Lasalandra’s name, birthday and photographs. She then posted comments, as if written by Lasalandra, aimed at disparaging him, which eventually led to Thornton being indicted last year on one count of fourth-degree identity theft.
Thornton is now challenging the indictment by contending she did not commit a crime under the plain language of New Jersey’s identity theft statute.
Thornton’s attorney argues that while many states have amended their identity theft statutes to make it a crime to impersonate another by electronic means, including through use of a website, New Jersey is silent on whether it applies to websites such as Facebook, and as such Thornton’s indictment should be dismissed.
Prosecutors, on the other hand, maintain that New Jersey’s identity theft statute is applicable because the law states that impersonating another or assuming a false identity and acting in such an assumed character to obtain a benefit or to injure or defraud another is a crime. Prosecutors allege that Thornton created the fake Facebook profile to damage Lasalandra’s good name, standing or reputation, and thus the indictment should stand.
If convicted, Thornton faces up to 18 months in prison.
Source: Daily Record
Trademark owners may invest millions of dollars worth of time, research, development, labor, and advertising to cultivate a brand, loyal customer base, and goodwill in their goods and services. From time to time, use of a mark will be discontinued for a variety of business reasons. However, often times a trademark owner who discontinues use of a mark, is unaware that their inaction will render their mark abandoned. Under the Lanham Act, a trademark is deemed to be abandoned when its use has been discontinued with intent not to resume such use. Nonuse for three consecutive years is prima facie evidence of abandonment. Furthermore, use of a mark must amount to more than just token use to maintain rights in the mark.[i]
When trademark owners discontinue use of a mark, they often fail to fully recognize the value that lingers in the mark, namely the residual goodwill created by their expenditure of time and capital. Residual goodwill embodies the concept of consumer awareness and recognition of a mark even after it has been abandoned. Once a mark is abandoned the mark reverts back to the public domain and any person, including direct competitors, can seize the mark immediately to capitalize on the mark’s residual goodwill.[ii] For the original owner, this could translate into a loss of loyal customers and market share to a direct competitor.
Additionally, one of the primary goals of a trademark infringement suit is to protect consumers from confusion as to the source of a good or service. When another party appropriates an abandoned mark, the residual goodwill left in the mark leads the public to believe the new goods or services are associated with the original owner. False association with an inferior good or service, over which the original owner has no control, could lead to loss of public trust and faith in the quality of the original owner’s goods and services.
What then can the original owner do to protect itself? The original owner, who desires to maintain its rights in a mark, must argue against abandonment. The burden of proof is initially on the party claiming abandonment exists. However, the Fifth Circuit’s view is that when a prima facie case of trademark abandonment exists, namely that the mark has not been used for three consecutive years, the burden shifts to the owner of the mark to demonstrate that circumstances do not justify the inference of intent not to resume use.[iii]
Intent to resume use is not satisfied by mere statements by a party to that effect, or by token uses of the mark in an effort to prevent use of the mark by another. The Fifth Circuit in Exxon Corp. noted that limited arranged sales of products as part of Exxon’s trademark maintenance program are insufficient uses to avoid prima facie abandonment. Rather following abandonment, a party must have plans to resume bona fide commercial use of the marks to avoid abandonment.[iv] This standard prevents the warehousing or hoarding of trademarks, or preserving a mark solely to prevent its use by others. The original owner must establish the concrete steps it has taken to resume use of the mark in commerce.
Furthermore, while the original owner may not be able to prevent another party from using its mark, the new party may be required to take steps to prevent confusion. The Trademark Board noted that if after a mark has become abandoned, it is adopted and used by an entity unrelated to the original owner, the rights to the mark vest with the first to adopt and use it, provided that the new user takes reasonable precautions to prevent confusion.[v] By way of example, the Indianapolis Colts attempted to prevent the use of the name BALTIMORE COLTS by a Canadian Football League team, because the Indianapolis Colts were once located in Baltimore and were known as the Baltimore Colts. The Baltimore based Canadian Football League team changed its name to the CFL BALTIMORE COLTS to prevent confusion.[vi]
There are also other strategies trademark owners can employ to ensure that their mark is not used by a competitor or in a way contrary to their business objectives. One such strategy is to establish a valid license. With a licensing agreement, a trademark owner may maintain ownership of the mark and control how the mark is used.
[ii] J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 17.2 (4th ed. 2004).
[iii] Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 99 (5th Cir. 1983).
[v] In re Wielinski, 1998 TTAB LEXIS 349 (TTAB September 24, 1998).
[vi] J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 17.2 (4th ed. 2004); Indianapolis Colts v. Metropolitan Baltimore Football Club Ltd. Partnership, 34 F.3d 410 (7th Cir. 1994).
In perhaps the most dramatic of its reforms, the America Invents Act adopts a first-to-file system for awarding patents in the United States. The new model grants priority of protection to the first person to file an application for a given invention, or the first to disclose it to the public, rather than the first person to necessarily conceive of the idea and diligently reduce it to practice. The U.S. will continue to follow the current first-to-invent system for the next 18 months until the change becomes effective March 16, 2013.
The new model represents a marked difference from the current first-to-invent structure. Whether priority is secured through a first filed application or an inventor’s prompt public disclosure, the U.S.P.T.O. has clearly indicated a shift in philosophy favoring innovation over invention. Inventors are now encouraged to develop their ideas quickly and reveal them for the public’s benefit earlier. The following chart outlines the basic differences in establishing priority:
| First-to-Invent |
First-to-File |
| Favors the first person to conceive of an idea and diligently reduce it to practice |
Favors the first person to either:
- File a patent application*, or
- Publicly disclose the invention, and file application within 1 year
|
| Inventor can “swear behind” a later disclosure by others if he can prove he invented first
|
“Swearing behind” is no longer allowed (you snooze, you lose)
|
* Exception: No priority if an inventor named in an earlier filed application derived the claimed invention from an inventor named in the later filed application without authorization
Only disclosures by the inventor are entitled to the one-year filing grace period. This provision simultaneously encourages inventors to expeditiously come forward with their inventions, while offering a relatively cheap mechanism to secure priority and buy time to investigate the value of commercializing the technology. Inventors should be warned that some ambiguity surrounds the definition of “disclosure” for purposes of the one-year grace period. Professor Lemley notes that “senate legislative history and traditional use of the term in patent cases would apply to any form of prior art, such as public use or a sale…[b]ut some have argued that it covers only published disclosures.” Lemley, Mark A. “Things You Should Care About in the New Patent Statute”, electronic copy available at http:ssrn.com/abstract=1929044. Additionally, inventors are cautioned that disclosures must be adequate enough to satisfy § 112 disclosure requirements. For those seeking to keep development quiet, filing a provisional patent application rather than a public disclosure would be a favorable and only slightly more expensive route to securing priority.
While construing the detailed changes remains the province of an experienced patent attorney, other notable changes to prior art under the America Invents act include:
- Section 102(b) bar to patentability of inventions in “public use” or “on sale” more than one year before filing is no longer geographically limited to the U.S.;
and
- U.S. patents and published applications claiming priority to earlier foreign applications become prior art as of the date the first foreign application was filed
Pursuant to the recently enacted Leahy-Smith America Invents Act, plaintiffs will no longer be able to join multiple, unrelated defendants in a single suit by simply alleging that each infringes the same patent. Instead, plaintiffs will likely be forced to file a separate action for each defendant unless there is something more to justify joinder.
35 U.S.C. § 299 reads in relevant part (emphasis added):
(a) JOINDER OF ACCUSED INFRINGERS. – With respect to any civil action arising under any Act of Congress relating to patents, other than an action or trial in which an act of infringement under section 271(e)(2) has been pled, parties that are accused infringers may be joined in one action as defendants or counter claim defendants, or have their actions consolidated for trial, or counterclaim defendants only if –
(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and
(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.
(b) ALLEGATIONS INSUFFICIENT FOR JOINDER. – For purposes of this subsection, accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.
Plaintiffs often join multiple defendants in a single suit for strategic reasons. First, it is generally more convenient and cost-effective to seek relief in one court, rather than spreading resources to fight multiple battles. Second, plaintiffs may join multiple defendants in order to secure favorable venue for the suit. Courts try to hear cases where it is convenient for a majority of the parties. If multiple defendants are joined from several different geographical locations, then there is frequently no forum that is truly convenient for a majority. The plaintiff may then argue that a plaintiff-friendly venue like the Eastern District of Texas is proper because of its central location amongst nationwide defendants. Alternatively, the plaintiff may choose to join a defendant from such a venue and challenge the defendants to prove that another forum is more appropriate. This provision of the America Invents Act will limit much of this jurisdictional gamesmanship.
Notably, this provision will also have a significant impact on the business of non-practicing entities. Non-practicing entities (NPEs) own patents, but do not produce products based on these technologies. Instead, NPEs rely on licensing revenue from practicing entities and patent auctions to generate income. Accordingly, litigation is core to their business model, and the increased costs resulting from having to file multiple suits will add considerable burden to NPEs.
Many patent holders are responding to these changes by filing suit as quickly as possible before this change becomes effective September 26, 2011.
On April 18, 2011 Apple sued Samsung in the Northern District of California, claiming that Samsung has chosen to “slavishly copy Apple’s innovative technology, distinctive user interfaces, and elegant and distinctive product and packaging design, in violation of Apple’s valuable intellectual property rights.” In this suit, Apple asserted 16 different claims ranging from trade dress infringement under 15 U.S.C. §1125 to federal trademark infringement under 15 U.S.C § 1114 to the infringement of several design patents.
Samsung has chosen to attack the validity of some of Apple’s patents, saying that Apple was not the first to think of the iPad design, that of a flat tablet. Samsung attached images of Stanley Kubrick’s 1968 film 2001: A Space Odyssey, to prove its point. In a clip which can be found on Youtube at www.youtub.com/watch?v=JQ8pQVDyaLo, two astronauts are eating and at the same time conducting an interview on a personal tablet computer. Samsung points out that the tablet in the clip has the same overall rectangular shape with a dominant screen display as the iPad or the Galaxy.
According to a Kubrick collaborator, Arthur C. Clarke, the device in the story is called a “Newspad” and a user could pull up news stories from major papers. Whether a judge will buy Samsung’s argument will remain to be seen.
In the meantime, Apple and Samsung have engaged in lawsuits in nine other countries, with a recent order from the Regional Court of Dusseldorf granting Apple a preliminary injunction against the sale and marketing of the Samsung Galaxy Tab 10.1 across all of Europe, with the exception of the Netherlands.
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