Newsletter Issue 73 - March 2015

In this issue:

Ask Dr. Copyright ...

Dear Doc:

You wrote about the legal fracas over the song "Blurred Lines" in a prior issue of your column. What's up with that?

Sincerely,
Farel Thick

Dear Sir:

That case went to the jury about three weeks ago, and, true to the name of the song, it truly did blur the lines of what constitutes infringement of copyright! Those guys who wrote and performed "Blurred Lines" were sued by the children of Marvin Gaye, who own the copyright in the sheet music for the song "Got to Give It Up." That is because Blurred Lines sounds an awful lot like Got to Give it Up - it's got that late '70s vibe. The style of one reminds me of the other. Case closed, right? Well...not so fast. As with any story by "The Doc", this one has more twists than Chubby Checker (and he lives right around the corner from the Doc, so the Doc oughtta know, dude!)

When the actual music of the two songs is compared, it turns out that there is not a single sequence of notes in common. None. Nada. Not like earlier cases like Vanilla Ice (who now does construction work in Florida - a strange place for a guy named Ice, but I digress), who took a whole bunch of notes from David Bowie's "Under Pressure" and turned them into that memorable hit, "Ice, Ice, Baby" by adding just one note; or George Harrison's taking "He's My Guy" and turning it into "My Sweet Lord". Those cases involved copying the notes. Erbatimvay, as they say in Pig Latin.

In this case, no notes were copied. Just a "feel"; a "style". The issue is whether those things are protected by copyright in the sheet music, and as any second year law student (who's chosen to take a class in copyright law) can tell you, the answer is a resounding, "NOPE"! The similarities - use of falsetto singing and cowbell (MORE COWBELL!) may be evocative, but they're not part of the copyrighted musical composition.

The judge and jury, however, seemed determined to punish Robin Thicke for being a boorish 455H0L3 on the witness stand - and regardless of what the copyright law actually says, the jury listened to both songs, found infringement and ordered payment of $7.3 million in damages. As Bullwinkle Moose used to say, "That is antihistamine money...it is not to be sneezed at!"

The Doc is confident that on appeal (and the case is being appealed, leading to ever higher lawyer bills, of course!) the verdict will be thrown out. After all, borrowing of styles is what art is all about. Where would the Beatles have been without Jerry Lee Lewis and Chuck Berry? Where would Picasso have been without Cezanne? Where would Seeger have been without Guthrie? Where would Sigfried be without Roy? It's a truism that copyright protects expression, but not idea. The judge and jury in the Blurred Lines case got these confused. Maybe the lines really were blurred. Let's hope a higher court will see more clearly. If not, expect the date of the verdict to become known as "The Day the Music Died" (with apologies to Don McClean.)

Interested in crisp, clear, black and white answers to challenging legal questions? (Then don't ask a lawyer or a judge!!) The attorneys at LW&H will at least help you cut through the confusion. Ask them to help.

Until next month, you Got To Give It Up.

The "Doc"

Don't be Caught "Void Ab Initio" (It's Unbecoming)!

Trademark law in the United States is all about "use." When you're using your trademark it is accumulating good will and you are exercising your trademark rights. Absent "use," your trademark rights dwindle and the trademark itself is subject to abandonment.

This is an important principle, particularly, when you are applying to register a trademark with the USPTO. If you fudge the date of first use and your registration is challenged, you risk losing the registration altogether. This is a real risk. In Couture v. Playdom, Inc., the trademark owner learned the hard way. The trademark owner, David Couture, registered the trademark PLAYDOM for entertainment services. To demonstrate trademark use, Mr. Couture sent the USPTO a screen capture of his website, which stated "welcome to Playdom Inc.com". He attributed the date of first used to be May 30, 2008. On January 13, 2009, the USPTO issued Mr. Couture a trademark registration.

On February 9, 2009, Playdom, Inc. filed a trademark registration application for the identical trademark, which was rejected by the PTO citing Mr. Couture's registered trademark. On June 15, 2009, Playdom filed a petition to cancel Mr. Couture's trademark registration. It argued that the Couture trademark was void ab initio because Mr. Couture had not used the trademark in commerce as of the date of the trademark application. On February 3, 2014, the Trademark Trial and Appeal Board granted the cancellation petition.

On March 2, 2015, the United States Court of Appeals for the Federal Circuit affirmed the judgment of the Trademark Trial and Appeal Board. The court held that to apply for registration of a mark, it must be "used in commerce," which means the bona fide use of the mark in the ordinary course of trade. It wrote, "an applicant's preparations to use the mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the application for the Mark." Merely advertising or publicizing what the applicant intends to do with the mark is not sufficient to support registration. Because there was no evidence that Mr. Couture rendered any services before 2010, his trademark registration was held void ab initio.

The federal circuit court's opinion is in line with other circuits and demonstrates the importance to trademark holders of getting the date of first use right otherwise the trademark owner risks losing the registration.

PTO SAWS Program - R.I.P.

The PTO intended that its secret Sensitive Application Warning System ('SAWS') program would avoid embarrassment to the agency by requiring additional layers of review for potentially controversial patent applications. The program had exactly the opposite effect and the patent community harshly criticized the PTO for the secret and arbitrary nature of the program. The PTO promptly threw the SAWS program under the bus and promptly issued decisions in two of this author's delayed patent applications. We will never know if SAWS was the cause of the delays because the program was secret and the PTO is not talking.

The Bride of Patent Reform II Returns, Again

It's Spring, so the thoughts of the lobbyists representing high-tech heavy weights turn to crippling the U.S. patent system. Competing bills are already pending in Congress. Why do the giant high-tech companies do it? The sound-bite reason given is to stop the depredations of patent 'trolls;' that is, entities that own patents but that do not produce the patented product themselves, which includes universities, private laboratories, research and development shops, and individual inventors working in their basements. Gene Quinn, who blogs as IP Watchdog, provided an explanation in 2013, which is still valid today - he explains that the full-court-press lobbying and PR effort by the giants is to protect the status quo; that is, to keep the giants giant, and to to prevent the smaller, lighter, nimbler startups with better technology from competing.

David Kapos, past Commissioner of the U.S. Patent and Trademark Office and former chief patent counsel at IBM, recently delivered a speech offering an excellent summary and explanation of the issues surrounding patent reform and the patent system generally. If you would like to learn more about these issues, read the speech. The bottom line - Wholesale changes are not needed.